Since its implementation in 1985, the Chinese Patent Law has been revised four times in 1992, 2000, 2008 and 2020, respectively. The last revision of the Patent Law came into effect on June 1 2021.
One of the highlights of this revision is the establishment of a compensation system for the patent protection term when there is an unreasonable delay during the granting process.
According to Article 42, paragraph 2, of the revised Patent Law, “Where the patent right was granted for an invention after the expiration of four years from the date of filing and three years from the date of requesting for substantive examination, the patentee may request for compensation for the protection term of the patent right when there is an unreasonable delay during the granting process of the invention patent, except for if the unreasonable delay was caused by the applicant.”
From Article 42, three key pieces of information can be extracted:
The compensation for the patent protection term is not initiated automatically, but needs to be requested by the patentee;
The patent for which compensation of protection term is obtained needs to meet two time requirements, one is that the grant date is beyond four years from the date of filing, and the other is that the grant date is beyond three years from the date of requesting for substantive examination, both of which are indispensable; and
The ‘unreasonable delay’ that should be compensated for the protection term shall exclude an unreasonable delay caused by the applicant. The revised Patent Law provides general provisions on the compensation system for patent protection term, but does not provide relevant explanations on specific implementation issues such as the determination of an ‘unreasonable delay’ and the calculation of the compensation term.
For reference, “the granting process of the invention patent” in Article 42 refers to “the prosecution procedure of the invention patent application”.
In order to ensure the implementation of the revised Patent Law, the State Intellectual Property Office has formulated and issued the Interim Measures for the Handling of Examination Services Related to the Implementation of the Revised Patent Law (Interim Measures), which also came into force on June 1 2021.
Item 5 of the Interim Measures stipulates: “For invention patents granted from June 1, 2021, the patentee may, in accordance with Article 42, paragraph 2 of the revised Patent Law, submit a request for compensation for the protection term of the patent right in paper form, within three months from the date of announcement of the patent grant, and then pay the relevant fees in accordance with the payment notice issued by the State Intellectual Property Office.”
From the item above, the following preliminary guidance can be ascertained:
The compensation system only applies to the invention patents granted on or after June 1 2021; and
A patentee can request for patent term compensation within a time limit, i.e. within three months from the date of announcement of the patent grant, and after the time limit, the right to request for compensation will be lost.
At the same time, the State Intellectual Property Office has also issued the “Amendments of the Implementing Regulations of the Patent Law (Draft for Comment)” (draft regulations). Although the final revised version of the Implementing Regulations of the Patent Law has not yet been released, the amendments related to the compensation system proposed in the draft regulations can be referred to by applicants and patentees.
In the draft regulations, rule 85.3 states that “The compensation for patent protection term shall be made according to the actual number of days delayed. An unreasonable delay caused by the applicant includes the following situations: (1) Failure to reply to the notice issued by the patent administrative department within the specified time limit; (2) Request for delayed examination; (3) Incorporation by reference; and (4) Other circumstances.”
According to the draft regulations, a preliminary understanding of how the compensation time is calculated can be obtained. However, based only on the provisions above, for a specific case, the patentee may still not be able to determine whether there is an opportunity to obtain compensation for the protection term and the specific compensation time that may be obtained at present.
In addition, the State Intellectual Property Office has further carried out adaptive revisions to the Guidelines for Patent Examination. In the “Draft Amendment to the Patent Examination Guidelines (Draft for Comment)” (draft guidelines), the relevant provisions on compensation for the patent protection term have been added.
Although the final revised version of the Guidelines for Patent Examination has not yet been released, we believe the detailed explanations on the compensation system in the draft guidelines could provide practical guidance and assistance for applicants and patentees to some extent.
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