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Phil (Boyang) Yu Chinese Patent Attorney Registered U.S. EIT Mechanical Engineer Patent Engineer of Mechanical Engineering Department, Patent Engineer of US/EP Group
Welcome to Linda Liu and Partners on air! I am Phil YU.
With the rapid development of China's economy, more and more foreign applicants are seeking patent protection in China. When a foreign patent application enters China, the applicant usually expects to amend the application to strive for various scopes of protection. So today I will introduce the timing for making voluntary amendments in the Chinese national phase.
Foreign patent applications usually enter China through two paths, namely the Paris Convention and PCT. The voluntary amendments to foreign applications entering China through the two paths are made in different manners, which is explained subsequently.
«In the case of a patent application entering China through the Paris Convention, the applicant may make voluntary amendments to the patent application. The timing for making the voluntary amendment varies according to the type of the patent application.
For a patent application for creation-invention, the applicant has two opportunities to make the voluntary amendments after filing. Specifically speaking, the applicant may amend the application document on its own initiatives upon filing a request for substantive examination. In addition, the applicant may also make voluntary amendments to the application document within three months from the date of receiving the notice of substantive examination issued by the CNIPA.
For an application for utility model or design patent, the applicant may make the voluntary amendment to the application document within 2 months from the filing date.
A bottom line for making the voluntary amendment is that the amendment shall not have the go-beyond-scope problem. In other words, if the disclosure after the voluntary amendment is made by the applicant is not clearly disclosed in the specification, the original claims and the accompanying drawings, the voluntary amendment may not be accepted by the examiner. Nevertheless, the rule for making the voluntary amendment still allow more freedom than the rule for making amendments in response to office actions according to which the amendments should only be made in order to overcome the defects pointed out in the notifications.
Furthermore, the applicant may amend the application document upon filing in China. The amendment made at this time is free from limitation by the scope of the disclosure of the priority right. New contents may be added to the application document, only that the addition is not entitled to priority.
«Foreign application for creation-invention or utility model that enters China through PCT has the opportunity of making voluntary amendments at similar timings. The applicant may make voluntary amendments under Article 41 of PCT when the application enters the Chinese national phase; and the applicant may make voluntary amendments to an application for creation-invention upon filing or within 3 months from the date of receiving the notice of substantive examination issued by the CNIPA (2 months for an application for utility model), which is similar to patent applications entering China through the Paris Convention.
Different from the Paris Convention, the amendments made under Article 41 of PCT as well as the voluntary amendments made within the afore-described period must be based on the international publication. Therefore, the scope of voluntary amendments made to an application entering China through PCT is relatively limited.
Generally speaking, Chinese examiners will not accept voluntary amendments made to the application at a timing other than the afore-described periods. However, according to the Guidelines for Patent Examination, if the amended documents have eliminated the defects existing in the initial application documents and have the prospect of being granted, the examiner may accept the amendment following the principle of procedural economy.
In addition, during the above-described period allowing voluntary amendments, the applicant may submit amendments for several times. The examiner shall, in principle, take the last filed application document as the basis for examination. The voluntary amendments made by the applicant shall not go beyond the scope of the original disclosure. In other words, if the disclosure after the voluntary amendment is made by the applicant is not clearly disclosed in the specification, the original claims and the accompanying drawings, the voluntary amendment may not be accepted by the examiner.
All in all, under the Chinese Patent Law, an applicant of a foreign patent application entering China can amend the application documents on its own initiatives at the afore-described times in view of the actual needs.
