China: Patent Case Study: Refund Of Examination Fee

Last Updated: 28 November 2018
Article by AFD China Intellectual Property
Most Read Contributor in China, November 2018
  • Whether a refund of examination fee is possible before the First Office Action?

Earlier this year, the National Intellectual Property Administration of China (CNIPA, formally known as SIPO) made an announcement (Decree No. 272) adjusting some of the patent fees, including introducing the refund of examination fee.

Article 3 of the Decree stipulates:

"An patent application for invention that enters the substantive examination stage may request a refund of 50% of the substantive examination fee for the patent application within the time limit to respond to the first office action (except for those to which responses have been filed already) if the applicant voluntarily withdraws the application."

It is clear that where the applicant receives the first OA and decides to abandon the application, he/she can claim for a refund while requests for withdrawal of the application within the time limit of making response. It did not occur to us that the CNIPA's operation may be different for an application which has not yet received an OA.

In a recent case, the applicant decided to withdraw the patent application and request for a refund of 50% of the examination fee when the application has entered substantive examination but not yet received an OA. The CNIPA issued a notification approving the withdrawal but rejecting the refund. The examiner held that "the application does not meet the time premise of refund i.e., it is not in the stage where a refund is possible, which is inconformity with the provisions of the Decree No. 272". Apparently, the examiner thought only where the first OA is issued can the refund be requested.

With all due respect, we disagree with such understanding. We believe the meticulous verbalism of the provisions is not in line with the intent of the Decree.

We think the 50% refund provision is formulated based on the assessment of the actual amount of workload assigned to an application. In other words, the CNIPA does not charge for work that has not yet carried out by an examiner. Whether or not an OA is issued should not be a reason of rejection. Normally, the examination work on an application which does not receive an OA would be less than a case which receives an OA because the latter means that the examiner has performed examination, such as conducting search, review and analysis, on the application. Although the present application did not face a time limit of responding as required by the provision of the Decree, since it has not received an OA, the work performed by the examiner should be the same if not less. Accordingly, it is rational for the current applicant to request for a refund of 50% of the examination fee.

Moreover, if an applicant needs to wait for the issuance of the first OA to request for a refund, both the applicant and the examiner have to endure a longer procedure and put in more effort either monitoring or examining the application. Some applicants may choose to give up the refund and abandon the application to let the time limit lapse without responding, which is the worst scenario, because the examiner examines the application but has to charge only 50% of the examination fee. The other way around, it should be encouraged where an applicant decides to abandon the patent application and withdraw it on his/her own initiative as soon as he/she can. Because in this way, examiners can concentrate on other applications which aim at obtaining patent rights, and accordingly the examination resources are optimized, the efficiency of the examination as a whole is improved.

We prepared and submitted an observation to the CNIPA based the above reasons, asking the examiner to reconsider the refund request. Two weeks later, we received the notification approving to refund the fee.

Through the case, we demonstrate the reasonable interpretation of the Decree No. 272 on refund of examination fee, i.e., to request for a refund before the expiration of the time limit to respond to the first office action while voluntarily withdraw the application.

We hope this successful experience could help you with your future conducts. Furthermore, we would like to advise that when trying to turn "impossible" to "possible" in patent prosecution, you should always take account of the legislative intents and inner value behind the provisions and never take the laws and regulations too literally.

http://afdip.com/index.php?ac=article&at=read&did=3296

AFD China Newsletter is intended to provide our clients and business partners information only. The information provided on the newsletter should not be considered as professional advice, and should not form the basis of any business decisions.

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