The Rules of Reinstatement Stipulated in Patent Act Are Not Applicable to the Period of Two Months for Requesting a Reexamination After the Decision of Rejection is Served

The Plaintiff (the applicant of the patent application at issue) received a decision of rejection on June 04, 2013 and requested the reexamination on August 29, 2013.  The request was dismissed by TIPO because the Plaintiff failed to comply with the statutory period of two months for requesting a reexamination, i.e. within two (2) months after the date (June 04) on which the decision of rejection was served.

The Plaintiff alleged that the two-month period was not the statutory peremptory period so TIPO should accept their appeal so as to conform to the principle of fairness.  The Plaintiff then filed an appeal against TIPO’s decision up to the MOEA, the higher authority of TIPO, but it was dismissed as well. Then, the Plaintiff filed the administrative litigation up to the IP Court.

Article 48 of Patent Act stipulates that an invention patent applicant dissatisfied with a decision of rejection may provide reason(s) to request a reexamination within two (2) months after the date on which the decision of rejection is served.  The two-month period is a statutory time period.  The Plaintiff didn’t request for reinstatement based on the reason that such delay was caused by natural calamity or other cause(s) not attributable to the applicant. It was not contrary to the rule when TIPO dismissed the request of reexamination filed by the Plaintiff.

The rules of reinstatement in Patent Act are Articles 29, 52 and 70, which were added into Patent Act effective on December 21, 2011. According to Article 17 of the Patent Act, unless otherwise provided in this Act, where a person filing a patent application or taking other proceedings in connection with patent-related matters has failed to comply within a statutory or specified time period, the application filed or the proceeding initiated shall be dismissed.  Articles 29, 52 and 70 are what the term “unless otherwise provided in this Act” in Article 17 means.

However, none of them is particularly provided for the request of reexamination (Article 48). Thus, it is explicit that the amended Patent Act published on December 21, 2011 has excluded the request of reexamination from the application of reinstatement.

Consequently, when the Plaintiff delayed the statutory time period for a request of reexamination, he/she should file an application for restoring her/his original status instead of requesting that rules of reinstatement of Patent Act should be applied.

Source: TIPO Newsletter

patentDelivered by: Sandy WANG (Ms.) / Senior Partner
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