Change to postal rule under Chinese patent practice
The State Council of the People's Republic of China announced on 21 December 2023 the decision to amend the Implementing Regulations of the Patent Law of the PRC which will enter into force on 20 January 2024. One of the notable changes is the abolition of the 15 days “postal rule” for documents that are served by electronic means and the impact of this change, and what this means to practitioners and users of the Chinese patent system, is the topic of this note. For context, this change brings practice under the Chinese patent procedure in line with other major patent offices worldwide who have also abolished similar postal rule provisions in light of technological advancements in how communications are delivered between patent offices and applicants or their representatives.
Existing 15 days postal rule for Chinese Patent Applications
Under existing Rule 4 of the Implementing Regulations of the Patent Law of the PRC, where any document is sent by mail by the Chinese National IP Administration (CNIPA), the 16th day from the date of mailing shall be presumed to be the date on which the party concerned receives the document.
For example, when a notification is issued by CNIPA on 1st January 2023 which set a four-month response period, the presumed date of receiving the notification would be 16th January 2023. Therefore, the deadline for filing a response would be 16th May 2023.
Prior to this latest amendment, this so-called 15 days postal rule applies to both communications that are served by electronic means and regular mail.
The amended Rule 4 of the Implementing Regulations
Currently CNIPA communications are predominantly made by electronic means as over 99% of patent applications are filed electronically, according to an announcement disclosed by the
State Council back in 2023.
In view of the wholesale change to electronic communications, the amended Implementing Regulations clarifies that the rules with regard to submission and serving documents by electronic means are different from that by mail or direct submission in person.
In the new amended Implementing Regulations, Rule 4 added a new paragraph 7 which recites “For various documents served in electronic means by the Patent Administration Department of the State Council, the date of entry into the electronic system approved by the party concerned shall be the date of service”. In other words, the date of receipt of the communications that are served by electronic means would be presumed to be the date the patent office entered the communications onto the specific electronic system.
The amended Rule 4 (amendments shown in underline)
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Rule 4 Where any document is sent by mail to the Patent Administration Department under the State Council, the date of mailing indicated by the postmark on the envelope shall be deemed to be the date of filing; where the date of mailing indicated by the postmark on the envelope is illegible, the date on which the Patent Administration Department under the State Council receives the document shall be the date of filing, except where the date of mailing is proved by the party concerned. If various documents are submitted to the Patent Administration Department under the State Council by electronic means, the date of entry into the specific electronic system designated by the Patent Administration Department under the State Council shall be the date of filing. Any document of the Patent Administration Department under the State Council may be served by electronic means, mail, by personal delivery or by other forms. Where any party concerned appoints a patent agency, the document shall be sent to the patent agency; where no patent agency is appointed, the document shall be sent to the liaison person named in the request. Where any document is sent by mail by the Patent Administration Department under the State Council, the 16th day from the date of mailing shall be presumed to be the date on which the party concerned receives the document. If the party provides evidence that can prove the date of actual receipt of the document, the actual date of receipt shall prevail. Where any document is delivered personally in accordance with the provisions of the Patent Administration Department under the State Council, the date of delivery is the date on which the party concerned receives the document. Where the address of any document is not clear and it cannot be sent by mail, the document may be served by making an announcement. At the expiration of one month from the date of the announcement, the document shall be deemed to be served. For various documents served in electronic means by the Patent Administration Department of the State Council, the date of entry into the electronic system approved by the party concerned shall be the date of service. |
Impact
From 20th January 2024 onwards, documents that are served by electronic means by CNIPA can no longer enjoy the 15 days postal rule and applicants and users of the Chinese patent
system will need to amend their workflows and internal record keeping practices.
If a notification is issued by CNIPA on 21st January 2024 which set a four-month response period, the deadline for filing a response would be 21st May 2024 under the amended rule.
For communications that are served by normal mail, the rule has not been changed and the 15 days postal rule still applies.
