Alyson Lam

May 2024

Patent Term

Patent Term Adjustments (PTA)

• Applicants can now request PTA within 3 months of the grant for patents which are granted 4 years after the filing date, or 3 years after filing a request for examination, whichever is later.
• When calculating the adjustment period, reasonable delays due to administrative dispute are viewed positively, whereas requests for extension of response periods are viewed negatively.

Patent Term Extensions (PTE)

• Available for pharmaceutical patents.
• Applies to product, preparation methods and medical use patents covering an active pharmaceutical ingredient in a new drug.
• Maximum compensation duration is 5 years.
• Extension duration is calculated from the Chinese patent filing date to marketing authorisation date in China.
• Total effective duration of a valid patent after authorisation must not exceed 14 years.

Priority Rights

Restoration / Remedial Procedures for Inadvertent Loss of Priority Rights

• Applicants can now request restoration of priority right within 14 months from priority date, i.e. 2 months from the initial deadline.
• Alternatively, if the priority right has not been restored during the international phase, or if the request is not approved, applicants can request restoration within 2 months from the date of entry in the Chinese national phase.
• If priority has been claimed when filing the application, it is possible to file a request to add or correct a priority claim within 4 months from the filing date or within 16 months of the earliest priority date.
• Applicants must provide a justifiable reason when requesting restoration of priority rights.
• As the amended Implementing Regulations of the Patent Law does not specify whether CNIPA will favour an “unintentional” or “despite all due care” criterion, this remains to be seen from actual cases.

Addition or Correction of Priority Claim

• Addition or correction of a priority claim after filing of the Chinese application is now allowed.
• This must be requested within 4 months from the filing of the application, or 16 months from the filing date of the earlier application, whichever is later.

Incorporating by Reference

• Prior to the amendment, applicants could not maintain the original filing date if any part of the specification is incorrect or missing.
• Applicants can now request to incorporate all or part of the drawings, description or claims of an earlier application through reference within 2 months of the filing date.
• This may be useful in situations where the translation of a foreign priority application into Chinese resulted in errors at the time of filing.

Computer and Diagnostic Inventions

Computer Program Product Claims

• Now eligible under new examination guidelines.
• ‘Computer program product’ means a software product that implements a solution primarily by means of a computer that executes the instructions of the software or program.
• Eligible objects now include ‘a process’, ‘a computer device / apparatus / system’, ‘a computer-readable storage medium’ and ‘a computer program product’.

Diagnostic Claims

• There is a new drive to promote inventions / patent protection in the field of intelligent medicine.
• While diagnostic claims remain non-patentable subject-matter, the new guidelines provide an expanded list of examples of methods that are not diagnostic methods. This includes “information processing methods all steps of which are carried out by devices such as computers”.

Patent Formalities

• Foreign Applicants can now deal with CNIPA directly on certain matters including:
  1. filing certified priority documents; and
  2. annuity payment.

• Drawings in colour are now accepted.
• Applicants now have the option to request a deferral of substantive examination. This may be useful if applicants opt to use the patent prosecution highway (PPH) between CNIPA and other patent offices.
• It is now possible to add or delete inventors named in a patent application within one month of receipt of official acknowledgment of receipt of the deposit.
• Removal of the 15-day Rule to reflect the immediate delivery of electronic communications.