CHINA Law and Practice Contributed by: Hans She, Muran Sun, Yichen Zhou and Herman Zhang, Fangda Partners
Where a patent for an invention is granted four years from the date of filing of the application and three years from the date of filing of the request for substantial examination, the patent administrative department of the State Council shall, at the request of the patentee, provide pat- ent term extension for unreasonable delay in the patenting process for the invention, except for unreasonable delay caused by the applicant. For the purpose of making up the time required for the assessment and approval of the mar- keting of a new drug, the patent administrative department of the State Council may, at the request of the patentee, provide a patent term extension for an invention patent relating to the new drug approved for marketing in China. The extension may not exceed five years, and the total effective term of the patent after the new drug is approved for marketing shall not exceed 14 years. 1.7 Third-Party Rights to Participate in Grant Proceedings From the date of publication of a patent applica- tion until the granting of the patent is announced, any individual may present objections to the CNIPA, providing reasons, regarding patent applications that do not comply with the provi- sions of Patent Law. The CNIPA does not impose mandatory require- ments for the format or documentation of pub- lic opinions submitted. Any objections raised by individuals concerning invention patent applica- tions that do not comply with Patent Law should be recorded within the respective application documents for the examiner’s consideration dur- ing the substantive examination. The essence of public opinions lies in retrieving relevant docu- ments pertaining to the targeted patent, and determining whether contrasting documents
affecting the novelty and inventiveness of the targeted patent application can be found. This factor significantly influences the examiner’s consideration of public opinions. Particularly, the discovery of pre-existing technology related to the targeted patent that the examiner did not retrieve, or other directly relevant non-patent literature, substantially enhances the likelihood of success for public opinions to be acknowl- edged. 1.8 Remedies Against Refusal to Grant an Intellectual Property Right If the patent applicant disagrees with the deci- sion of the CNIPA to reject the application, they may, within three months of receiving the noti- fication, request a review of the decision from the CNIPA. Following the review by the CNIPA, a decision will be rendered and communicated to the patent applicant. Should the patent appli- cant remain dissatisfied with the review decision of the CNIPA, they may, within three months of receiving the notification, bring a lawsuit before the People’s Court. 1.9 Consequences of Failure to Pay Annual Fees For those who have not paid or fully paid the annual patent fees, the patent holder is not allowed to grant licences. The CNIPA should notify the patent holder to make up the over- due payments within six months from the due date, along with payment of late fees. The late fee amount is calculated as 5% of the full annual fee for each month of delay beyond the specified payment period. If the fees remain unpaid upon expiration, two months after the expiration date, the examiner shall issue a notice of patent rights termination. The patent holder has two-and-a-half months from the date of receiving the termination notice
104 CHAMBERS.COM
Powered by FlippingBook