/>iChina’s National Intellectual Property Administration (CNIPA) recently released Frequently Asked Questions (FAQs) regarding new fee policies for open licensing, patent term compensation, Patent Cooperation Treaty (PCT) applications when the Receiving Office or International Search Authority is CNIPA, and batch filings. The FAQs for open licensing and patent term compensation are reproduced below.
II. About Patent Open Licensing
1. After the patent open license declaration is approved by the National Intellectual Property Administration, can the patent owner enjoy a reduction in annual fees based on the open license declaration announcement?
Answer: After the announcement of the patent open license declaration, the annual fee reduction cannot be enjoyed based solely on the patent open license declaration announcement. Only when the patent owner and the licensee reach a patent implementation license through an open license can they request the annual fee reduction in accordance with the ” Notice of the Ministry of Finance and the National Development and Reform Commission on Adjusting and Optimizing Patent Fee Policies ” (Finance and Taxation [2024] No. 23).
2. If a patent owner requests a reduction in annual fees due to an open license, how does he make the request?
Answer: According to Section 8 of Chapter 11 of Part V of the Patent Examination Guidelines , the patent owner can enjoy the reduction of the annual patent fee that has not expired since the filing date during the implementation period of the patent open license. The implementation period of the patent open license refers to the period from the effective date of the patent open license implementation contract to the expiration of the patent license term. According to Section 3.2 of Chapter 2 of Part V of the Patent Examination Guidelines, the applicant’s filing of the patent open license implementation contract is deemed to be the patent owner’s simultaneous request for a reduction in the annual patent fee, and no other procedures are required.
3. After the patent open license implementation contract is qualified for registration, how to determine the year and proportion of annual fee reduction enjoyed by the patent owner?
Answer: According to the Notice of the Ministry of Finance and the National Development and Reform Commission on Adjusting and Optimizing Patent Fee Policies (Caishui [2024] No. 23), the annual fee reduction ratio during the implementation period of the patent open license is 15%. According to Section 8 of Chapter 11 of Part V of the Patent Examination Guidelines, if the patent open license implementation contract is approved for filing, the patent owner can enjoy the reduction of the patent annual fee that has not expired since the qualified filing date during the implementation period of the patent open license. If the patent owner meets two patent annual fee reduction conditions at the same time, the reduction shall be made according to the condition with the higher reduction ratio.
For example, the application date of an invention patent application is August 8, 2010, and the authorization announcement date is October 10, 2012. According to regulations, the annual fee can be reduced by 85% within ten years from the year of grant of the patent right. The patent open license implementation contract is qualified on July 7, 2015, and the patent open license expires on August 7, 2030. The patent owner of this case can enjoy an 85% reduction in annual fees for the 3rd patent year to the 12th patent year, and a 15% reduction in annual fees for the 13th to 20th patent years.
4. When a patent owner and a licensee who implement an open license reach a licensing agreement on the license fee through negotiation, can the annual fee be reduced?
Answer: According to Section 8 of Chapter 11 of Part V of the Patent Examination Guidelines , if a patent owner who implements open licensing and a licensee negotiate on the license fee and then sign a general license contract, it does not belong to open licensing. Therefore, they cannot enjoy the annual fee reduction policy obtained through open licensing.
5. If the patent open license declaration is withdrawn before the expiration of the patent open license period, can the annual fee reduction continue to be enjoyed?
Answer: According to Section 8 of Chapter 11 of Part V of the Patent Examination Guidelines , if the patentee withdraws the open license declaration, he shall no longer enjoy the reduction of the annual patent fee obtained by the open license from the next patent year. Therefore, if the patentee withdraws the patent open license declaration before the expiration of the open license, he shall no longer enjoy the reduction of the annual patent fee obtained by the open license from the next patent year, but it shall not affect the annual fee reduction requested according to other conditions of the Patent Fee Reduction Measures.
6. If a patent owner withdraws a patent open license declaration and then resubmits an open license declaration for the patent and reaches an open license implementation contract, can he enjoy a reduction in annual fees?
Answer: If a patent owner withdraws a patent open license declaration and then re-submits an open license declaration for the same patent and reaches an open license implementation contract, if he hopes to obtain a reduction in the patent annual fee due to the re-open license, he must register a new patent open license implementation contract. Only after the registration is qualified can he enjoy the reduction in the patent annual fee that has not yet expired from the date of qualified registration in accordance with regulations.
IV. Compensation for Patent Term
1. Under what circumstances can one request for compensation for the patent term?
A: Patent term compensation is intended to provide corresponding patent term compensation for unreasonable delays in the invention patent authorization process that are not caused by the applicant. If the number of days from the date of application of the invention patent for four years and the date of the request for substantive examination to the date of announcement of the grant of the patent right is a positive number minus the number of days of reasonable delay and the number of days of unreasonable delay caused by the applicant, the conditions for invention patent term compensation are preliminarily met.
2. What situations constitute reasonable delays in the authorization process?
Answer: The delays caused by the following four situations are reasonable delays in the authorization process:
(1) To amend the review procedure for patent application documents in accordance with Article 66 of the Implementing Regulations of the Patent Law;
(2) the suspension procedure as provided for in Article 103 of the Implementing Regulations of the Patent Law;
(3) preservation measures as provided for in Article 104 of the Implementing Regulations of the Patent Law;
(4) Other reasonable circumstances such as administrative litigation procedures.
3. What situations constitute unreasonable delays caused by the applicant?
Answer: The following five situations are unreasonable delays caused by applicants:
(1) delay caused by failure to respond to a notification issued by the Patent Office within the specified time limit, i.e. a request for an extension of the time limit is made due to failure to respond to a notification issued by the Patent Office within the specified time limit;
(2) Application for delayed examination;
(3) Incorporation by reference;
(4) delay caused by the request for restoration of rights, unless it can be proved that the delay was caused by the Patent Office;
(5) International applications that go through the procedures for entering the Chinese national phase within 30 months from the priority date and the applicant has not requested early processing.
4. How to determine the date of substantive examination when calculating the patent term compensation under Article 42, Paragraph 2 of the Patent Law?
Answer: The date of substantive request is determined by the later of the three dates: the date of filing the substantive examination request in accordance with Article 35, paragraph 1 of the Patent Law, the date of full payment of the substantive examination fee for the invention patent application in accordance with Article 113 of the Implementing Regulations of the Patent Law, and the date of publication as referred to in Article 34 of the Patent Law.
5. How to submit a request for term compensation?
Answer: If a patentee requests compensation for the patent term in accordance with Article 42, paragraph 2 of the Patent Law, he shall file a request with the National Intellectual Property Administration and pay the relevant request fee within three months from the date of the patent authorization announcement. If a patentee requests compensation for the patent term of a drug in accordance with Article 42, paragraph 3 of the Patent Law, he shall file a request with the National Intellectual Property Administration and pay the relevant request fee within three months from the date on which the new drug obtains marketing authorization in China. If a request for compensation for the patent term is filed before July 26, 2024, the fee shall be paid within three months from July 26, 2024 in accordance with the patent fee standard announced in the relevant fee policy.
6. What is the fee standard for requesting patent term compensation? What are the payment methods?
Answer: When a patentee files a patent term compensation request, he/she shall pay a patent term compensation request fee of RMB 200 per case. If the fee is not paid or paid in full by the deadline, no patent term compensation will be granted.
Payers can go to the Patent Office or 34 agencies to pay fees online, in person, at banks, or at post offices.
7. What is the payment standard for the annual fee during the patent compensation period? What are the payment methods?
Answer: If the National Intellectual Property Administration makes a decision to grant patent term compensation, the patent holder shall pay the annual fee for the patent right compensation period in full in one lump sum before the expiration of the 20-year patent term in accordance with the requirements of the patent term compensation approval decision, which is 8,000 yuan per year for each patent. No fee will be charged for the part less than one year. If the annual fee for the patent right compensation period is not paid or paid in full by the expiration date, no late payment fee or restoration period will be set. The annual fee for the patent right compensation period is not subject to the circumstances stipulated in the fee reduction method. If the annual fee for the patent right compensation period is not paid or paid in full by the expiration date, no patent right term compensation will be granted.
Payers can go to the Patent Office or 34 agencies to pay fees online, in person, at banks, or at post offices.
8. If a request for compensation for patent term is made late in accordance with Article 42, Paragraph 2 and Paragraph 3 of the Patent Law, can it be restored?
Answer: If the request for compensation for patent term filed in accordance with Article 42, Paragraph 2 and Paragraph 3 of the Patent Law is delayed beyond the prescribed period, no restoration period will be set.
9. What is the review process for requests for patent term compensation?
Answer: If a request for patent term compensation is filed in accordance with Article 42, paragraph 2 of the Patent Law and it is found upon review that it meets the conditions for term compensation, the National Intellectual Property Administration will issue a “Decision on Approval of Patent Term Compensation”, make a decision to grant term compensation and inform the number of days for term compensation; if it is found that it does not meet the conditions for term compensation, the National Intellectual Property Administration will issue a “Notice of Correction of Formalities” or “Notice of Examination Opinion” depending on the circumstances. If the correction or opinion statement still does not meet the conditions for term compensation, the National Intellectual Property Administration will issue a “Decision on Approval of Patent Term Compensation” and make a decision not to grant term compensation.
10. What is the review process for requests for compensation of pharmaceutical patent term?
Answer: In accordance with Article 42, paragraph 3 of the Patent Law, if a request for compensation for the term of a pharmaceutical patent is submitted and meets the conditions for compensation upon examination, the National Intellectual Property Administration shall issue a “Decision on the Examination and Approval of the Term Compensation for Pharmaceutical Patent Rights”, make a decision on granting compensation for the term and inform the number of days for compensation for the term. If, upon examination, the request does not meet the conditions for compensation for the term, the National Intellectual Property Administration shall issue a “Notice on Correction of Procedures” or a “Notice on Examination Opinion on Compensation for the Term of Pharmaceutical Patent Rights” depending on the circumstances. If, after correction or statement of opinion, the request still does not meet the conditions for compensation for the term, the National Intellectual Property Administration shall issue a “Decision on the Examination and Approval of the Term Compensation for Pharmaceutical Patent Rights”, and make a decision not to grant compensation for the term.
11. How to check the approval decision of patent term compensation?
Answer: The approval decision on patent term compensation can be checked in the “Patent Examination Information Inquiry” of the patent business processing system.
12. If you are dissatisfied with the decision on patent term compensation, how can you seek relief?
Answer: If you are dissatisfied with the approval decision on patent term compensation, you may apply for administrative reconsideration to the CNIPA.
