Introduction to China's Patent Term Extension (PTA)

The 2021 amendment to China's Patent Law introduced a patent term compensation system, in which Article 42, paragraph 2 of the Patent Law stipulates:

"If the invention patent right is granted four years after the date of application for the invention patent 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 patent right holder, provide patent right term compensation for the unreasonable delay in the authorization process of the invention patent, except for the unreasonable delay caused by the applicant."

With the implementation of the new Patent Law Implementing Rules and Patent Examination Guidelines in January 2024, the calculation method and review of patent term compensation have attracted more attention. The patent term compensation mentioned in this article is only PTA (Patent Term Adjustment) patent term compensation, and does not involve PTE drug patent term compensation. For details about PTE drug patent terms, please refer to: https://yezhimaip.com/article/2024-09/17254416775445.html

Necessary conditions for obtaining patent term compensation

• The following three necessary conditions must be met simultaneously in order to have the opportunity to obtain patent term compensation.
  • Patent type: invention patent
    • It should be clarified that the types of patents eligible for patent term compensation are limited to invention patents . Utility model and design patents are not eligible for patent term compensation. In addition, if the same applicant applies for both a utility model patent and an invention patent on the same day for the same invention, it is necessary to study the specific circumstances of the two cases to determine whether they should be considered the same invention and therefore eligible for patent term compensation.
• Make a request
  • Patent term compensation can only be initiated when the patent owner actively requests it .
  • Requester: The request must be made by the patentee. If a patent agency has been appointed, the request for patent term compensation should be handled by the patent agency. If a patent right is jointly held by multiple patentees and no patent agency has been appointed, the request for patent term compensation should be handled by the representative.
  • When to file: Patent holders must file a request with the Patent Office within three months of the date of the patent authorization announcement and pay a 200 yuan patent term compensation request fee. Failure to file a request within the prescribed time limit will result in the loss of the right to patent term compensation, with no opportunity to restore the right.
• Full four feet three
  • The prerequisite for obtaining the patent term compensation days is to meet the following two conditions at the same time:
    • Four years: The date of the authorization announcement is later than the date four years have passed since the "application date," meaning the authorization period exceeds four years from the application date. In patent term compensation clauses, the "application date" should be understood as the date the CNIPA receives the invention patent application, as compensation is provided for unreasonable delays in the authorization process and does not include delays caused by reasons unrelated to the CNIPA.
    • Three: The authorization announcement date is later than the date when three years have passed since the "date of request for substantive examination", that is, the authorization period exceeds three years from the date of request for substantive examination.
      • When determining the "date of request for substantive examination", three key dates need to be compared:
        • Date of filing the request for substantive examination
        • Date for payment of substantive examination fee
        • Date the patent application was published
      • The latest of the three dates mentioned above shall be the "date of request for substantive examination." In the third case, where the request for substantive examination occurs before the publication date, the publication date shall be the date of request for substantive examination in accordance with the relevant provisions on time limit compensation.
• Calculation Method of Patent Term Compensation
  • Before submitting a request for patent term compensation, accurately estimating whether patent term compensation can be obtained and the number of days that can be compensated is crucial for the patentee to decide whether to file a patent term compensation request. To facilitate the patentee's decision-making, it is necessary to accurately understand the calculation rules for patent term compensation and inform the patentee of the accurate estimated number of days of compensation in advance. In summary, the formula for calculating patent term compensation is as follows:
    • Patent Term Extension (PTA) = min(full four, full three) - reasonable delay in granting process - unreasonable delay caused by applicant
      • 1.min ("full four", "full three") requires calculating two time differences separately and taking the smaller value: full four = authorization announcement date - 4 years from the application date; full three = authorization announcement date - 3 years from the request for substantive examination
      • Both "Full Four" and "Full Three" must be positive numbers, and the "Application Date" should be the date the CNIPA receives the invention patent application. For example, for a patent application that enters the Chinese national phase under the PCT, the application date is the date the PCT application enters the Chinese national phase when calculating patent term compensation.
• Reasonable delays in the authorization process
  • Reasonable delays in the authorization process include delays caused by the review procedure for amending patent application documents in accordance with Article 66 of the Implementing Regulations of the Patent Law, the suspension procedure in accordance with Article 103 of the Implementing Regulations of the Patent Law, the preservation measures in accordance with Article 104 of the Implementing Regulations of the Patent Law, and other reasonable circumstances such as administrative litigation procedures.
  • In the patent term compensation system, there are currently specific restrictions on the application of the reexamination procedure: if the applicant modifies the patent application documents during the reexamination procedure, the time of the reexamination procedure will not be included in the scope of patent term compensation, that is, the time interval between the date of issuance of the rejection decision and the date of issuance of the reexamination decision cannot be given term compensation.
  • For review cases in which only statements of opinion are submitted but the application documents are not modified, if there are no substantial changes to the application text, after the case is finally authorized, the review procedure time (from the date of rejection to the date of review decision) will be included in the compensation range, and corresponding time compensation will be given when the applicant makes a request for time compensation.
  • In the latest draft revision of the Examination Guidelines, the National Intellectual Property Administration intends to revise the criteria for determining whether a reexamination procedure constitutes a reasonable delay in the granting of a patent. The denial of time limit compensation is not limited to amendments to patent application documents, but also extends to the introduction of new grounds or evidence during the reexamination process. If these revisions are completed, accurately estimating the number of days to be compensated will be significantly more difficult.
  • Other situations that constitute reasonable delays in the authorization process, i.e., administrative review, suspension, preservation, administrative litigation, etc. before authorization, require deducting the corresponding time from the review situation when calculating the patent term compensation period.
• Unreasonable delay caused by the applicant
  • The Patent Examination Guidelines clearly define the following five situations as unreasonable delays caused by applicants:
    • Delays caused by failure to respond to a notification from the Patent Office within the specified period
    • As specified in the Patent Examination Guidelines, the number of days of delay in this situation is from the expiration of the deadline to the actual date of submission of the response. For example, the first examination opinion was issued on January 6, 2025, and the applicant submitted a request for extension before the deadline of May 6, 2025, and ultimately submitted a response on May 26, 2025. Here, the number of days from the deadline expiration of May 6, 2025, to the actual date of the response of May 26, 2025 (20 days) are considered unreasonable delays caused by the applicant.
    • Scope of application: This includes responses to all notices with specified deadlines during the preliminary and substantive examination stages, including office action notices, notices for correction, divisional notices, and notices for payment of the unitary restoration fee. Furthermore, if a response to a reexamination notice is not received within the deadline, its calculation will be determined based on whether the reexamination process is already included in the time limit compensation. That is, if the reexamination process is considered a reasonable delay in the authorization process and is not compensated under Article 2 above, and the time spent on the reexamination process is deducted from the time limit compensation calculation, then even if a response to the reexamination notice is not received within the deadline, this should not be counted, as otherwise the number of days of delay will be double-counted.
• Delays caused by delayed review
  • If you request a deferred examination, the number of days of delay is the actual number of days of delayed examination. When calculating the actual number of days of delayed examination, you need to take into account the withdrawal of the deferred examination. The number of days of delay caused by delayed examination is the time interval between the effective date of the delay and the expiration date of the delay.
• Delays caused by incorporation by reference
  • When a case file involves incorporation by reference, if the CNIPA has not established a basis for examination upon receipt of the invention application, or if the applicant changes the basis for examination upon submitting the Request for Confirmation of Incorporation by Reference, the CNIPA must reinitiate the examination. Therefore, any delay caused by incorporation by reference should be considered a delay caused by the applicant. Specifically, the number of days of delay should be the number of days between the date the CNIPA received the invention patent application and the date the Request for Confirmation of Incorporation by Reference was submitted.
• Delays caused by requesting restoration of rights
  • The number of days of delay is the time interval from the original expiration date to the date of issuance of the notice of approval of the request for restoration of rights, unless it can be proved that the delay is caused by the Patent Office.
  • Similar to delays caused by reexamination proceedings, there is also a key qualification: the exception must be proven that the patent office caused the deemed withdrawal and restoration process. However, this situation is relatively rare. For example, if the patent office issued a deemed withdrawal notice due to a misunderstanding by the examiner, the patent applicant can explain in a statement of opinion when submitting a request for restoration that "the deemed withdrawal notice was not caused by the patent applicant" and submit relevant evidence. If the patent applicant's explanation is accepted by the examiner, the time spent due to the erroneous deemed withdrawal notice (the time interval from the issuance date of the deemed withdrawal notice to the issuance date of the restoration notice) will not be considered a delay caused by the applicant.
• Delays caused by the applicant's failure to request early processing for an international application entering the Chinese national phase within 30 months from the priority date
  • If the applicant cancels the default "early processing" option, the CNIPA will receive the application file but be unable to begin examination, which will be considered an unreasonable delay caused by the applicant. The number of days of delay is the interval between the date of entering the Chinese national phase and the date 30 months from the priority date.
• Other considerations
  • Submit the request and fee first, then learn the number of days of compensation. No refund will be given if the number of days of compensation is not received.
    • According to the relevant regulations on patent term compensation, the patentee must proactively submit a request for patent term compensation and the relevant fees within three months of the date of the patent grant announcement before the National Intellectual Property Administration will notify the number of days of compensation available. Furthermore, even if the number of days of compensation is zero, the patent term compensation request fee paid is non-refundable. Therefore, it is particularly important to accurately estimate the number of days of compensation available before submitting a request.
• Annual fee payment after receiving term compensation
  • If the patent compensation period is less than one year, no annual fees are required. If the compensation period is one year or longer, the corresponding annual fees must be paid or paid in lump sum for each additional year, no later than the expiration of the 20-year patent term, in accordance with the provisions of the patent term compensation approval decision issued by the State Intellectual Property Office. If the annual fees for patent term compensation are not paid or paid in full by the expiration of the patent term, no patent term compensation will be granted, and the patent term cannot be restored.

The patent term is the effective period for the patentee to exercise their rights. Accurately estimating the number of days of patent term compensation in advance and making rational use of the patent term compensation system are of great significance to safeguarding the legitimate rights and interests of patentees.