According to the current Patent Law, where a statutory or designated deadline in a patent application or other patent-related procedures is not met, any belated attempts to further prosecute or take procedural actions shall be refused unless the failure to meet the deadline is due to force majeure or other factors not attributable to the applicant. In view of such strict and inflexible stipulations, it is not of rare occurrence that patentees lose their hard-earned rights simply by oversight.
To respond to requests from many practitioners and to meet the international trend, authorities have now incorporated in the new Patent Law to be implemented as of January 1, 2013 a new set of provisions regarding reinstatement of rights. Applicants or Patentees will be allowed to reinstate their rights under any of the following situations:
i. Where the applicant unintentionally fails to claim priority at the time of filing or the priority claimed has been forfeited due to the applicant’s failure to submit indispensable information required for claiming priority, a petition to claim priority or revive the priority claim can be filed within 16 months from the earliest priority date with the relevant fee paid and remedial actions taken.
ii. Where the applicant unintentionally fails to pay the issue fee and the first annuity within the deadline prescribed by law, such fees can still be paid within 6 months from the deadline, except that the first annuity shall be paid double the prescribed amount. After payment, the Patent Office shall publish the grant of the patent.
iii. Where a patent has lapsed as a result of non-payment of the second annuity or any annuity due thereafter prior to the expiry of the six-month grace period, a petition to reinstate the patent can be filed within one year from the day the patent lapsed with a payment of three times the annuity.
It should be noted, however, that the above statutory deadlines for reinstatement of rights are final and in no event negotiable.
In addition, in order to uphold the Trust Protection Principle, the new Patent Law further stipulates that, if a patent is reinstated with a payment of three times the annuity, the right conferred by said patent shall not be enforceable against a third party who has practiced in good faith the invention or made necessary preparations for practicing the invention after the patent has lapsed and before it is reinstated and published.