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Adjustment of China Patent Government Fees as of 1 August 2018
Adjustment of China Patent Government Fees as of 1 August 2018
According to the Announcement No. 272 issued by the State Intellectual Property Office (SIPO), the SIPO will adjust certain patent fee items as of 1 August 2018. This adjustment will reduce certain fee payment burden for patent applicants and patentees. The concerned fee adjustments include the following:
1. With respect to a domestic patent application (non-PCT international application), the registration fee for grant of patent right, the printing fee for the announcement of the granting of patent right, and the fee for a change in the bibliographic data (change of patent agency, change of representation contents) as well as the transmittal fee (the SIPO, as the Receiving office, transferring the PCT international application to the International Bureau) shall all be exempted. For any of the above-mentioned fees due on or before 31 July 2018, the patent applicant or the patentee should still pay the fee according to the patent fee regulations being implemented prior to the Announcement 272.
2. According to the "Measures for Reduction of Patent Fees," a patent applicants or a patentee who meets the specific qualifications (e.g., an individual with monthly income lower than RMB3,500 or with yearly income lower than RMB42,000 for the previous year, an enterprise with taxable income lower than RMB300,000 for the previous year, and any public institutions, social organization or non-profiting research and development organization) may submit relevant evidential document(s) and apply for reduction of certain patent fees (e.g., filing fee, substantive examination fee for an invention patent application, annuity and reexamination fee). Pursuant to the stipulation in the "Measures for the Reduction of Payment of Patent Fees," the deductible annuities include "the annuities for the first 6 years from the year in which the patent is granted." According to the Announcement No. 272, as of 1 August 2018, the deductible annuities are changed to "the annuities for the first 10 years from the year of patent grant." For a granted patent of which an annuity is deductible on or before 31 July 2018, if the said deductible annuity is one for any of the first 6 annuity payment years of the patent, the reduction of annuities for such patent will be expanded to cover annuities for the first 10 years of the patent term; if the said deductible annuity is for the payment years from the 7th to the 9 payment years, the reduction of annuities will start to run until the next payment year till the 10th payment year; if it is for the 10th year or for any of the subsequently payment years, , no reduction of annuity can be enjoyed. The above-mentioned principle (under the Announcement No. 272) is applicable to patents, of which the annuities are due on or after 1 January 2018 and which have not been paid.
3. Under the current practice, if an applicant of an invention patent application voluntarily withdraws his/ her patent application before the said application enters into substantive examination stage, the SIPO shall refund in full amount the substantive examination fee; if the applicant withdraws the patent application after the application has entered into the substantive examination stage, the SIPO shall not refund the substantive examination fee. According to the Announcement No. 272, as of 1 August 2018, if an applicant of an invention patent application voluntarily withdraw his/her patent application before the due date for responding to the first office action and before the applicant files a response to the office action, the applicant may request a 50% refund of the substantive examination fee already paid (around RMB 1250). The new provision under the Announcement No. 272 offers an applicant of an invention patent application an opportunity to be refunded a 50% payment of the substantive examination fee. Nevertheless, it is advised that a patent applicant withdraws his/her patent applications and applies for the refund after careful consideration. According to the China Patent Law, the Implementing Regulations of the Patent Law as well as the Patent Examination Guidelines, if an applicant takes an initiative to withdraw his/ her patent application and once the SIPO issues a Notification for Confirming Withdrawal of the Patent Application to the applicant, there is no way for the applicant to restore the said patent application (unless a true patent applicant is able to prove that he/ she is the true applicant and prove by submitting a judgment issued by court that the one who filed the patent application earlier has no right to file the said patent application and that the previous applicant maliciously withdrew the patent application) In addition, the applicant is not permitted to file any divisional application based on the withdrawn patent application.
In contrast, if the applicant passively abandons his/ her patent application by "taking no further action", the 50% substantive examination fee shall not be refunded. However, by taking this approach, if the applicant changes his/her mind, he/ she may file a request to restore the abandoned patent application (with a fee for restoring of RMB1000) within two months from the date of receiving the "Notification of Application Deemed as Withdrawal" issued by the SIPO. In addition, if divisional application(s) can be filed, the applicant may file divisional application(s) based on such restored application. Therefore, with respect to the specific approach for abandoning a patent application, the applicant should take the entire patent family into consideration and thus decide the most favorable approach of abandonment for the concerned patent application.
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