Chunqiao WANG
Chinese Patent Attorney
Chinese Attorney-at-Law
Chinese Patent Attorney
Chinese Attorney-at-Law
Since the number of claim items of a patent application and the number of pages of the description and drawings directly affect the amount of work of the examiner, additional filing fees, i.e., excess claim fees and excess page fees, will be charged if the number of claim items or the number of pages exceeds a certain threshold. The charging standard of the CNIPA for the excess claim fee and the excess page fee is: RMB 150 per item exceeding 10 claims; RMB 50 per page for Pages 31 to 300 and RMB 100 per page exceeding 300 pages of the description and drawings. This undoubtedly incurs a non-trivial economic burden for the applicant when the application contains excessive items of claims and/or pages of the description and drawings.
According to the Chinese practice, the number of claim items and the number of pages of an application are determined based on application documents filed with the CNIPA upon filing the application. Note, however, that for an application entering China via PCT, since it is required under the Implementation Regulations of the Chinese Patent Law to submit the Chinese translation of the description and the claims of the original international application documents, and the original international application documents will be considered as the original application documents filed in China in subsequent examination, the excess claim fee and the excess page fee are calculated based on the number of claims and the number of pages contained in the Chinese translation of the original international application documents. That is, even if the applicant amends the application documents of a PCT application upon entering China, for example by cancelling partial claims, the excess claim fee still cannot be reduced.
For example, if a PCT application includes 15 claim items in the original international application, upon entering the Chinese national phase, although the claims are reduced to 10 items via voluntary amendment, an excess claim fee for 5 claims will still be charged based on the 15 claim items of the original application documents. Meanwhile, for the same PCT application, in a case where the claims are increased to 20 claims by voluntary amendments upon entering the Chinese national phase, still an excess claim fee for 5 claims will be charged based on the 15 claim items of the original application documents.
In light of the above, for PCT applications, upon entering the Chinese national phase, the applicant can modify the claims merely considering the prospect of grant, without worrying about the excess claim fee.
What if the foreign application of the applicant filed for the first time contains too many claim items and/or too many pages of the description and drawings, and it is desirable to alleviate the economic pressure caused by the excess claim/page fees by deleting partial content of the application documents? Entering China via the Paris Convention can be a recommended solution.
For example, if the foreign application filed for the first time includes 100 claim items, the applicant may choose to file the application in China via the Paris Convention which allows filing the application documents with for example 60 of the claim items being deleted, remaining only 40 claims. In this way, the excess claim fee is calculated based on merely 40 claims instead of 100, thereby saving the costs of the applicant.
However, the Paris Convention imposes a limitation of a 12-month priority period, which may be inadequate for the applicant to fully evaluate whether or not to abandon partial content of the application filed for the first time. When the 12-month period expires, the applicant can only file the application in China via PCT.
While the CNIPA does not specify the foregoing charging standard in written or any other manner, it has been charging the excess fees in such manner for years in practice.
Hopefully the foregoing practical experience of the author on excess fees charged for PCT applications and for applications via the Paris Convention may serve as a reference for the applicant in amending the application documents of a foreign application upon filing in China.
According to the Chinese practice, the number of claim items and the number of pages of an application are determined based on application documents filed with the CNIPA upon filing the application. Note, however, that for an application entering China via PCT, since it is required under the Implementation Regulations of the Chinese Patent Law to submit the Chinese translation of the description and the claims of the original international application documents, and the original international application documents will be considered as the original application documents filed in China in subsequent examination, the excess claim fee and the excess page fee are calculated based on the number of claims and the number of pages contained in the Chinese translation of the original international application documents. That is, even if the applicant amends the application documents of a PCT application upon entering China, for example by cancelling partial claims, the excess claim fee still cannot be reduced.
For example, if a PCT application includes 15 claim items in the original international application, upon entering the Chinese national phase, although the claims are reduced to 10 items via voluntary amendment, an excess claim fee for 5 claims will still be charged based on the 15 claim items of the original application documents. Meanwhile, for the same PCT application, in a case where the claims are increased to 20 claims by voluntary amendments upon entering the Chinese national phase, still an excess claim fee for 5 claims will be charged based on the 15 claim items of the original application documents.
In light of the above, for PCT applications, upon entering the Chinese national phase, the applicant can modify the claims merely considering the prospect of grant, without worrying about the excess claim fee.
What if the foreign application of the applicant filed for the first time contains too many claim items and/or too many pages of the description and drawings, and it is desirable to alleviate the economic pressure caused by the excess claim/page fees by deleting partial content of the application documents? Entering China via the Paris Convention can be a recommended solution.
For example, if the foreign application filed for the first time includes 100 claim items, the applicant may choose to file the application in China via the Paris Convention which allows filing the application documents with for example 60 of the claim items being deleted, remaining only 40 claims. In this way, the excess claim fee is calculated based on merely 40 claims instead of 100, thereby saving the costs of the applicant.
However, the Paris Convention imposes a limitation of a 12-month priority period, which may be inadequate for the applicant to fully evaluate whether or not to abandon partial content of the application filed for the first time. When the 12-month period expires, the applicant can only file the application in China via PCT.
While the CNIPA does not specify the foregoing charging standard in written or any other manner, it has been charging the excess fees in such manner for years in practice.
Hopefully the foregoing practical experience of the author on excess fees charged for PCT applications and for applications via the Paris Convention may serve as a reference for the applicant in amending the application documents of a foreign application upon filing in China.