The fourth revision of the Chinese Patent Law, which will be formally implemented on June 1, 2021, has made many substantial changes to the existing patent system, which have important and far-reaching effects. Among them, in order to further strengthen the protection of patent rights, this amendment extends the protection term of design patent right to 15 years, and also introduces patent term compensation system for invention patent and drug patent. This article will conduct a preliminary discussion on the patent term compensation of invention patent.
1. Content of the invention patent term compensation system
The second paragraph of Article 42 of the amended Patent Law provides for compensation for patent right for the unreasonable delay in the granting of invention patents, specifically: “If an invention patent is granted later than four years after the date of filing and three years after the date of request for substantive examination, the patent administration department of the State Council shall, at the request of the patentee, provide patent term compensation for the unreasonable delay of the invention patent in the process of granting the patent right, excluding the unreasonable delay caused by the applicant."
2. Main points of the invention patent term compensation system
The following 4 points can be interpreted from the above regulations:
2.1 Patent term compensation is only applicable to invention patents, and not applicable to utility model and design patents.
Invention patents need to go through substantive examination, and the overall examination period is about 3-4 years., it is necessary to obtain a certain period of compensation for the loss of term due to unreasonable delay during this period. Utility model and design patents undergo formality examination only, and the overall examination period is much shorter than that of invention patents. Therefore, there is currently no provision for patent term compensation for utility model and design patents.
2.2 Situations of unreasonable delay
Unreasonable delay refers to the delay caused by the patent examination department in the examination process, including the delay in the process of preliminary examination, substantive examination and reexamination.
However, the delay caused by the applicant, including the agency commissioned by the applicant, is not within the scope of time limit compensation. The revised patent law does not specify what is the unreasonable delay caused by the applicant, but according to the proposed amendments to the Implementation Rules of the Patent Law issued in November 2020, the unreasonable delay caused by the applicant includes the following situations:
(1) Failure to respond to the notice issued by the Patent Administration Department of the State Council (namely China National Intellectual Property Administration, CNIPA) within the specified time limit;
(2) Application for delayed examination;
(3) Incorporated by reference;
(4) Other situations.
The suspension of examination due to disputes over patent application rights or property preservation is not an unreasonable delay.
2.3 Only granted patents can claim patent term compensation
The patent for which patent term compensation is requested must be granted later than four years after the date of filing and three years after the date of request for substantive examination.
2.4 Patent term compensation is initiated at the request of the patentee
The patentee needs to actively request patent term compensation, and CNIPA will then review the request.
According to the proposed amendments to the Implementation Rules of the Patent Law issued recently, the patentee file a request to CNIPA within 3 months after the announcement of the patent authorization.
3. Other issues involved in patent term compensation
The implementation of the patent term compensation system also involves many details that need to be discussed, for example:
● How to calculate the specific time of the compensated patent term?
According to the proposed amendments to the Implementation Rules of the Patent Law issued recently, patent term for invention patent shall be compensated according to the actual number of days delayed. No relevant regulations have been issued to provide for more specific calculation methods.
● Relief system for patent term compensation
According to the proposed amendments to the Implementation Rules of the Patent Law issued recently, since the date when CNIPA announces the patent term compensation, any unit or individual who believes that the decision to grant patent term compensation does not meet the compensation conditions may request CNIPA to declare the patent term compensation decision invalid. If the petitioner or patentee is dissatisfied with the decision to maintain the validity of the patent term compensation or declare the patent term compensation, he/she may file a suit in a people's court within 3 months from the date of receiving the notice.
● Request fee for patent term compensation
According to the proposed amendments to the Implementation Rules of the Patent Law issued recently, the patentee shall pay relevant fees in accordance with the regulations in the patent term compensation procedure for the invention patent. Therefore, it can be known that a certain amount of official fees must be paid when requesting for patent term compensation, and the specific amount needs to be further notified.
4. Compared with the U.S. Patent Term Adjustment (PTA) system
At present, the more typical and complete patent term compensation system is the patent term adjustment (PTA) system in the United States. The United States Patent Law and the Implementation Rules of the Patent Law have detailed regulations on the PTA system, which are divided into four parts: (1) patent term guarantees, (2) limitations, (3) procedures for patent term adjustment determination, and (4) appeal of patent term adjustment determination. Wherein the PTA calculation method is explained in detail. For the convenience of the applicant, the USPTO also provides relevant forms for the applicant to calculate the PTA period, and the Public Pair website also provides query of detailed PTA, ABC and applicant delays, and the start and end time of date calculation. All these are worth learning in the specific implementation of the patent term compensation system in China.
In addition, the USPTO will actively compensate the delayed days to the patent term. The applicant can check whether the calculation is incorrect after receiving the notice of patent term adjustment, and if there is an error, the applicant can also request for correction. In other words, the patent term compensation in the United States does not require the applicant to make a request, which is undoubtedly much more convenient.
To sum up, the patent term compensation system directly affects the protection period of patents. But compared with the mature application of patent term compensation systems in the United States, Europe and Japan, Chinese patent term compensation system is still in its infancy, and more specific issues need to be improved. After the amended patent law takes effect, relevant entities should pay attention to the specific provisions and refer to them when filing and using Chinese patents, so as to avoid unnecessary loss of protection period and rights.
2021-04-28
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