China Patent 2024 PTA New Practice

1. Introduction to the practice of adjusting patent term under the Patent Law

The fourth amendment to China's Patent Law was adopted on October 17, 2020, and the amended Patent Law (hereinafter referred to as the "2021 Patent Law") will come into effect on June 1, 2021. According to Article 42, paragraph 2 of the 2021 Patent Law: "If an invention patent is granted four years from the date of patent application and three years from the date of filing a request for substantive examination, the patent administration department of the State Council shall, upon the request of the patent owner, grant a patent term adjustment (PTA) to compensate for unreasonable delays in the granting process of the invention patent; but delays caused by the patent applicant are excluded." It is worth noting that the 2021 Patent Law only stipulates the application threshold for PTA (four years from the date of patent application and three years from the date of filing a request for substantive examination), but does not stipulate the calculation method of PTA and the amount of PTA official fees.

Following the implementation of the 2021 Patent Law, China's National Intellectual Property Administration issued Announcement No. 423 on May 25, 2021, entitled "Interim Measures for Handling Examination Business Related to the 2021 Patent Law" (hereinafter referred to as the "Interim Measures"). Regarding PTA practice, Article 5 of the above-mentioned "Interim Measures" stipulates: "For invention patents whose patent authorizations are announced from June 1, 2021, the patent owner may, in accordance with the provisions of Article 42, paragraph 42 of the 2021 Patent Law, submit a PTA request in paper form within 3 months from the date of the patent authorization announcement, and pay the relevant fees in accordance with the payment notice issued by the National Intellectual Property Administration." The National Intellectual Property Administration will review the above-mentioned PTA request after the 2021 Patent Law Implementation Regulations come into effect. "According to the above-mentioned "Interim Measures", starting from June 1, 2021, for cases that meet the PTA request time limit stipulated in the 2021 "Patent Law" (4 years from the date of patent application and 3 years from the date of substantive examination request), some patent owners have submitted PTA requests but have not yet paid the formal request fee.

The National Intellectual Property Administration announced the amendments to the 2021 Patent Law Implementation Regulations on December 21, 2023. The revised Patent Law Implementation Regulations and the revised Patent Examination Guidelines have made specific provisions on the examination practice and handling standards for PTA request cases, especially the calculation of the reasonable and unreasonable extension compensation periods for PTAs, as well as the specific calculation methods.

II. Further announcements of the National Intellectual Property Administration's "Announcement on Adjusting Patent Fee Standards and Reduction and Exemption Policies" (No. 594) and "Notice on Payment of Patent Term Adjustment Fees and Related Matters"

On August 6, 2024, the National Intellectual Property Administration issued the Announcement on Adjusting Patent Fee Standards and Exemption Policies (No. 594), which further clarified the formal fee standards for PTA applications and the annual fee payment standards for PTA authorization to extend the patent term. The details of the above announcement are as follows:

"When a patent owner submits a PTA request, he must pay an official fee of 200 yuan per case. If the patent owner is found to meet the PTA compensation conditions after review, he must pay the annual fee during the PTA period, 8,000 yuan per case per year. If the compensation period is less than one year, no annual fee is required."

Following the release of Announcement No. 594, the National Intellectual Property Administration issued the "Notice on the Payment of Patent Term Adjustment Fees and Related Matters" on August 7, 2024, which stipulates as follows:

Patent owners who submit a PTA request before July 26, 2024 must pay the PTA request fee before October 26, 2024. Failure to pay the PTA application fee or pay in full by the prescribed deadline will result in no PTA compensation. If the National Intellectual Property Administration makes a PTA authorization decision, the patent owner must pay the annual fees for the PTA compensation period in full in one lump sum before the expiration of the 20-year patent term in accordance with the requirements of the PTA authorization decision. The late payment fee payment practices, annuity payment recovery procedures and reduced payment provisions stipulated in the Patent Fee Reduction and Exemption Regulations do not apply to the annuity payments required during the PTA compensation period. Failure to pay or pay in full the annual fees required for the compensation period by the deadline will result in no compensation. ”

1. For PTA requests filed by patent owners on or before July 26, 2024, the National Intellectual Property Administration will issue "payment notices" specifying that the deadline for payment of the official PTA request fee is October 26, 2024. Failure to pay the required official PTA application fee by the deadline or to pay in full will result in the rejection of the PTA application. This payment deadline cannot be extended and is not subject to reinstatement proceedings.
2. For PTA requests filed by patent owners after July 26, 2024, patent owners must pay the official PTA request fee within three months of the date of publication of the patent grant. Failure to pay the required PTA application fee by the deadline or in full will result in the rejection of the PTA application. This payment deadline cannot be extended and is not subject to reinstatement proceedings.
3. The annuity for the PTA compensation period must be paid in full in one lump sum before the expiration of the 20-year patent term. If the patentee fails to pay the required annuity before the expiration of the patent term, the patentee will be unable to receive the relevant PTA subsidy, even if the PTA subsidy was previously determined.
4. The National Intellectual Property Administration will only start the PTA-related examination after receiving the PTA request fee paid by the patent owner in a timely manner.
5. Starting from August 6, 2024 (the date of the release of Announcement No. 594 "Adjustment of Patent Fee Standards and Reduction and Exemption Policies"), patent holders can voluntarily pay the PTA application fee without waiting for the National Intellectual Property Administration's notification on the official payment of the PTA application fee. This early payment of the official PTA request fee can speed up the start of the PTA request examination.