Pursuant to the fourth Amendment to the Patent Law in Article 42(2) effective on June 1st, 2021, for any unreasonable delay during prosecution of an invention patent, the patentee is entitled to request for patent term adjustment (PTA), provided that the patent is granted after four (4) years from filing date and after three (3) years from the date of substantive examination. The PTA is eligible only for patents granted on June 1st and onwards, suggesting no retroactive effects, according to the “Interim Measures for Implementation of the Amended Patent Law during the Transitional Period” issued on May 25th .

Related administrative rules were subject to revisions in correspondence to the new Patent Law. CNIPA drafted an Amendment to Patent Examination Guidelines to solicit public comment in the beginning of August, where the procedural rules and structural provisions for PTA are detailed. Some highlights in the draft Amendment are digested as follows.

Timeframe to Request

A request for PTA must be made within three (3) months from the grant of a patent.

Determining PTA

The PTA is commensurate with the delay attributable to the CNIPA but precluding delay caused by the patentee/applicant. In the event of a parallel filing (to file for an invention patent and a utility model application at the same time by the same applicant for the same invention-creation) where the utility model is successfully granted, the PTA is not eligible for the invention patent.

Relevant Time Points

There are four (4) points in time - filing date, date of requesting for substantive examination, allowance date, and grant date - used for assessing whether the patent meets the PTA criteria. As of now the revised Patent Examination Guidelines remaining as a draft, each point in time has different interpretations.

Filing date refers to the “actual filing date” for a Chinese application, the “date of entering China national stage” for a PCT application, or the “divisional request date” for a divisional application.

Date of substantive examination refers to the “issue date of notification of entering the substantive examination,” rather than the date to make a request for substantive examination.

Allowance date refers to the “issue date of notification to grant patent right for invention application.”

Grant date refers to the “grant publication date.”

Calculation of PTA

The basic temporal unit of PTA is a calendar day. CNIPA would grant the number of day(s) that will be immediately followed by the expiry of a projected patent term. The number of days in PTA is equal to the unreasonable delay caused by the CNIPA minus that caused by the patentee/applicant. The number of days that exceeds four (4) years from filing date to grant, or days that exceed three (3) years from the date of substantive examination should be compensated. Therefore, by default in the draft Patent Examination Guidelines, the grantable PTA term can be mathematically expressed as:

(grant date – the date after four(4) years from filing date or the date after three(3) years from substantive examination, whichever is later) – (days of patentee/applicant’s own delay)

Time in any of prosecution suspension, preservation, administrative litigation, re-examination is not included in PTA.

Patentee/Applicant’s own Delay

The drafted Amendment to Patent Examination Guidelines set forth five cases where the PTA calculation shall preclude the time -

lBeyond the designated period for responding an Office Action;

lDuring deferment for examination;

lFor incorporation by reference of missing parts;

lFor reinstatement of rights; and

lFrom national phase entry date to the deadline of 30 months period since priority.

Review and Grant

Upon rejecting a request, the patentee shall be offered at least one Office Action to make a respond and/or amendment in seek of preventing an unfavorable decision. A decision of grant of PTA made by the CNIPA shall be published on the Patent Gazette as well as recorded in the Patent Register.

TLC’s Comments

PTA is a brand new system effective since June 1st whereas all the above auxiliary rules are not yet finalized or operable as of today. These rules are subject to changes, including an overhaul or a fine tune. Taking a few steps back however, what is definite is that the PTA is officially a part of China’s patent system (A standardized form available[1]) and CNIPA has started to receive PTA requests accordingly.

As for the official fee for the PTA, no fee is required at the time of requesting for the PTA; however, if the request is accepted by the CNIPA, a payment notice regarding the compensated patent term agreed by the CNIPA will be issued. How the fees will be calculated is still unknown at the present stage.

In a nutshell, the PTA is now eligible for patents granted on and after June 1st and the applicants wish to make up the delayed time, provided that the patent(s) were granted more than four years from filing and also more than three years from examination. To avoid losing any opportunities in obtaining the compensated patent term, we recommend submitting your PTA request(s) at the earliest as possible.