Reconsider Your Chinese Patent Application at Early Stage of Prosecution

Feynman Z. LIANG | Aug 25, 2016

When applicant files patent application either through PCT route or under Paris Convention in China, it is suggested to review the application document from the perspective of substantive examination and invalidation proceedings. If amendment is necessary, applicant shall seize the chances of voluntary amendment and amend the application at early stage of prosecution.

I. Why does the application need to be reviewed?

The claim amendment requirement is restricted in substantive examination stage and invalidation stage, leaving very little room for applicant/patentee to amend their application / granted patent in responding to examiner’s objection and petitioner’s challenge in invalidation stage.

1. Amendment in responding to office action
In responding to office action, there are several limitations on how the patent application may be amended.

a. Amendment shall be within the scope specified in the original written description and claims
The basic principle of claim amendment in responding to office action is that the amendment shall not exceed the scope specified in the original written descriptions and claims as laid down in the Patent Law of P. R. China as follow,

Article 33 An applicant may amend his patent application documents, provided that the amendment to the invention or utility model patent application documents does not exceed the scope specified in the original written descriptions and claims, …

b. Applicant cannot initiate amendment voluntarily but he can only make amendment in responding to office action to overcome the defect pointed out in the office action.

The Implementation Rules of the Patent Law of the People's Republic of China

Article 51.3 Where the applicant amends the application after receiving the notification of opinions of examination from the patent administration department of the State Council, he or it shall make the amendment to the defects pointed out by the notification.

c. Amendment shall not exceed the scope of protection of the original claim
According to Chapter 8 of Part II of Patent Examination Guideline, the applicant is not allowed to exceed the scope of protection of the original claim and cannot add new claims.
5.2.1 .3 Amendment in responding to office action
The following manners of amendment are not accepted in the amendment in responding to office action.
(1) Voluntarily delete the technical feature in the independent claim and exceed the original scope of protection
(2) Voluntarily change the technical feature in the independent claim and exceed the original scope of protection
(3) Voluntarily replace the subject matter with the one that only exists in the original description but lack of unity with the original subject matter in the claim
(4) Voluntarily add new independent claim that does not exist in the original claim set
(5) Voluntarily add new dependent claim that does not exist in the original claim set.

2. Amendment in invalidation stage
In validity proceedings, amendments of claims for the granted patent are possible with much restriction as follows.

a. Amendment shall not exceed the scope of protection

According to Implementation Rule of Patent Law,
Article 69 In the course of the examination of a request for invalidation, the patentee for a patent for invention or utility model concerned may amend his or its claims, but he or it may not broaden the scope of protection of the original patent.
…

b. Only claims can be amended. Description and drawings cannot be amended

According to Implementation Rule of Patent Law,
Article 69 …
The patentee for a patent for invention or utility model concerned shall not amend his or its description or drawings….

c. Principle of amendment in invalidation stage
According to Chapter 3 of Part IV of China Patent Examination Guideline,
4.6.2 Manners of amendment
(1) the subject matter of original claims cannot be change
(2) claims amended cannot exceed scope of protection compared to granted claims
(3)claims amended cannot exceed scope specified in the original claims and description
(4)Generally speaking, patentee is not allowed to add technical feature into the claims that has not been included in the original claims.

That means, if the technical solution only exists in the description of the granted patent, it cannot be added into the claims.

d. Manners of amendment are very restricted.
China Patent Examination Guideline further stipulates that, under the principle of amendment above, manners of amendment to the claims are generally limited to deletion of claim(s), combination of claim(s) or deletion of the technical solution(s). In another word, patentee cannot add new claims but can only delete claims or one of the parallel technical solutions in a claim.

In conclusion, in the invalidation stage, there are many restrictions as to the amendment of patent, leaving the patentee very limited choices.

II. Amend the claim early with more freedom
In China, instead of waiting until receiving the office action or even till the granted patent is challenged, applicant may choose to amend his/its application early with wider selection of amendment manners. This is termed as “voluntary amendment ” in China.

Depend on the type of patent application and how the application is filed in China, there may be one or several opportunities where applicant may make voluntary amendment

1. Opportunities of voluntary amendment
a. for direct filing under Paris Convention
For invention patent application, the applicant may amend the application document either at the time of filing the request of substantive examination (when to file request of substantive examination? Please refer to the information here ) or within three month after the notification of entering substantive examination stage is received.

Article 51.1 When requesting for examination as to substance, or within three months from the date of receipt of the notification from the patent administration department of the State Council that the application has entered into examination as to substance, the applicant for a patent for invention may amend the application for a patent for invention on his or its own initiative.

For utility model patent application or design patent application, the applicant may submit voluntary amendment of the application within two months from the filing date of the application.

Article 51.2 Within two months from the date of filing, the applicant for a patent for utility model or design may amend the application for a patent for utility model or design on his or its own initiative.

b. for PCT Chinese National Stage
Besides the opportunity of voluntary amendment mentioned above, applicant for PCT Chinese national stage may file amended version of the application document under Article 28/41 of PCT Treaty at the time of entering the Chinese national stage.

Patent Cooperation Treaty Article 28/41 Amendment of the Claims, the Description, and the Drawings, Before Designated Offices
(1) The applicant shall be given the opportunity to amend the claims, the description, and the drawings, before each designated Office within the prescribed time limit. No designated Office shall grant a patent, or refuse the grant of a patent, before such time limit has expired except with the express consent of the applicant.

2. Limitation on amendment

Compared to amendment in response to office action or amendment in the invalidation stage, there are much less limitation on the amendment of document.

The basic principle of voluntary amendment is that the amendment shall not exceed the scope specified in the original written descriptions and claims.

Article 33 An applicant may amend his patent application documents, provided that the amendment to the invention or utility model patent application documents does not exceed the scope specified in the original written descriptions and claims, …

3. Wider scope of protection is possible
Under such principle, as long as the amended patent application does not exceed the scope specified in the original claims and description, there is not restriction on whether the amended claim may exceed the scope of protection. In other words, amended claim with wider scope of protection compared to the original one is possible.

4. Adding new claim(s) is possible

What’s more, compared to the amendment in the later stages, applicant may choose to add new claims or completely change the claim set as long as the amended claim does not exceed the scope specified in the original claims and description.

In conclusion, applicant is suggested to seize the limited chances of voluntary amendment to review and amend the application. If the application contains small number of claims or there exist some other issues that may jeopardize the application, the applicant may add more claims or ratify the issues when making the voluntary amendment in preparation of possible objection in the prosecution stage and challenges of the granted patent in the invalidation stage.