Due to the outbreak of Coronavirus, many applicants and IP agencies' work, especially in China, has been affected which may cause the loss of IP rights by missing deadlines.
In consideration of the impact of the Coronavirus, CNIPA (China National Intellectual Property Administration, previously SIPO) has issued rules about time limit extension and rights restoration and EUIPO has also made special measures for applicants with Chinese residence or registered in China, allowing their time limits for European trade marks and designs falling between Jan 30-Feb 28, 2020 to be extended to Feb 29, 2020 and those falling between March 1-31, 2020 to be extended to April 1, 2020.
CNIPA's rules for time limit extension and rights restoration
On January 28, 2020, CNIPA published its special arrangement concerning relevant time limits for handling patents, trade marks, and layout designs of integrated circuits affected by the epidemic situation, setting up the following rules. CNIPA will make its decisions on a case-by-case basis and judge them based on the principle of best protecting the right holders.
1. For patents, including invention, utility model and design patents
Where a party misses the time limit provided in the Chinese Patent Law and its Implementing Regulations or the time limit specified by the CNIPA due to epidemic-related reasons, resulting in the loss of his/its rights, the party concerned may request, free of charge, the restoration of the right within 2 months from the date of removal of the impediment and at the latest within 2 years from the date of expiry of the time limit. Together with the request for restoration of the right, the party shall state the reason, submit the supporting documents where needed and handle corresponding formalities required to be handled before the loss of rights.
Such an arrangement is based on the provision of paragraph 1, Article 6 of the Implementing Rules of the Chinese Patent Law and it does not apply to such time limits as grace period of not losing novelty (Article 24 of the Chinese Patent Law), time limit of priority claiming (Article 29 of the Chinese Patent Law), duration of patent protection term (Article 42 of the Chinese Patent Law) and the period of limitation of action for patent enforcement (Article 68 of the Chinese Patent Law).
According to the further interpretation of CNIPA, the acceptable reasons for request of right restoration may include the concerned party being isolated, infected, under local traffic control or the working place being closed, etc due to the epidemic situation.
2. For trade marks
Where a party misses the time limit provided by the Chinese Trademark Law and its Implementing Regulations or the time limit specified by the CNIPA due to epidemic-related reasons, which prevents him/it from handling relevant trade mark matters properly, the relevant time limit shall be suspended from the date of commencement of the impediment, and shall be resumed from the date when such impediment is removed. If the trade mark right is lost due to missing the time limit caused by epidemic-related reasons, a written request to restore the right can be submitted within 2 months from the date when the impediment is removed, together with the statement of the reason and corresponding supporting documents.
According to further interpretation of the CNIPA, when handling the trade mark matters for which the time limit should have been suspended and now be resumed, the request with the statement of the reason of time limit suspension and the supporting documents should be submitted all together. When the request involves multiple cases, only one request is needed in order to reduce the burden of the applicant and the applicant just needs to indicate in other cases the trade mark case number in which the request has been submitted.
The interpretation also clarifies that the commencement date of the impediment refers to the date when the concerned party started to be isolated or hospitalised or the area where the concerned party is located started to take management and control measures due to the Coronavirus situation, which prevents the party from handling the trade mark matters as normal, and that the date of the impediment being removed means the end date of the concerned party being isolated or hospitalised due to the Coronavirus or the date when the area concerned returned to work and the end date of crowd and people control.
3. For layout designs of integrated circuits
Where a party misses the time limit provided in the Regulations on the Protection of Layout-designs of Integrated Circuits of People's Republic of China and its Implementing Rules due to epidemic-related reasons, or the time limit specified by the CNIPA, resulting in the loss of his/its rights, the party concerned may, free of charge, file a request for restoration of rights within 2 months from the date of removal of the impediment and at the latest within 2 years from the date of expiry of the time limit. Together with the request for restoration of the right, the party shall state the reason, submit the supporting documents where needed and handle corresponding formalities required to be handled before the loss of rights.
Such an arrangement is based on the provision of Article 9 of the said Implementation Rules.
http://www.cnipa.gov.cn/zfgg/1145684.htm
EUIPO's Special Rules for Chinese applicants for trade mark and design cases
According to the Decision No. EX-20-1 of the Executive Director of EUIPO on Feb 14, 2020 and March 2, 2020, in consideration of the influence of the Coronavirus outbreak, it has been decided that all the time limits for European trade marks and designs expiring between Jan 30, 2020 and Feb 28, 2020 inclusive that affects parties in proceedings before EUIPO having their residence or registered office in People's Republic of China are extended until Feb 29, 2020 and and those expiring between March 1-31, 2020 inclusive extended to April 1, 2020.
FICPI’s view and involvement
Membership of FICPI ensures that other independent IP attorneys receive insights and updates from their colleagues around the world on the latest legal developments. The work of independent IP attorneys and the clients they serve is a driver in the economic growth of the country and region in which they are located and the wider perspective from the FICPI community enables them to keep updated.
Next steps
- Consider joining FICPI’s Study & Work Committee on Asian Issues (CET 8)
- Contact FICPI members in China.