Official answer! Common questions related to new cost policies

2024-08-19

The China National Intellectual Property Administration (SIPO) released the FAQs related to the new expense policy on July. The full text is as follows:


Frequently Asked Questions Regarding New Cost Policies


1、 Regarding Batch Changes

1. If the applicants/patent owners of cases in the same batch (up to 100 patents) are different, but the agency before the change is the same and the agency after the change is also the same, can batch change agency business be handled in one batch? In addition, can multiple filing numbers for the general power of attorney and dismissal letter be added to the certification document filing?

Answer: If there are different applicants or patent holders in the same batch of cases, when handling batch agency changes, the system cannot effectively associate the information of different applicants or patent holders with the supporting documents they should submit. Therefore, batch agency changes cannot be made. It is recommended that the parties involved ensure that the applicant/patentee in the same batch of submitted invoices is consistent when handling bulk agency changes. If the case involves multiple applicants or patent holders, for example, if the case includes applicants/patent holders A and B, the filing numbers for A's general power of attorney and B's general power of attorney, as well as A's dismissal letter and B's dismissal letter, can be submitted separately.


2. What are the requirements for batch renaming proof documents?
Answer: For batch renaming services, if the identity information of the applicant/patentee has passed the verification of the business trust system platform, no proof documents need to be submitted.

If the verification of the business trust system platform is not passed, the supporting documents should be filed and the filing number of the filed supporting documents should be indicated when handling batch change procedures.


3. How to calculate the cost of batch changes?
Answer: The fee for changes in bibliographic data should be paid within one month from the date of submitting the application for batch changes in bibliographic data.
Batch renaming: If a batch of applicants (or patent holders) with identical content submit a name or title change on the same day without involving a transfer of rights, a fee of 200 yuan for the change of bibliographic data shall be paid for each change. Fill in the first application number (or patent number) corresponding to the batch when making payment.

Batch transfer: 200 yuan per item.

Batch change of contact person, agent information, or address postal code: No charge.


4. Batch renaming (import number form), with a maximum limit of 100 cases per batch. If multiple batches of change number forms from the same applicant (patentee) are submitted, is it necessary to pay multiple change fees.

Answer: If multiple batches with identical changes are renamed on the same day, only one change fee needs to be paid. If not submitted on the same day, multiple fees need to be submitted.


5. What are the specific requirements for filling in the ID number before batch renaming and change?

Answer: To handle full renaming (i.e. not importing the number form, renaming all eligible cases in the system), the applicant can fill in a unified social credit code or organizational code of 18 or 9 digits respectively before the change. Subsequent changes will be made to cases that correspond to the unified social credit code or organizational code recorded in the system. (For example, if the organization code is filled in as "123456789", the case with the organization code in the format of "123456789" in the system will be changed; if the organization code is filled in as "12345678-9", the case with the organization code in the format of "12345678-9" in the system will be changed).


2、 Regarding PCT applications and international design registration applications


1. For PCT applications, if the applicant completes the procedures for entering the Chinese national phase before July 26, 2024, but the entry date is after July 26, 2024 (inclusive), is it necessary to pay relevant fees?

Answer: Although the applicant completed the procedures for entering the Chinese national phase before July 26, 2024, if the entry date determined in the notification of the international application entering the Chinese national phase is after July 26, 2024, relevant fees need to be paid in accordance with the requirements of the "Notice of the National Development and Reform Commission and the Ministry of Finance on the Annual Fee Standards for Patent Compensation Period" (NDRC Price [2024] No. 1156).


2. Under what circumstances can the application fee and application surcharge be waived when a PCT application enters the Chinese national phase?
Answer: PCT applications accepted by the China National Intellectual Property Administration as the receiving office for international retrieval will be exempted from application fees and application surcharges when entering the national phase of China.

After July 26, 2024 (inclusive), the PCT application will be accepted by the China National Intellectual Property Administration as the acceptance office, and the international search will be conducted by the European Patent Office. When entering the national phase of China, the application fee and application surcharge shall be paid in full.


3. When PCT applies to enter the national phase of China, if the China National Intellectual Property Administration makes an international search report, can the substantive examination fee be reduced or exempted?

Answer: The PCT application for the international search report and the international preliminary patent report made by the China National Intellectual Property Administration will be exempted from the substantive examination fee when entering the national phase of China and making a request for substantive examination.


4. Can international applications with international search reports made by the European Patent Office, the Japan Patent Office, and the Swedish Patent Office after July 26, 2024 (inclusive) be eligible for reduced substantive examination fees when entering the Chinese national phase?

Answer: After July 26, 2024, international applications with international search reports issued by the European Patent Office, the Japan Patent Office, and the Swedish Patent Office will no longer be subject to a reduction in substantive examination fees when entering the Chinese national phase and requesting substantive examination.


5. After the implementation of this fee policy, can the applicant for international registration of design pay the application fee for international registration of design through the China National Intellectual Property Administration?

Answer: Currently, the international procedural fees for international design registration applications should be paid directly to the International Bureau. Specific payment information and methods can be found on the website of the International Bureau of the World Intellectual Property Organization. After the China National Intellectual Property Administration and the World Intellectual Property Organization have agreed on relevant cooperation matters, they will notify the relevant fee collection matters separately.


6. After the implementation of this fee policy, can applicants for international design registration applications designated in China request a reduction in China's separate designated fee?

Answer: Currently, the individual designated fee for China still needs to be fully paid. After the China National Intellectual Property Administration and the World Intellectual Property Organization (WIPO) have agreed on relevant cooperation matters, applicants who meet the conditions specified in the policy will be able to request a reduction of the separate designated fee for designated China in the new option of the International Bureau's DM/1 form. Before that, the applicant can go through the filing formalities of fee reduction with the China National Intellectual Property Administration.


3、 Regarding Patent Open License


1. After the patent opening license statement is approved and announced by the China National Intellectual Property Administration, can the patentee enjoy the annual fee reduction according to the opening license statement announcement?

Answer: After the announcement of the patent open license statement, the annual fee reduction cannot be enjoyed solely based on the announcement of the patent open license statement. Only when the patent owner and the licensee reach a patent implementation license through open licensing, can they enjoy the reduction of annual fees in accordance with the "Notice of the Ministry of Finance and the National Development and Reform Commission on Adjusting and Optimizing Patent Fee Policies" (Caishui [2024] No. 23).


2. How can a patentee request a reduction in annual fees due to an open license?

Answer: According to Chapter 11, Section 8 of Part 5 of the Patent Examination Guidelines, the patentee may enjoy the reduction of patent annual fees that have not yet expired from the date of filing during the period of patent open license implementation in accordance with regulations. The period of patent open license implementation refers to the period from the effective date of the patent open license implementation contract to the expiration of the patent license period. According to Section 3.2 of Chapter 2 of Part 5 of the Patent Examination Guidelines, if the requester files a patent open license implementation contract, it shall be deemed that the patentee has also requested a reduction in patent annual fees, and no further procedures are required.


3. How to determine the annual fee reduction year and proportion enjoyed by the patent owner after the patent open license implementation contract is filed and qualified?
Answer: According to the Notice of the Ministry of Finance and the National Development and Reform Commission on Adjusting and Optimizing the Patent Fee Policy (Caishui [2024] No. 23), the annual fee reduction ratio during the implementation of patent open licensing is 15%. According to Chapter 11, Section 8 of Part 5 of the "Guidelines for Patent Examination", if a patent open license implementation contract is approved for filing, the patentee may enjoy a reduction in the patent annual fee that has not yet expired from the qualified filing date during the period of patent open license implementation in accordance with regulations. If the patentee meets both conditions for reducing patent annual fees, the higher of the two conditions shall be applied for reduction.

For example, if the filing date of an invention patent application is August 8, 2010, and the authorization announcement date is October 10, 2012, according to regulations, the patent holder can enjoy an annual fee reduction of 85% for a period of ten years from the year the patent right is granted. If the patent open license implementation contract is filed on July 7, 2015 and the patent open license period expires on August 7, 2030, then the patentee of the case can enjoy an annual fee reduction of 85% for the third patent year to the twelfth patent year, and a 15% annual fee reduction for the thirteenth to twentieth patent years.


4. Can the annual fee be reduced when the patent owner and licensee who implement open licensing negotiate and reach a license agreement on the licensing fee?

Answer: According to the provisions of Chapter 11, Section 8 of Part 5 of the Patent Examination Guidelines, if the patent owner and the licensee sign a general license contract after negotiating the licensing fee under an open license, it does not belong to an open license. Therefore, they cannot enjoy the annual fee reduction policy obtained through open licensing.


5. Can those who withdraw the patent open license statement before the expiration of the patent open license period continue to enjoy the reduction of annual fees?

Answer: According to Chapter 11, Section 8 of Part 5 of the Patent Examination Guidelines, if the patentee withdraws the open license declaration, they will no longer enjoy the reduction of patent annual fees obtained from the open license from the next patent year. Therefore, if the patentee withdraws the patent open license declaration before the expiration of the open license period, they will no longer enjoy the reduction of patent annual fees obtained from the open license from the next patent year, but it does not affect the request for reduction of annual fees according to other conditions of the Patent Fee Reduction Measures.


6. After the patentee withdraws the patent open license declaration, can they enjoy a reduction in annual fees if they resubmit the open license declaration and reach an open license implementation contract for the patent?

Answer: If the patentee withdraws the patent open license declaration and then resubmits the open license declaration and reaches an open license implementation contract for the patent, and wishes to obtain a reduction in patent annual fees due to the re opening license, they must file a new patent open license implementation contract. Only after the filing is qualified can they enjoy the reduction of patent annual fees that have not yet expired from the date of filing qualification according to regulations.


4、 Regarding Compensation for Patent Term


1. Under what circumstances can patent term compensation be requested?

Answer: Patent term compensation aims to provide corresponding patent term compensation for unreasonable delays in the process of granting invention patents that are not caused by the applicant. If the number of days between the expiration of four years from the date of application for the invention patent and the expiration of three years from the date of substantive examination request to the date of announcement of the grant of the patent right, minus the number of days of reasonable delay and the number of days of unreasonable delay caused by the applicant, is a positive number, then the conditions for compensating for the duration of the invention patent right are preliminarily met.


2. What situations constitute reasonable delays in the authorization process?
Answer: The delay caused by the following four situations is a reasonable delay in the authorization process:
(1) Amend the reexamination procedure for patent application documents in accordance with Article 66 of the Implementing Regulations of the Patent Law;
(2) The suspension procedure in accordance with Article 103 of the Implementing Regulations of the Patent Law;
(3) According to Article 104 of the Implementing Regulations of the Patent Law, preservation measures shall be taken;

(4) Other reasonable circumstances such as administrative litigation procedures.


3. What circumstances constitute unreasonable delays caused by the applicant?
Answer: The following 5 situations are unreasonable delays caused by the applicant:
(1) Delay caused by failure to respond to a notice issued by the Patent Office within the specified deadline, i.e. requesting an extension of the deadline due to failure to respond to a notice issued by the Patent Office within the specified deadline;
(2) Applying for delayed review;
(3) Quoted from joining;
(4) The delay caused by the request for restoration of rights, unless it can be proven that the delay was caused by the Patent Office;

(5) International applications that have completed the procedures for entering the Chinese national phase within 30 months from the priority date, and the applicant has not requested early processing.


4. How to determine the date of substantive examination when calculating the compensation for patent term under Article 42 (2) of the Patent Law?

Answer: The date of substantive request shall be determined by the later of the three dates: the date of filing the substantive examination request in accordance with Article 35 (1) of the Patent Law, the date of full payment of the substantive examination fee for the invention patent application in accordance with Article 113 of the Implementing Regulations of the Patent Law, and the date of publication referred to in Article 34 of the Patent Law.


5. How to submit a deadline compensation request?

Answer: Where the patentee requests compensation for the patent term in accordance with Paragraph 2 of Article 42 of the Patent Law, he/she shall submit a request to the China National Intellectual Property Administration and pay the relevant request fee within three months from the date of the patent authorization announcement. Where a patentee requests compensation for the duration of a drug patent right in accordance with Paragraph 3 of Article 42 of the Patent Law, he/she shall submit a request to the China National Intellectual Property Administration and pay the relevant request fee within three months from the date of obtaining the marketing license for the new drug in China. If a request for patent term compensation is submitted before July 26, 2024, the fee shall be paid within three months from July 26, 2024, in accordance with the patent fee standards published in the relevant fee policies.


6. What is the fee standard for patent term compensation request? What are the payment methods?
Answer: If the patentee requests compensation for the patent term, they should pay a patent term compensation request fee of 200 yuan per item. If the payment is not made or fully paid upon expiration, no compensation for the patent term shall be granted.

The payer can pay the fee through online payment, face-to-face payment, bank, post office and other methods at the Patent Office or 34 agency offices.


7. What is the payment standard for the annual fee during the patent compensation period? What are the payment methods?
Answer: If the China National Intellectual Property Administration has made a decision to grant compensation for the patent term, the patentee should pay the annual fee for the patent compensation term in full in a lump sum before the expiry of the 20 year term of the patent according to the requirements of the decision on the approval of compensation for the patent term. The annual fee is 8000 yuan per piece per year, and no part less than one year will be charged. If the annual fee for the patent compensation period is not paid or fully paid upon expiration, there will be no late fee or recovery period. The annual fee for patent compensation period does not apply to the situations where it is reduced as stipulated in the fee reduction method. If the annual fee for the patent compensation period is not paid or fully paid upon expiration, the patent compensation period shall not be granted.

The payer can pay the fee through online payment, face-to-face payment, bank, post office and other methods at the Patent Office or 34 agency offices.


8. Can the request for compensation for patent term delay submitted in accordance with Article 42 (2) and (3) of the Patent Law be restored?

Answer: According to Article 42 (2) and (3) of the Patent Law, if the request for compensation for patent term is delayed within the prescribed period, there is no recovery period.


9. What is the examination process for patent term compensation requests?

Answer: If a request for patent term compensation is submitted in accordance with Paragraph 2 of Article 42 of the Patent Law and is found to meet the conditions for term compensation after examination, the China National Intellectual Property Administration will issue the Decision on Examination and Approval of Patent Term Compensation, make a decision on granting term compensation and notify the number of days for term compensation; If the conditions for time limit compensation are not met after examination, the China National Intellectual Property Administration will issue the Notice of Correction for Formalities or the Notice of Examination Opinions as the case may be. If the conditions for time limit compensation are still not met after correction or opinion statement, the China National Intellectual Property Administration will issue the Decision on Examination and Approval of Patent Right Time Limit Compensation and make a decision not to grant time limit compensation.


10. What is the examination process for compensation requests for drug patent term?

Answer: If a request for compensation for the duration of a drug patent is submitted in accordance with Paragraph 3 of Article 42 of the Patent Law and is found to meet the conditions for compensation for the duration of the patent, the China National Intellectual Property Administration will issue the Decision on Examination and Approval of Compensation for the Duration of a Drug Patent, make a decision on granting compensation for the duration of the patent and inform the number of days for compensation for the duration of the patent. If the conditions for time limit compensation are not met after examination, the China National Intellectual Property Administration will issue the Notice of Correction for Formalities or the Notice of Examination Opinions on Time Limit Compensation for Drug Patents as the case may be. If the conditions for time limit compensation are still not met after the correction or statement of opinions, the China National Intellectual Property Administration will issue the Decision on Examination and Approval of Time Limit Compensation for Drug Patents and make a decision not to grant time limit compensation.


11. How to inquire about the approval decision for patent term compensation?

Answer: The approval decision for patent term compensation can be queried in the "Patent Examination Information Query" section of the patent business processing system.


12. How to provide relief for those who are dissatisfied with the approval decision on compensation for patent term?
Answer: If you are not satisfied with the approval decision of patent term compensation, you can apply to the China National Intellectual Property Administration for administrative reconsideration.
Source: Website of China National Intellectual Property Administration
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