China Patent Provisional Protection: A Practical Guide To Safeguarding Rights During The Pre-Grant Window

In China, patent provisional protection refers to a limited right granted by law to the applicant for an invention patent, i.e. the right to claim appropriate fees from any entity or individual that has implemented the invention during the "gap period" from the publication date of the patent application to the grant announcement date of the patent. During this period, although the technical solution has been disclosed to the public, the patent has not been officially granted.

China’s invention patent system adopts an “early publication, examination upon request” model. From publication to grant, an invention patent often takes a relatively long time, usually two to four years. During that period, the technical solution is already disclosed to the public, and others may learn and implement it by reading the published patent application documents. Without a provisional protection system, the patent applicant’s technical achievements could have been used by others for free before grant, which would seriously undermine incentives to innovate and also violate the principle of fairness. It is precisely to meet this practical need that the provisional protection system for patents was established.

Relevant Provisions on Patent Provisional Protection

Article 13 of the Patent Law of the People’s Public of China stipulates:

“After the publication of the application for a patent for invention, the applicant may require the entity or individual exploiting the invention to pay an appropriate fee.”

Rule 18 of Interpretation (II) of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Disputes over Patent Infringement stipulates:

“Where a rights holder claims, pursuant to Article 13 of the Patent Law, appropriate fees from an entity or an individual implementing the invention during the period from the publication date of the invention patent application to the announcement date of patent grant, the people’s courts may determine the fees reasonably by reference to relevant patent licensing fees.

Where the protection scope claimed by the applicant at the time of the publication of an invention patent application is different from the protection scope of the patent at the time of the grant announcement of the invention patent, if the accused technical solution falls within both of aforesaid scopes, the people’s courts shall determine that the defendant exploited the invention during the period stated in the preceding paragraph; if the accused technical solution only falls within one of said foregoing scopes, the people’s courts shall determine that the defendant did not exploit the invention during the period stated in the preceding paragraph.

Where, after the grant announcement of a patent, a party, without the authorization of the patentee and for production and business purposes, uses, offers to sell or sells products already manufactured, sold or imported by another party during the period mentioned in Paragraph 1 of this Rule , and the another party has already paid or promised in written form to pay appropriate fees as provided in Article 13 of the Patent Law, the people’s courts shall not support the rights holder’s claim that the aforesaid using, offering to sell and selling acts infringe upon the patent.”

Pursuant to the Guidelines on Evidence Rules for Intellectual Property Civil Litigation promulgated by the Beijing Higher People's Court on April 22, 2021:

"Where the plaintiff requests the defendant to pay exploitation fees for the provisional protection period, the plaintiff shall provide evidence proving that the defendant has implemented the patent in question, and the accused infringing technical solution falls within both the scope of protection claimed by the applicant at the time of the publication of the patent application in question and the scope of protection of the patent as granted upon announcement.

Where the defendant asserts that the products it uses, offers for sale, or sells are products manufactured, sold, or imported by others during the provisional protection period and thus it shall not bear the liability for infringement, the defendant shall provide evidence in respect of the following facts:

(1) The manufacturing, sale, or importation of the product occurred during the provisional protection period;

(2) The said other party has paid or made a written commitment to pay the appropriate fee as stipulated in Article 13 of the Patent Law of the People's Republic of China.”

From the above provisions, it can be seen that for an invention patent, provisional protection must satisfy the following requirements: if the scope of protection claimed at the time of the publication of the patent application is consistent with the scope of protection of the patent as granted upon announcement, the accused technical solution must fall within such consistent protection scope; or, if the two scopes differ, the accused technical solution must fall within both scopes. Only after the grant announcement of the invention patent application has been made, and only when the above requirements are met, may the applicant obtain the right to demand payment of exploitation fees for the provisional protection period.

Operational Practice for Patent Provisional Protection

The vitality of a system lies in its implementation. Although the aforementioned legal provisions provide a principled normative basis for claims of exploitation fees for the provisional protection period, issues such as how to determine the "appropriate fees", how to distinguish the act of "implementation" during the provisional protection period from the act of "infringement" after the grant, and how to characterize continuous acts spanning the grant date still need to be clarified on a case-by-case basis. The following section reveals the specific judicial practice of the patent provisional protection system through typical precedents of the Supreme People's Court and courts at other levels.

"Continuous acts spanning the grant date" – In a dispute over payment of fees for exploiting an invention patent during the provisional protection period‌, the Supreme People's Court explicitly pointed out that:

Only after an invention patent is granted, shall the patentee have the right to prohibit others from exploiting its patent without permission (i.e., making, using, offering to sell, selling, and importing the patented product). If an invention patent was exploited by others after the patent application was published in accordance with the law but before it was officially granted (that is, during the provisional protection period), the applicant may require the entity or individual that exploited the invention to pay appropriate fees, so as to prevent the technical solution from being arbitrarily and freely used by others after its publication and before the grant.

The act of exploiting an invention without permission during the provisional protection period of the invention patent is not an act of "patent infringement" in nature, and the actor does not need to bear the liability for infringement damages. However, after the patent is granted, the applicant has the right to require any entity or individual that implemented the invention during the provisional protection period to pay appropriate fees.

The sale time of the accused infringing product generally shall be determined according to the date on which the sales contract is established. The acts of delivery, acceptance inspection, etc. after the establishment of the sales contract fall within the scope of contract performance and do not affect the characterization of the time when the sale act occurs. If the parties conclude a purchase and sale contract during the provisional protection period of the patent and have completed the manufacture of the accused infringing product, such sale act does not constitute patent infringement even if the subsequent delivery act occurs after the date of the patent grant announcement¹.

"Exploitation fees for provisional protection period" -- In another dispute case involving infringement of an invention patent and payment of fees for exploiting the invention patent during the provisional protection period, the Hangzhou Intermediate People's Court of Zhejiang Province held in its judgment: An electrical company implemented the accused infringing technical solution during the provisional protection period of the involved invention patent. Although this does not constitute patent infringement, after the invention application is granted, the patentee has the right to claim the benefits or losses incurred during the provisional protection period.

Regarding the specific amount of exploitation fees for the patent provisional protection period, in view of the fact that there is no available patent licensing royalty for reference in this case, the court held that it can be determined by referring to the calculation method for infringement damages, that is, comprehensively calculating the infringement profits based on factors such as the sales volume, sales price, product profit margin, patent contribution rate and manufacturing profit of the accused infringing product.

As for the patent contribution rate, under normal circumstances, if the patentee has completed preliminary evidence presentation regarding the scale of infringement, but the accused infringer refuses to provide basic evidence related to the infringement scale without justifiable reasons after being explained by the court, resulting in the relevant facts being unable to be accurately ascertained, the court may not accept the accused infringer's defense arguments that factors such as the contribution degree of the involved patent should be considered. However, in view of the fact that there is indeed evidence in this case showing that other technical contents also contribute to the product value, the profit contribution rate of the involved patent should be reasonably determined by comprehensively considering the circumstances of the case. Given that the accused infringing technical solution has a significant impact on the structure and size of the product, and the main selling points promoted for the product are all related to the accused infringing technical solution, indicating that the accused infringing technical solution is an important part of the overall technology of the product, the court discretionarily determined the contribution rate of the accused infringing technical solution based on the above facts².

"Defense of legitimate source" -- In yet another dispute case involving infringement of an invention patent and payment of fees for exploiting the invention patent during the provisional protection period, Company A argued that it had lawfully purchased the accused infringing product at a reasonable price from Companies B and C, and that at the time of purchase, the patent in question was still within its provisional protection period. Therefore, Company A claimed it had the right to continue using the accused infringing product and manufacturing goods using the patented method, and should not be held liable for infringement.

In response, the Supreme People’s Court held that: Company A, without the patentee’s permission after the patent was granted, continued to use the accused infringing product—which was manufactured by Company B during the provisional protection period of the invention patent and sold by Company C during that same period—for the purpose of production and business operations, and continued to use the patented method to manufacture products using those products. These acts constituted infringement of the patent in question, and Company A should bear corresponding liability for infringement in accordance with the law.

Regarding the scope of application of the defense of legitimate source, the Supreme People’s Court further pointed out: with respect to the products themselves purchased during the provisional protection period, given their fixed physical state, allowing the “defense of legitimate source” for subsequent acts such as use and sale would not cause undue harm to the patentee’s interests; however, with respect to the continued use of the patented method—which is not restricted by the physical conditions of the product—allowing the “defense of legitimate source” would enable the accused infringer to perpetually implement the patented technical solution, thereby causing undue harm to the patentee’s interests and constituting a significant injustice. It should be noted that the defense of legitimate source for infringing products does not extend to acts of infringing a patented method by using such infringing products³.

"Remedies for Same-Day Applications" — In a dispute case concerning patent ownership and infringement, which involves the complex scenario where the same applicant filed both a utility model patent application and an invention patent application for the same invention on the same day, the Supreme People's Court laid out a clear remedy path in its judgment: If an applicant files a utility model patent application and an invention patent application for the same invention on the same day, and after the utility model patent application is granted, abandons the utility model patent to obtain the grant of the invention patent, for any act of implementing the patented technical solution by others without permission during the period from the grant date of the utility model patent to the grant date of the invention patent, the applicant may claim remedies through the following approaches:

for the act of implementing the patented technical solution without permission during the period from the grant date of the utility model patent to the publication date of the invention patent application, the applicant may claim remedies on the grounds of ‌infringement of the utility model patent‌;

For the act of implementing the patented technical solution without permission during the period from the publication date of the invention patent application to the grant date of the invention patent, the applicant may choose to claim rights either by demanding exploitation fees for the provisional protection period of the invention patent‌ or on the grounds of ‌infringement of the utility model patent^‌4.

Typical precedents established through judicial practice have effectively filled gaps in the application of statutory law, providing concrete answers to practical challenges such as the method for calculating the “appropriate fees” and the boundaries defining the nature of implementing acts. In particular, they have offered judicial guidance on complex issues such as continuous acts that extend beyond the patent grant date, the differentiated protection of product and method patents, and remedies for rights infringement in scenarios involving multiple patent applications. The rules established by these effective judgments provide an important practical basis for unifying judicial adjudication standards, resolving practical disputes, and guiding innovators in protecting their rights in compliance with the law.

In summary, the patent provisional protection system, as a key connecting mechanism in the full-chain protection of invention patents, serves as an important institutional framework for safeguarding the R&D achievements of innovators and balancing incentives for innovation with technology sharing. For enterprises, research institutions, and individual inventors, the “gap period” between the disclosure of technology and the grant of a patent is a critical phase during which innovative achievements are vulnerable to infringement and rights and interests face significant risks. Only by fully grasping the legal requirements, judicial adjudication standards, and practical application rules of patent provisional protection—and by being familiar with the boundaries for characterizing different acts of implementation, rules for calculating fees, applicable circumstances for defenses, and avenues for relief in special scenarios—can one effectively manage risk control throughout the entire process of patent prosecution, technology disclosure, and technology commercialization. This enables truly comprehensive, multi-layered protection of one’s own innovative achievements, thereby continuously stimulating the endogenous momentum for independent innovation.

Footnotes

1 SPC (2022) Zui Gao Fa Zhi Min Zhong No. 2527

2 SPC (2023) Zui Gao Fa Zhi Min Zhong No. 3159

3 SPC (2021) Zuj Gao Fa Zhi Min Zhong No. 434

4 SPC (2020) Zui Gao Ga Zhi Min Zhong No. 1738

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.