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Felix Song
Patent Attorney
Mechanical Engineering Department
Welcome to Linda Liu & Partners on air！
My name is Felix Song, a mechanical patent attorney of Linda Liu & Partners. I have been working in Linda Liu & Partners for more than 2 years. Before I came to Linda Liu & Partners, I worked in Chinese Patent Office as patent examiner for almost 8 years. I specialize in mechanical engineering and civil engineering.
My topic today is reexamination procedure in China.
The reexamination procedure in China is a relief procedure initiated by the applicant who is dissatisfied with the decision of rejection of the application; meanwhile, it is also a continuation of the examination procedure for a patent application. Therefore, on one hand, the Reexamination and Invalidation Department (which was called Patent Reexamination Board before) normally restricts its examination to the grounds and evidence on which the decision of rejection is based, and is not obliged to undertake a comprehensive examination on the patent application; on the other hand, the Reexamination and Invalidation Department may conduct examination ex officio on other obvious substantive defects than those mentioned in the decision of rejection, so as to improve the quality of the patent granted and avoid unreasonable delay of the examination and granting procedure.
There are two types of reexamination mode in reexamination procedure which are collegiate examination and examination by a single examiner. According to guidelines for patent examination, Simple cases may be examined by a single examiner, but such cases are rare in practice. Most of the cases will be collegiate examined by a panel consisting of three members.
Before the cases are collegiate examined, a special procedure called “interlocutory examination” will be conducted according to Chinese patent rules. So, what does “interlocutory examination” mean? Specifically speaking, it means that the Reexamination and Invalidation Department will transfer the request for reexamination to the previous examination department which made the decision of rejection for interlocutory examination. The previous examination department will provide its opinion on interlocutory examination and make a note of interlocutory examination opinion. There will be three types of interlocutory examination opinion: first, the request for reexamination is allowable, and the decision of rejection is agreed to be revoked; second, the amended application submitted by the applicant has overcome the previous defects, and the decision of rejection is agreed to be revoked on the basis of the amendments; and third, the observations and the amendments submitted by the applicant are not sufficient to revoke the decision of rejection, and the decision of rejection is maintained.
If an interlocutory examination opinion falls to be the first or second type as said before, the Reexamination and Invalidation Department will not conduct collegiate examination. It will make a reexamination decision directly according to the interlocutory examination opinion. The previous examination department will restore the examination procedure consequently. If the decision of rejection is maintained in interlocutory examination procedure, the Reexamination and Invalidation Department will conduct collegiate examination.
Where the panel issues Notification of Reexamination, the applicant shall respond with respect to the defects indicated in the notification within one month from the date of receipt. We have been asked several times by our clients on how many times of Notification of Reexamination will be issued during the reexamination procedure?" Guidelines for patent examination do not specify that, but according to our practice, the panel issues Notification of Reexamination at most two times for most of the cases. That means, if the response to the second notification of reexamination is not accepted by the panel, it is highly possible that the reexamination decisions upholding the decision of rejection will be issued.
After one or two rounds of “communication” between the applicant and the panel, there come two kinds of result finally: a request for reexamination is allowed and the decision of rejection is revoked based on the applicant’s observations and/or amendments, or, a request for reexamination is not allowed and the decision of rejection is upheld. If the applicant is not satisfied with the reexamination decision, he can institute legal proceedings before the Court within three months from the date of receipt of the reexamination decision.
In addition to the above contents, there is another critical point need to be considered: requirements of amendment. According to guidelines for patent examination, the applicant may amend the application at the time of submitting the request for reexamination and responding to Notification of Reexamination. It should be noted that, the requirements of amendment in reexamination procedure are more stringent than that in the substantive examination procedure. Specifically speaking, any amendment in reexamination procedure should be not only limited in the scope specified in original description and claims, but also limited only to overcome the defects indicated in the decision of rejection or by the panel. For instance, the following amendments are usually not allowed: (1) a claim amended broaden the protection scope as compared with the claim rejected in the decision of rejection; (2) a claim in the amendment is derived from the technical solution that lacks unity with the claims rejected in the decision of rejection; (3) the type of a claim is altered , or the number of claims is increased; or (4) the amendments are directed to the claims or the description that were not involved in the decision of rejection. But there are some exceptions, for example, amendments that are intended merely to correct obvious clerical errors or to amend the defects of the same nature with that indicated in the decision of rejection are allowed.
OK. That’s all I want to share today. Needless to say, the above contents are brief introductions to the reexamination procedure in China. So, if you have any questions, please feel free to contact me. As a leading patent law firm in China, we are always glad to help. See you next time!
