Article 42 of Chinese Patent Law: The term of patent right for inventions shall be twenty years, the term of patent right for utility models shall be ten years, and the term of patent right for designs shall be fifteen years, all commencing from the filing date.
Where a patent right for an invention is granted after the expiration of four years from the filing date and after the expiration of three years from the date of the request for substantive examination of the application, the patent administration department under the State Council shall, at the request of the patentee, extend the term of the patent to compensate for the unreasonable delay in the granting process of the invention, except for the unreasonable delay caused by the applicant.
In order to compensate for the time taken for the review and approval process before the marketing of a new pharmaceutical product, the patent administration department under the State Council shall, at the request of the patentee, extend the term of the new pharmaceutical-related invention which has been approved for marketing in China. The compensation term may not be more than five years, and the total effective term of the patent right may not be more than fourteen years from the date of marketing approval.
If the proposed patents satisfies the requirements of Article 42, the patentee shall be entitled to file the request for compensating the patent term with CNIPA within 3 months as of the granting announcement date of the proposed patent. The compensated time shall be counted according to the actual delayed days.
Unreasonable delays caused by the applicant could not be compensated , including the following situations:
a)Failure to respond to Office Actions issued by CNIPA within the specified time limit;
b)Request for delayed examination is filed during the period of the examination of the proposed patent application;
c)Other situations.
For the product patents,preparation methods patents, pharmaceutical use patents for chemical, biological pharmaceutical s, new traditional Chinese medicine products, which are allowed for marketing in China, the term compensation can be granted under the requirements of the compensation conditions.
The calculation method for the compensation time of pharmaceutical patent term is as follows:
The date on which a new pharmaceutical applying for registration obtains market authorization in China minus the patent application date, and then minus five(5)years.
Patentee who requests compensation for pharmaceutical patent term shall be entitled to file the request for adjusting the patent term with CNIPA within 3 months as of the approval date when the pharmaceutical marketing license application is approved,accompanied by the relevant supporting proofs.
When filing the said request, the pharmaceutical and the patents thereof should meet the following requirements:
a)If a pharmaceutical has multiple patents at the same time, the patentee can request compensation for pharmaceutical patent term for only one of the patents;
b)If a patent involves multiple pharmaceutical s at the same time, the patentee can request compensation for pharmaceutical patent term for only one of the pharmaceutical products;
c)The proposed patent has not yet been granted for the compensation for pharmaceutical patent term;
d)The remaining protection period for the proposed patent to be requested for compensation for pharmaceutical patent term shall not be less than 6 months.
After examining the requests for the patent term compensation and the pharmaceutical patent term compensation, CNIPA shall make the official decision on the term compensation and make the registration with the publication for the proposed patents satisfying the compensation conditions; otherwise, CNIPA would deny the requests. From the publication date, any one may request CNIPA to declare the invalidation of the allowed compensation term, and both the applicant requesting to declare the invalidation or the patentee is entitled to file the litigation with court within three(3) months as of the receipt of the invalidation decision.
Note: The above information is edited as per “draft for opinions- Implementing Rules of Chinese Patent Law” just for study.
