Discussion on Amendments to The Chinese Application And Related Suggestions-Part 1

Please be noted that this article is the first part of the report, the second part could be seen here.

I.  Introduction:

Some applicants intend to make amendment to the application documents, but do not know when and to what extent the application documents can be amended.  Sometimes applicants, especially some foreign applicants, will encounter such confusion as "the Chinese application is rejected for amendments going beyond the scope of the initial description and claims, while the US counterpart application having the same claims have been granted. Why?".

Generally speaking, compared with the examination system of Patent Offices in other contraries, such as US examination system, the Chinese examination system applies very strict criteria on amendment to the claims and description.  In the following, we will answer the other related questions and give some of our suggestions.

II.  Related Law:

According to Article 33 of the Chinese Patent Law, an applicant may amend his or its application for a patent, but the amendment to the application for a patent for invention or utility model may not go beyond the scope of disclosure contained in the initial description and claims, and the amendment to the application for a patent for design may not go beyond the scope of the disclosure as shown in the initial drawings or photographs.

According to Part II, Chapter 8 in Guidelines for Examination of Chinese Patent Law, "the scope of disclosure contained in the original description and claims includes the contents described in the original description and claims, and the contents determined directly and unambiguously according to the contents described in the initial description and claims, and the drawings of the description."

That is to say, the scope of disclosure contained in the original description and claims refers to either of the two aspects as follows:

1. the contents described, i.e. literally/directly recorded, in the original description and claims; and

2. the contents determined directly and unambiguously according to the contents described in the initial description and claims, and the drawings of the description, in short, the contents determined directly and unambiguously according to the original disclosure of the application.

III.  Voluntary Amendment Opportunities

According to the provisions of Rule 51 of the Implementing Regulations of the Chinese Patent Law, for an invention application, the applicant has two opportunities for filing a voluntary amendment: the first one is when filing a substantive examination request, and the second one is within the time limit of three months after the receipt of the Notification on the entry into substantive examination.

For the applications of utility model and design, since substantive examination is not performed, there is only one opportunity for filing a voluntary amendment, that is, a voluntary amendment may be filed within two months from the date of filing of the application.

When filing a voluntary amendment, the applicant is allowed to amend the application documents in any way, for example, add independent or dependent claims, as long as the amended content does not go beyond the scope of the original disclosure of the application.

IV.  Other Amendment Opportunities

The applicant is allowed to amend the application documents after receiving a Notification of Office Action or a Notification to Make Rectification from the CNIPA, however at this stage, he or it shall make the amendment directed to the defects pointed out by the Notification.  Therefore, the amendments made by the applicant is limited to a certain extent, for example, newly added claims are not allowed.

For an application, if a Decision of Rejection is received, the applicant may file a request for reexamination within three months, it is allowable to make amendments in the request, also, the amendment shall also be directed to the defects pointed out by the Decision.

In addition, for a PCT international application, when it enters the Chinese national phase, the applicant is allowed to amend the application documents in any way, for example, add independent or dependent claims, as long as the amended content does not go beyond the scope of the original PCT disclosure.

Source: en.kangxin.com-Xia Wang 

Editor: IPR Daily-Selly