Newsletter
CHINESE PATENT EXAMINATION PRACTICE – PATENT AMENDMENT
In November 2008, the State Intellectual Property Office (SIPO) announced the amendment to the Patent Examination Guidelines with respect to the "patent amendment" section (Part 2, Chapter 8). The amended section took effect in 2009. Its major points are as follows:
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Rule 51 of the Implementation
Rules of Patent Law sets forth the timing and manner of making patent amendment,
whereas Article 33 of the Patent Law sets forth the content and scope of patent
amendment. If, when filing a response
to an office action, a patent applicant applies for amendment which is not made
as requested in the office action and which is not acceptable, the patent examiner
should issue a non-acceptance notification or examination notification stating that
the amendment is not accepted and the reasons. The
examiner should (1) ask the applicant to submit within the specified time limit
an amendment in compliance with Item 3, Rules 51 of the Implementation Rules; and
(2) points out that if the amendment still does not meet the requirement prescribed
in Item 3, Rule 51 of the Implementation Rules, examination of the patent application
should proceed based on the originally filed patent specification, claims and drawings.
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According to Item 3, Rule 51 of the Implementation Rules, where a
patent applicant applies for amendment after receiving an SIPO office action, the
applicant should effect the amendment in accordance with the office action. Since an amendment not compliant with
Item 3, Rule 51 of the Implementation Rules may bring obstacles to the normal examination
of a patent application, the Patent Examination Guidelines prior to amendment required
that (1) the patent examiner, in the non-acceptance notification or examination
notification, request the patent applicant to effect a proper amendment; and (2)if
an amendment filed by a patent applicant within the time limit still fails to meet
the requirement set forth in Item 3, Rule 51 of the Implementation Rules, the patent
applicant be deemed to have failed to respond to the notification and the patent
application be deemed abandoned.
Given the above requirements, patent applications could not be concluded timely to the detriment of patent applicants' interest. Therefore, the above requirements were amended.
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Where a patent applicant submit
an amendment not compliant with Item 3, Rule 51 of the Implementation Rules, the
patent applicant should be deemed to have given up the chance for making amendment
as requested by patent examiner. After
informing the applicant that his amendment is not compliant, if the applicant still
submits a non-compliant amendment, the patent examiner should proceed with the examination
of the application based on the patent text prior to amendment.
By doing so, the unreasonable postponement in
examination caused by non-compliant amendment can be avoided.
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The above-mentioned amendment regarding the implementation of Item 3, Rule 51 of the Implementation Rules has been added to Rule 55 (corresponding to Rule 51 of the Implementation Rules currently in effect) as quoted below:
"Rule 55
When filing a request for substantive examination or within 3 months from the date of receiving a notice of commencement of substantive examination issued by SIPO, a patent applicant may apply for voluntary amendment of his (her) invention patent application.
For a utility model or a design patent application, the applicant may, within 2 months from patent filing, apply for voluntary amendment of his (her) patent application.
Where a patent applicant applies for amendment after receiving SIPO's examination notification, such amendment shall be made in response to the defects pointed out in the notification.
Where an amendment filed by a patent applicant does not meet the requirement set forth in Paragraph 1 or Paragraph 2 of this Rule, the SIPO may ignore such amendment and continue examination of the patent application based on the originally filed patent text.
Where an amendment filed by a patent applicant does not meet the requirement set forth in Paragraph 3 of this Rule, the SIPO shall notify the applicant. When receiving such notification, the applicant may consider re-submitting amendment; if such re-submitted amendment still fails to meet the requirement set forth in Paragraph 3 of this Rule, the SIPO may ignore such amendment and continue examination of the patent application based on the originally filed patent text.
Where there is an obvious error with respect to the Chinese wording or symbol in a patent text, the SIPO may make amendment at its own discretion. Where the SIPO conducts any amendment as stated above, it shall notify the patent applicant."