Recently, the official website of China Patent E-Platform released Q&A about extending the deadline of patent annuities and going through the formalities of restoring rights, involving the parties concerned and their submission of the evidence to prove that they cannot go through the formalities of patent and layout-design of integrated circuits due to pandemic when the relevant time limit expires. Previously, the National Intellectual Property Administration issued the notice on the implementation of intellectual property policies, with an approval of postponing the payment of annual fees. For annual fee (excluding the annual fee for the first year after granting) that expires from June 15, 2022 to December 31, 2022 and enjoys China's patent fee reduction policy, the deadline of the annual fee payment will be automatically extended to June 15, 2023, during which no overdue payment will be incurred. 

I. Q&A related to the extension of deadline of the annual fee payment

Q: Why does this policy not apply to the annual fee for the first year after granting? 

A: Because the annual fee for the first year is closely related to the patent registration procedures and authorization announcement procedures, timely payment of the annual fee for the first year will help the obligee complete the patent authorization procedures in time and obtain patent protection. Therefore, the policy of extending the deadline of patent annual fee does not include the annual fee for the first year after granting of the patent. 

Q: How to understand the expiration date of the annual fee payment period? 

A: According to Article 98 of the Implementing Regulations of the Patent Law, the annual fee after the year of grant of the patent shall be paid before the expiration of annuity of the previous year. The expiration date of the payment period is the corresponding day of the year when the application date is made. 

Q: Can this policy be applied to cases in overdue payment of annual fees? 

A: Currently the answer is NO. However, if the patent affairs are delayed due to the epidemic situation, resulting in the loss of rights, the patentee can go through the formalities of restoring rights according to the requirements of Announcement No.350 of the National Intellectual Property Administration. 

Q: Is it still too late to apply for fee reduction before meeting the deadline of the annual fee? 

A: The patentee's request for reduction of patent fees shall be handled in accordance with the relevant provisions of the Measures for Reduction of Patent Fees. Patents that pass the examination and approval of the request for reduction of patent fees before the expiration of the annual patent fee payment period and meet the requirements can enjoy this policy. If the patent fee reduction procedures have been handled and have passed the examination and approval, there is no need to repeat the procedures. 

Q: If the patent right has already enjoyed the policy of extension of the deadline of the annual fee, and then the right is transferred, and the transferred patentee has not gone through the formalities of fee reduction, can the patent right still enjoy the policy of extending the deadline of the annual fee? 

A: For patents that have already enjoyed the policy of extending the annual fee payment period, the extension of the annual fee payment period for the patent right will not be cancelled due to the subsequent transfer of rights and the failure of the transferred patentee to go through the fee reduction procedures, but it will affect the fee reduction for the patent right to enjoy the corresponding annual fee. 

Q: Will the payment notice be issued as of June 15, 2023?

A: If the patentee fails to pay or fully pays the corresponding annual fee before June 15, 2023, a payment notice will be issued. 

Q: If the relevant formalities are not handled and the annual fee is not paid in accordance with Article 98 of the Implementing Regulations of the Patent Law upon the expiration of the extension, why does the patent right terminate from the expiration date of the annual fee payable in 2022? 

A: The protection period of patent right is prescribed according to law, which is calculated from the filing date. The policy of extending the annual fee payment period of patent only extends the annual fee payment period of patent rights that meet certain conditions, not the protection period of the patent rights. Therefore, if the patentee fails to go through the relevant formalities and pay the annual fee in accordance with Article 98 of the Implementing Regulations of the Patent Law, the patent right shall be terminated from the expiration date of the annual fee payable in 2022. 

Q: Will the copy of the Patent Register provide a corresponding explanation for the extension of the annual patent fee payment period? 

A: There will be a corresponding explanation. Failure to pay the annual fee for the corresponding year complies with the provisions of the Announcement No.486 of CNIPA on the extension of the payment period of patent annual fee. 

Q: How to inquire about the new deadline of annual fee after the extension? 

A: The extended annual patent fee period, the specific payment amount, and the payment deadline can be inquired through the e-platform of Patent Examination Information in China and Other Countries. 

Q: If the patentee receives the payment notice for two years, how to pay the annual fee and overdue fee for the corresponding year? 

A: For patents that fail to pay the corresponding annual fee within the extension period of annual patent fee payment, they will receive payment notices for two years after the extension period of annual patent fee payment expires. If the patentee pays within the overdue payment period as required by the notice, the annual fee and overdue payment fee that meet the requirements of the corresponding period will be preferentially used as the annual fee and overdue payment fee of the previous year, and the surplus annual fee and overdue payment fee will be used as the fee of the next year.  

II. Answer to the questions related to the restoration of rights procedures 

Q: According to the requirements of the Notice on Speeding up and Increasing Efficiency in Implementing Intellectual Property Policies to Promote Stable and Healthy Economic Development, what certification materials should the parties submit to go through the formalities of restoring rights in accordance with Announcement No.350? 

A: According to their own actual situation, the parties shall submit the certification materials that can prove that they cannot go through the formalities of patent and layout-design of integrated circuits due to the pandemic situation when the relevant time limit expires. For example, the official seal certificate issued by the pandemic prevention and control management departments at all levels, the relevant announcement notice issued by the local governments at all levels, or the certificate that the parties were isolated due to the pandemic and infected with Covid-19, etc.