Time limit missed in China? Request for restoration at CNIPA

If you missed the time limits according to patents in China, there are two options for restoring the rights before the Chinese Patent and Trademark Office (CNIPA). The procedure in China is similar to the restoration of rights under EPC rules, however, without remedy as Further processing.

Time limit missed – restoration in Europe

Whoever misses the time limits for the rights in patent protection can request the restoration of rights according to international regulations. The request for restoration pursuant to Rule 136 EPC(European Patent Convention) must be filed within two months of the removal of the cause of non-compliance with the period, but at the latest within one year of expiry of the unobserved time limit.

In any case, the request for restoration must be well-founded, which means “all due care required by the circumstances” have been taken, see Article 122(1) EPC.

Chinese patent law also offers such restoration of rights after failure to comply with the time limits. However, it is particularly noted that there is no such remedy as Further processing (under Rule 135 EPC) before the CNIPA.

Before the Chinese Patent and Trademark Office (CNIPA), two possibilities can be used for Re-establishment of rights for the invention patent, utility models and designs (i.e., these rules do not apply to the Chinese trademarks).

CNIPA – new name und new structure

In August 2018, the former Chinese Patent and Trademark Office – the State Intellectual Property Office of China (SIPO) – was restructured and renamed. The China National Intellectual Property Administration (CNIPA) is not just a new name. In fact, patents and trademarks as well as utility models and designs are now all united in CNIPA. The geographical indications previously administered by the Administration of Quality Supervision, Inspection and Quarantine, AQSIQ, are also handled by CNIPA.

In addition, CNIPA is subject to a newly established State Administration for Market Surveillance and Administration.

Two possibilities for Re-establishment of rights in China

  1. simple and secure way to request recovery before CNIPA is to refer to Rule 6(2) of the Implementing Regulations of the Chinese Patent Act. Within two months of receipt of a notification, the recovery of the rights may be requested before CNIPA. This is conditional on the existence of a justifiable reason which led to the failure to comply with the deadlines, but no “force majeure” is invoked.If the applicant does not refer to force majeure, he does not have to prove that “diligence” has been exercised, and if the request for restoration of rights is made in accordance with this procedure, the time limit is calculated as follows: the date of notification + 15 days of postal delivery (considered to be the date of receipt; cf. the “ten-day” rule in Rule 126(2) EPC) + 2 months. This remedy also applies to annuity fees. This request somehow is comparable to the Further processing set out by the EPC, except that the applicant still has to prove the “justifiable reason” in any case.
  2. If this time limit for the relatively simple re-establishment is missed or under any other circmustance, there is a second possibility to request the recovery of the rights. In such a case, the applicant can request the restoration of the rights with reference to force majeure under Rule 6(1) of the Implementing Regulations. However, this requires that the special duty of care – “diligence” – be demonstrated. This requires a lot of well-prepared information, evidence and argument. If it is the case, the request for restoration shall be filed within two months of the removal of the cause of non-compliance with the period, but at the latest within two years (instead of “one year” under Rule 136 EPC of expiry of the unobserved time limit.Last but not least, certain time limits are ruled out as well. These exceptions include the six-month grace period under Article 24, the twelve-month period of claiming priority under Article 29, and the two-year period for instituting infringement proceedings before the civil court.

Making use of Chinese law

It is the declared goal of the Chinese legislator to further advance the national strategy for the protection of intellectual property through more effective means of patent and trademark protection. On the one hand, this makes it easier for Western entrepreneurs to assert patent rights or infringe patent law.
On the other hand, this Chinese growth strategy for IP (Intellectual Property) leads to a flood of IP applications in China for which the thresholds for registration are lower than usual in Europe and in America. It therefore makes sense in any case to apply for a utility model in China in addition to the patent, especially before a presentation at a trade fair.

This article was written by Zhichao Ying, Chinese and European Patent Attorney.

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