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Regarding submitting amendments to the application documents for invention patents, there are two related articles, namely Article 33 of the Patent Law and Article 51 of the Implementing Rules of the Patent Law. Article 33 of the Patent Law stipulates the contents and scope of amendments; Article 51.1 of the Implementing Rules of Patent Law stipulates the timing of initiative amendments; and Article 51.3 of the Implementing Rules stipulates the process for making amendments when responding to the Notice of Office Action.
In the amended Patent Law effective since October 1, 2009, Article 33 has not been amended. In the amended Implementing Rules of the Patent Law effective since Feb 1, 2010, only Article 51.3 was amended to “If an applicant amends his patent application documents after receiving a notice giving the examination opinion issued by the patent administrative authority under the State Council, he shall amend the application regarding the defects indicated in the notice. ”
In other words, the general principles and requirements for the amendment of application documents for invention patents remain unchanged before and after the amendment of the Patent Law and the Implementing Rules of Patent Law.
In the Patent Examination Guidelines, the provisions on making amendments to application documents for invention patents are in Article 5.2 of Chapter 8 of Part II of the Guidelines. In the amended Guidelines effective since Feb 1, 2010, the major amendments are as follows:
1） Clarification of the relation between A33 and R51 (Sections 5.2, 5.2.1 and 5.2.1.1);
2）Addition of Section 5.2.1.2 to further clarify the timing of initiative amendments;
3）Further clarification of the means of making amendments when responding to the Notice of Office Action.
Generally, any kind of amendment to the application documents for invention patents shall be in conformity with Article 33 of the Patent Law. However there are limitations on the time or the means for different kinds of amendments. If those limitations are not satisfied, the application will not be accepted by the examiner even if the application is in conformity with Article 33 of Patent Law. The foresaid limitations on the amending time and amending means for different kinds of amendments in the 2010 Patent Examination Guidelines are summarized in the following chart:
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Type of Amendment
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Limitation on the timing of amendment
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Limitation on the means of amendment
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Initiative Amendment
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1.when a request for substantive examination is made;
2.within 3 months after the receipt of the Notification of Entering the Substantive Examination Stage of the Application issued by the Patent Administrative Authority of the State Council
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None
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Amendment when responding to the Office Action
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Within the time limit prescribed in the Office Action
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Amendment to the defects as indicated in the Office Action
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Initiative amendment in response to the Office Action
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Within the time limit prescribed in the Office Action
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Limited to eliminating the defects existing in the initial application, and there must be prospect for the application to be granted the patent right. However, the amendment is unacceptable under any of the following circumstances:
1.The applicant initiatively removes technical features from the independent claim, which leads to the broadening of the scope of protection claimed in the claim;
2.The applicant initiatively changes the technical features of independent claim, which leads to the broadening of the scope of protection claimed in the claim;
3.A technical content which is only disclosed in the description and lacks unity with the initial claimed subject matter is taken as the subject matter of the revised claim;
4. A new independent claim is added, and the technical solution defined by it is not present in the initial claims
5. A new dependent claim is added, and the technical solution defined by it is not present in the initial claims.
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Amendment in reexamination
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1.when a request for reexamination is made
2. when responding to the notification of reexamination (including the notification of oral trial of reexamination request).
3.in oral trial
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The amendment is limited to eliminating the defects indicated in the rejection decision or pointed out by the panel. The following amendments are not in conformity with relevant provisions:
1. the amended claims broaden the protection scope compared with the initial claims cited in the rejection decision
2.A technical solution which lacks unity compared with the technical solution defined by the claims cited in the objection decision is taken as the amended claims.
3.the type of claims is changed or a new claim is added
4.amendement is made to the claims or description in which the defects indicated in the rejection decision are not involved, excluding the circumstances where there are obvious literal mistakes in the amendments or where amendment is made to defects which are of the same nature as the defects cited in the objection decision
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Amendment in invalidation
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Before the Patent Reexamination Board makes a decision on the request for invalidation, the patentee may amend by the way of combination only in one of the following circumstances:
1. in response to the request for invalidation;
2. in response to causes for invalidation or evidence added by the petitioner;
3. in response to causes for invalidation or evidence not mentioned by the petitioner but introduced by the Patent Reexamination Board.
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Any amendment shall be limited to the claims based on the following principles:
1. the title of the subject matter of a claim can not be changed;
2. the scope of protection can not be extended as compared with that in the granted patent;
3. the amendment shall not go beyond the scope of disclosure contained in the initial description and claims;
4. the addition of technical features not included in the claims as granted is generally not allowed.
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