Chinese Patent Application: Procedures not Applicable to Request for Restoring Rights

Borsam IP

Affected by COVID-19, the probability of a delay of the time limit in patent application is higher. To facilitate the parties to go through the relevant procedures for restoring their rights, CNIPA issued Announcement No. 350 where the parties delayed the period specified in the Patent Law and Rules for the Implementation of the Patent Law or the period specified by CNIPA due to the epidemic, resulting in the loss of rights, the provisions of Article 6.1 of Rules for the Implementation of the Patent Law shall be applied. However, not all rights due to delay of the time limit can be restored. According to the provision of Article 6.4, the following procedures can not be restored: Article 24 of the Patent Law (the grace period for non-prejudicial disclosures), Article 29 (the priority period), and Article 42 (the period of protection of patent right), and Article 68 (the prescription for instituting legal proceedings of infringement). 

1. Procedures that shall not be restored
1.1.The grace period for non-prejudicial disclosures
Article 24 shows that an invention-creation for which a patent application is applied does not lose its novelty where, within six months before the date of filing, one of the following events occurred:
(1) where it was first exhibited at an international exhibition sponsored or recognized by the Chinese Government;
(2) where it was first made public at a prescribed academic or technological meeting;
(3) where it was disclosed by any person without the consent of the applicant.
The six-month grace period means that some kinds of disclosure within six months are regarded as non-prejudicial to the novelty and inventive step of the application. If
the applicant forgets to claim the grace period when applying, this disclosure will form prior art and affect the innovation. If this disclosure was made more than six months before the filing date, then the grace period claim will not be allowed.
1.2. The priority period
The priority period for invention and utility model patents is 12 months from the date on which any applicant first filed in a foreign country or China; for design patents, the priority period is six months. If an application is filed after the above periods, then the priority can not be claimed.
Besides, please note CNIPA, as a designated office, shall not recognize the priority restored in the international phase of the PCT international application (for example, the international filing date is later than twelve months but within fourteen months from the priority date), and the corresponding priority claim will lose effect in China.

1.3. The duration of patent protection
According to Article 42 of the Patent Law, the patent right for inventions will be twenty years. For utility models and patent right for designs, the duration of the patent right shall be ten years from the date of filing. After the period expires, the patent right is terminated.
1.4. The prescription for instituting legal proceedings of infringement
According to Article 68 of the Patent Law, the prescription for instituting legal proceedings concerning patent rights infringement is two years. It is counted from the date on which the patentee or any interested party obtains or should have obtained knowledge of the infringing act.
The court can extend the limitations of action under certain circumstances, but CNIPA cannot restore it. If the parties file a lawsuit after the limitation of action, the people's court shall still accept it, but the other party may exercise the right of defense of limitation of action.
2. Maximize the time limit of some procedures
In such a special period, the time limits of some procedures are usually insufficient; the applicant may also use different patent procedures flexibly to maximize the time limit of a certain procedure.
For example, we can extend the time limit for responding to an office action for two months before the expiration of the deadline. CNIPA will issue the Notification that Application Deemed to be Withdrawn about one month after the expiration of the extended deadline, we can then file a request for restoration and respond to the office action within two months after receiving said notification, that is, the time limit for response is extended by about five months through the extension request and the restoration request.
In the process of the patent application and maintenance, we always encounter various time limits, such as the time limit for rectification, responding to an office action, restoration, etc. Missing these time limits usually results in the loss of certain rights, so it's necessary to monitor every procedure, especially the procedures that shall not be restored, during the application and maintenance process. .
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