Written by: Haoyu ZHOU (Elliot) 

 

As a routine practice, many applicants prefer to reduce claim numbers to avoid excess claim fees at the time of filing patent applications or at the time of requesting examination. Particularly, this has become a routine work for European patent attorneys, where the excess claim starting from 16 to 50 as charged by the EPO will be EUR 235 per claim.

 

In China, there is no excess claim fee for the first 10 claims. But starting from Claim 11, the excess claim fee is CNY 150 per claim (approx. USD 25 per claim). Although the excess claim fee is not as substantial as that of European patent application, it may still be considerably high if there are too many excess claims (e.g, over 100 claims).  

 

Interestingly, the claim fees are always determined by the CNIPA at the time of filing the Chinese patent application (for conventional filing), or at the time of Chinese national phase entry (for PCT national phase entry). Even if the applicant choose to file a Claim Amendment at a later time to increase or reduce the claim number, the later filed Amendment does not affect the claim fees at all.

 

In view of the unique rules above, we will discuss the possibility of reducing excess claim fees in China, as its practice is very different from other major jurisdictions. We will first discuss the possibility of avoiding excess claim fees for conventional Chinese patent filing, followed by PCT national phase entry.

 

==Conventional Chinese Patent Filing==

Since the claim fees are determined at the time of filing the Chinese patent application, it is advisable to first reduce the claim number to 10 at the time of conventional filing, and subsequently increase the claim number back to the actual claims desirable to the applicant, by filing a Voluntary Amendment.

 

This is a routine approach used by many applicants, especially if the actual claim number is substantially high. However, if the desirable claim number is more than 10 but less than 20 or 25, then it is up to the applicant as to whether it will be worth of using this approach to reduce the excess claim fees, because filing a Voluntary Amendment itself will incur an attorney’s fees which may be more or less equivalent to 10-15 excess claim fees charged by the CNIPA.

 

==PCT National Phase Entry into China==

For PCT national phase entry into China, the CNIPA always charge claim fees based on the PCT claims as published.

 

For example, if there were 10 PCT claims as originally filed, then the applicant is lucky and does not need to pay any excess claim fees to the CNIPA. But, if there were 100 PCT claims as originally filed, unfortunately the applicant will have to pay excess claim fees up to 90 claims (i.e., CNY 13,500 in total, approx. USD 2,180), and even worse, there is no way of reducing the excess claim fees at all.

 

==Our Comment and Opinion==

The way of calculating claim fees for PCT national phase entry is sort of obnoxious, as it creates an economic injustice to the applicants.

 

Let’s assume both Applicant A and Applicant B want to pursue 30 claims in China. Applicant A files a PCT application with 10 claims and later files a Voluntary Amendment in China to the desirable 30 claims; and Applicant B files a PCT application with 100 claims and later files a Voluntary Amendment in China to the desirable 30 claims. While the Examiner will equally search and examine for 30 claims in both application A and application B, however, the applicant B MUST pay a surcharge of approximately USD 2,180 for 90 excess claims (versus applicant A).

 

For another example, let’s assume Applicant X want to pursue 30 claims in their two Chinese patent applications, respectively. The first application is filed through conventional filing, so it is possible to reduce the claim fees to 10 first and file a Voluntary Amendment later to the desirable 30 claims. The second application is filed through PCT national phase entry, so the claim fees are always determined by the PCT claims as published (say, 100 claims) even if Applicant X choose to file a Voluntary Amendment later to the desirable 30 claims. While the Examiner will equally search and examine for 30 claims in both applications, however, Applicant X MUST pay a surcharge of USD 2,180 for 90 excess claims for the Chinese national application via the PCT route.

 

While the two examples above are just for illustration, we consider the method of calculating claim fees for PCT national application is biased and controversial. Put simply, it seems to give applicants of conventional filing too much freedom to play around with claim fees, while give applicants of PCT national phase entry no room to adapt to Chinese system.

 

To this end, we sincerely hope the CNIPA could change the way of calculating claim fees in the next revision of patent examination guideline, or at least give equal freedom to applicants who choose PCT national phase entry or conventional filing in China. Opportunities should be given to applicants to avoid unnecessary excess claim fees, regardless of the routes they choose to file in China.

 

If you have any questions about this topic or want to hear any other IP-related discussion, please feel free to contact Elliot ZHOU at patent@foundin.cn.