Author: Huang Yumeng, ScienBiziP, Process and Information Department of China

According to the notice of the Ministry of Finance on adjusting and optimizing the patent fee policy issued in July 2024, the relevant fee standards for patent term compensation and PCT international applications to enter the national phase of China have not yet been implemented. We have been looking forward to the policy of the State Intellectual Property Office of the People’s Republic of China, and finally came the Announcement of the China National Intellectual Property Administration on Adjusting Some Patent Fee Standards and Reduction Policies (No. 594) on August 6, 2024.

Previously, we have provided a detailed explanation of the annual fee reduction during the implementation of the patent open license and the relevant matters regarding the bulk change of patent applicants/patent owners. Today, we will focus on introducing the compensation fees for patent term and the fee reduction policies for PCT international applications entering the Chinese national phase.

Although this policy specifies the amount of fees to be charged, when do we need to pay the additional fees for cases that have previously processed deadline compensation requests? When do we need to pay for cases that have not yet submitted a request for patent term compensation? Let’s take a closer look at the Notice on Matters Related to the Payment of Compensation Fees for the Term of Patent Rights, which was subsequently supplemented by the China National Intellectual Property Administration.

1. For cases that meet the requirements for patent term compensation, a request for patent term compensation and payment of a request fee of 200 yuan per case shall be submitted within 3 months from the date of announcement;

2. If the patent term compensation request meets the conditions for term compensation after examination, an annual fee for the patent term compensation period shall be paid, with a fee of 8000 yuan per item per year. If the term compensation is less than one year, no annual fee for the compensation period shall be paid;

3. If the patent term compensation request fee is not paid or fully paid upon expiration, the patent term compensation shall not be granted;

4. For those who meet the requirements of patent compensation, the annual fee for compensation shall be paid in full before the expiration of the 20-year term of the patent.

Clarify the payment deadline and precautions:

Payment deadline situation 1: If the applicant requests patent term compensation before July 26, 2024 (excluding the same day), they shall make up for the patent term compensation request fee before October 26, 2024 (excluding the same day);

Payment deadline situation 2: If the applicant submits a patent term compensation request after July 26, 2024 (including the same day), the patent term compensation request fee must be paid within 3 months from the announcement date;

Attention: The annual fee for the patent compensation period must be paid in full at once, without any late fees, recovery period, or applicable fee reductions.

give an example:

A certain applicant has 2 invention patent application cases. Case A submitted a patent term compensation request on March 5, 2024, with a compensation period of 280 days; Case B submitted a patent term compensation request on August 2, 2024, with a publication date of June 6, 2024 and a compensation period of 626 days.

analysis:

a. Let’s first take a look at Case A: Its patent term compensation request submitted before March 5, 2024 (i.e. before July 26, 2024) meets the type of payment deadline situation 1, so Case A needs to pay a patent term compensation request fee of 200RMB before October 26, 2024 (excluding the same day); And the number of days for which compensation is requested is 280 days (<1 year), so there is no need to pay the annual fee for the patent compensation period. b. Let’s take a look at the situation of Case B again: The announcement date of Case B is June 6, 2024, and the submission of the patent term compensation request is on August 2, 2024, which meets the type of payment deadline situation 2. Therefore, Case B needs to pay the patent term compensation request fee of 200RMB within three months from the announcement date, that is, before September 6, 2024 (including the same day); In addition, the number of days for which compensation is requested is 626 days (>1 year<2 years), so the compensation period annual fee of 8000 yuan must be paid before the expiration date of the 20th year annual fee. c. Addendum: If the requested compensation period is 900 days (>2 years<3 years), a one-time payment of 16000 yuan for the compensation period of 2 years must be made before the expiration date of the 20th year’s annual fee.

In combination with the Notice on Matters Related to the Payment of Compensation Fees for the Term of Patent Rights, which was subsequently supplemented by the China National Intellectual Property Administration, let’s see the difference between the entry date 2024/7/26 as the time limit of the China National Intellectual Property Administration.

Before July 26, 2024 (excluding the current day):

If the receiving office acts as the China National Intellectual Property Administration of China, the application fee and application surcharge shall be exempted; Reduce the substantive examination fee by 50% when submitting a request for substantive examination;

The international retrieval unit, as the China National Intellectual Property Administration of China, may be exempted from paying the substantive examination fee;

The International Searching Authority is responsible for reducing substantive examination fees by 20% for the European Patent Office, the Japan Patent Office, and Sweden.

After July 26, 2024 (inclusive):

The application fee and application surcharge can be reduced or exempted only when the receiving office/international retrieval unit is the China National Intellectual Property Administration of China;

The international retrieval unit, as the China National Intellectual Property Administration of China, may be exempted from paying the substantive examination fee;

The International Searching Authority, as the European Patent Office, Japan Patent Office, and Sweden, is required to pay the full substantive examination fee.

Special attention:

a. The other fee standards for PCT applications entering the Chinese national phase shall be implemented in accordance with the domestic part;

b. The entry date for international applications entering the Chinese national phase is the later of the document submission date or payment date.

Applicants who enter China’s international design application through the Hague Agreement on the International Registration of Industrial Designs can enjoy the same fee reduction policy as domestic patent applications for the first and second designated fees paid, which can be reduced by 85% or 70% of the annual fee. Specific fee reduction procedures and scope of application will be explained and shared with everyone after being notified by the State Intellectual Property Office.