What if the unexpected happens?
Force majeure in Asian patent legislation and its impact on the patent system
When something unexpected happens, the world around us can change in unforeseen ways and with unforeseen consequences. Indeed, the word "happen" is often associated with feelings of unease and powerlessness, and with the desire to know what will "happen" next.
Most patent offices immediately recognised that the COVID-19 pandemic was "happening", that it was something beyond our control, and began to do what they could to help. They extended deadlines, waived fees, and offered the restoration of lapsed rights when an applicant or patent owner missed a deadline because of the pandemic. While some of these provisions are implemented automatically, most patent offices require applicants to formally invoke force majeure, and to provide justification and the relevant documents.
These measures certainly provide relief to the applicant or patent owner in the event that something is happening. But for patent searchers trying to assess the legal status of a patent application, they might lead to even more uncertainty. We will illustrate this with examples from major Asian patent offices.
Examples from Japanese and Chinese applications
The first example deals with the period for filing examination requests. In China, Japan and South Korea, applicants have three years from filing (or priority) to submit a formal request for substantive examination. If this deadline is missed, the application is deemed to be withdrawn.
For patent searchers, this prolongs the period of uncertainty: a competitor who is monitoring an application cannot be sure whether the applicant will continue the application procedure by filing an examination request or not. As already mentioned, with extensions granted in times of crisis, these periods can grow.
The screenshot provides an overview of legal events for a Japanese patent application in the JPO's J-Plat Pat database. The application was filed on 28 March 2018. Even though it has been over three years since the application was filed, there is still no further information available - relating either to a request for examination or to a final statement that NO request has been filed and that the application is therefore deemed to have been withdrawn.
- J Plat Pat
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In the next example we look at the time allowed to respond to patent office deadlines. This Chinese application was filed in 2014. The only legal event we can see - also in the source documents provided by the CNIPA - is the request for substantive examination from 2016.
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- CNIPA's Online Gazette
If we use the CNIPA’s CPQuery database to look at the electronic file wrapper data, we can see that CNIPA sent several preliminary rejections to the applicant, the last one on 24 February 2020. At that time, the COVID-19 pandemic was gaining momentum, and this is likely to have made communication between the European applicant and her Chinese representative more difficult. This might qualify as a valid ground for invoking force majeure in the event of a missed deadline.
As it turns out,the applicant did not reply to the preliminary rejection. CNIPA then issued a notification on 18 June 2020 stating that the application was deemed to have been withdrawn.
This is not necessarily the end of the story, however: the applicant may still invoke force majeure to request restoration of rights. According to Chinese law, this must be done within a period of two months from the end of the force majeure conditions and at the latest two years after the original deadline.
As these examples show, it is absolutely necessary to consider these additional periods of uncertainty when monitoring the legal status of a patent or patent application at a time when something is "happening".
Further information on patent systems in Asia, including a comprehensive guide to searching Asian data sources, is available on the EPO's Asian patent information webpages.