On 1 June 2021, the fourth amendment to China’s Patent Law came into effect. One of the potentially important new provisions in this amendment is the Patent Term Adjustment (PTA) scheme. Patent Term Adjustment (PTA) is a mechanism for adding time onto the term of a Patent at the end of its “normal” life. A similar provision has existed in the US for many years, but it is new in China.
To be eligible for PTA, the patent needs to have granted or after 1 June 2021 and been subject to “unreasonable delay” during prosecution. The patent also needs to have been granted more than four years from its filing date and more than three years from the request for substantive examination.
Further, applications for PTA need to be made within 3 months from the date of grant of the patent. The deadline could therefore be as soon as 1 September 2021, i.e. for any patents that granted on 1 June 2021.
Further details of the scheme were released in the draft amendments to the Guidelines for Patent Examination on 3 August 2021. However, these draft Guidelines remain open for public comment until 22 September 2021 and have not yet taken effect. It will therefore take some time for the details of the new provision to become clear, e.g. what will count as “unreasonable delay”, or indeed the length of extension that might be available. It seems that CNIPA are suggesting that patentees may wish to file an application for PTA within the relevant three month period, but no formal consideration of that request will be given until the Guidelines are finalised. While this may leave patentees rather in the dark as to whether a PTA will eventually be granted, we encourage companies with potentially eligible patents, and who tend to keep their Chinese patents in force for the entirety of their term, to consider making use of this new provision.
More details on the effect of the fourth amendment to China’s Patent Law can be found here.
