Wednesday, 13 April 2011

Administrative appeals in China - check your post

That the Chinese courts are sticklers for procedural detail is well-known, writes Sharon Qiao of Rouse Beijing. A recent IP Kat blog pointed out to foreign litigants the fundamental importance of having evidence for use in mainland litigation notarised; failure to do so runs the risk of having the evidence rejected by the Court. A recent story from Beijing highlights the need to adhere strictly to the time limits for filing administrative appeals against Patent Reexamination Board (PRB) decisions. It also provides guidance on taking advantage of the ‘postal rule’.

Beijing lawyers acted for a client in an administrative appeal to the Beijing No. 1 Intermediate People’s Court (the Court) against a PRB decision which had held the client’s patent invalid. Appeals from decisions of the PRB must be filed within three months of the date of receipt of notification of the decision. Art. 4, paragraph 3 of the Implementing Regulations of the Patent Law states that “where any document is sent by post by the patent administration department, the 16th day from the date of mailing shall be presumed to be the date on which the party concerned receives the document”. Here, although the appeal had been filed within three months of ‘receipt’ of the decision, as defined in Art. 4, para 3, it had been filed after the expiration of three months from its issuance. The question arose whether or not the appeal had been filed in time.

The Court requested the appellant to provide proof that the decision had been received by post i.e. that the appellant was entitled to the benefit of Art. 4, paragraph 3. It is usual for PRB decisions to be served by post, and the Court had never previously required proof of sending. The patent agency to which the decision had been sent had not kept the original envelope and was thus unable to provide the post-mark date. Fortunately, information about the posting of decisions is provided on the State Intellectual Property Office (SIPO) website; this information was corroborated by the post registration number stamped on the PRB decision itself. This evidence satisfied the Court and the appellant was able to benefit from the rule that the three month period for filing an appeal only starts to run from the 16th day after posting. The appellant’s appeal documents were thus accepted by the Court.

How many appellants have not been so lucky? The IP division of the Beijing No. 1 Intermediate People’s Court deals with 4,000 patent and trade mark administrative litigation cases a year and is dealing with a large backlog of cases at present. It does not have to look far for an excuse to reject a case outright.

Prospective appellants are advised to file their initial appeals as soon as possible after receiving the PRB decision, and to ensure that formal case filing materials (e.g. notarised and legalised Powers of Attorney, Company Certificates and Certificate of Legal Representative) are submitted well within the three month time limit.

Where appellants wish to take advantage of the provisions of Article 4, they should visit the following link to obtain proof that the decision they are appealing was sent to them:
It is, however, also advisable to keep the envelope in which the decision was posted, as security, just in case postage information is not available on the website.

It should be noted that where a decision has been delivered by hand, the prospective appellant will not be able to benefit from the 15-day ‘extension’ provided by Article 4, paragraph 3: in that case, the decision will be deemed to have been received on the date of delivery (Article 4, paragraph 4).

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