25 October 2021
The amount of time in which patent owners have the exclusive right to work their invention is vital. While the usual term of 20 years is calculated from the date of filing of the application, it is actually the date of grant which is most important when it comes to planning production lines and implementing commercialisation strategies.
With research cycles becoming shorter and shorter, getting a patent granted without too much delay takes on an even greater significance. In major Asian jurisdictions such as China, Japan and Korea, this has led to an increase in the number of requests for accelerated examination as well as requests from applicants for compensation for excessive delays in the granting procedure that are not their fault.
In 2012, the Korean Patent Office (KIPO) was the first of the major Asian offices to introduce a patent term adjustment (PTA) system under which applicants can request an extension of the normal patent term in the case of delays in the granting procedure. Japan and China have recently followed suit.
Patent term adjustments became part of Japanese patent law in 2019. They are granted in cases where the grant of the patent takes longer than five years from filing or three years from the request for examination, whichever is later.
As the first cases will not become visible until 2024 at the earliest, we can only assume – looking at the introduction of PTA in Korea – that there will not be too many of them, particularly as it seems that the introduction of PTAs is part of a number of measures taken by the JPO to speed up the examination process. These include reducing the number of preliminary rejections/notices issued by examiners. Around 15 years ago it was not unusual for four or even five such communications to be issued; this figure has since been reduced to just one or two in advance of the final decision.
On 1 June 2021, the Chinese Patent Office (CNIPA) introduced a PTA system which goes even further. According to this new law, where no final decision has been taken within these periods, applicants can request patent term adjustments as early as four years from filing or three years from the date of the request for examination.
In a country where the number of granted patents (rather than the number of applications filed) determines the financial support received by research institutes and universities, an earlier grant date is even more important.
This introduction of PTAs will result in a new legal event in China too, although the first cases are not likely to appear in the databases until 2025.