If you’ve prosecuted a Chinese patent application in the People’s Republic of China, or have investigated the process in any detail, you will probably be familiar with Chinese patent re-examination.
To save you time, we’ve prepared a flowchart which provides a broad overview of the Chinese patent re-examination process and the various time limits involved. A PDF version is available for download here.
If you’re keen, though, and would like to know more, read on!
What is Chinese Patent Re-Examination?
In summary, it’s a procedure that allows the owner of a Chinese patent application to effectively appeal against a decision of rejection issued by a Chinese patent examiner.
When requested, if the Chinese examiner maintains his decision of rejection, the Chinese patent application is further examined by the so-called Re-examination and Invalidation Department of the Patent Office, CNIPA (previously the Patent Re-Examination Board). To keep things simple, we’ll simply refer to this department as “the PRB”, comprising a panel of 3 Chinese patent examiners, which can either revoke the decision of rejection or allow at least one further opportunity for the applicant to overcome the decision of rejection before issuing a final decision.
Essentially, this procedure is the applicant’s last chance to save the Chinese patent application and persuade the Chinese Patent Office (CNIPA) to continue with its examination.
Whilst it’s clearly not a good sign for the Chinese patent application to be the subject of a decision of rejection, it’s far from fatal and the decision of rejection can often be overcome with the Chinese patent re-examination procedure.
In fact, it’s not unusual for a Chinese patent application to undergo more than one patent re-examination during its life before final rejection or grant.
When can Chinese Patent Re-Examination be Requested?
As many of you will know, a Chinese patent application undergoes a substantive examination in which a Chinese patent examiner considers the patentability of the Chinese patent application and whether it conforms to the various requirements of Chinese patent law (e.g. added matter, excluded subject matter, lack of clarity).
If the Chinese patent examiner is not satisfied that the Chinese patent application is acceptable for grant, he/she will usually issue an “office action” or “examination report” detailing any objections.
If the applicant is unable to overcome the Chinese patent examiner’s objections, a decision of rejection may be issued (usually after at least two rounds of objections). It’s worth noting that the likelihood of a decision of rejection may be increased if the applicant continues to argue against an objection without offering any new incites or concessions in terms of claim amendments.
When the decision of rejection is issued, the applicant has 3 months from the date of receipt of the decision of rejection to file a request for re-examination. This deadline is calculated as follows:
Date of Decision of Rejection + 15 days + 3 months
The additional 15 days is a fixed term provided under Chinese patent law (Rule 4.3) to allow for mail delivery and is the date on which the decision is presumably received by the applicant (or its representative).
So, in the event a decision of rejection issued on 3 January 2019, the 3-month deadline would be calculated from 18 January 2019 i.e. 3 January + 15 days. Accordingly, in this scenario, the deadline for filing a request for re-examination would be 18 April 2019.
Are There Any Fees to Pay?
Yes, there is an official fee of 300RMB (~US$45).
In addition, at the time of writing, the All-China Patent Agents Association recommends an attorney fee of 4,000RMB (~US$585) for preparing and filing a request for re-examination. This does not include the cost of preparing further amendments and arguments which should give you a hint to the answer to the following…
Can Amendments and Further Arguments be Made when Filing a Request for Re-Examination?
Absolutely. In fact, unless the applicant is convinced by the strength of his/her arguments or is very close to the deadline and simply doesn’t have the time, amending the Chinese patent application and presenting further arguments is usually a good approach.
It’s important to note that any amendments should only address the objections raised and should not seek to address issues with the application that have not been identified by the Chinese examiner. Of course, a skilled attorney can often find ways to simultaneously address previously unidentified issues whilst responding to a specific examiner objection.
It is possible to file a request for re-examination by simply re-submitting the same arguments and amendments (if any) that led to the decision of rejection. However, the chances of overcoming the decision of rejection may be improved by making some additional arguments and amendments. This is especially because the original Chinese examiner can sometimes be persuaded to revoke the decision of rejection without the need to escalate the case to the PRB. There is almost no chance of this happening without some amendments and further arguments.
Which brings us neatly to the next question…
What Happens After a Request for Re-Examination is Filed?
The Chinese Patent Re-Examination procedure can be broadly separated into three stages namely, the formality examination, the interlocutory examination, and the PRB examination (otherwise known as collegiate examination).
The first step is for the PRB to conduct a formality examination to ensure the request satisfies the requirements of the Chinese patent laws and corresponding rules.
If the formality requirements are not met, the PRB will invite the applicant to rectify any discrepancies within 15 days of the date of receipt of a Notification to Make Rectification letter. Applying the 15-day rule, the deadline is calculated as the date of the notification + 15 days for receipt + 15 days for the allowed time.
If all discrepancies (if any) are rectified, or if no such notification is issued, the PRB will issue a Notification of Acceptance of Request for Re-examination letter and pass the case back to the original Chinese patent examiner for an ‘interlocutory examination.’
Of course, it goes without saying that the failure to timely rectify any discrepancies will result in the request for re-examination being rejected. Accordingly, it’s vital to ensure all formality requirements are met in due time to ensure the case proceeds to the next stage of the process.
The original Chinese patent examiner will consider the documents submitted as part of the request for re-examination and issue one of the following three opinions:
- the request for re-examination is allowable and the decision of rejection is revoked;
- the amendments submitted overcome the original objections and the decision of rejection is revoked as a result of those amendments; or
- the decision of rejection is maintained.
In my experience, outcome 1 is unlikely. Outcome 2 is possible if fresh and compelling arguments are submitted together with appropriate amendments.
If the applicant is lucky enough to receive one of these two opinions, the PRB will confirm the interlocutory opinion and send the application back to the Chinese patent examiner for continued examination. At this point, the chances of the application subsequently proceeding to grant are good, particularly if the original objections were based on cited prior art or common general knowledge that have now been overcome.
Generally, though, the applicant will find itself faced with outcome 3 and the need to tackle the PRB…
As mentioned, the PRB comprises a panel of 3 Chinese patent examiners which is tasked with resolving re-examination cases that have failed to overcome the original Chinese patent examiner’s objections.
Whilst the PRB panel will normally only consider the grounds and objections raised by the original examiner, the PRB panel has some discretion to introduce new arguments and objections that are obviously evident in the case. For example, if the original examiner objected that claim 1 lacked clarity for use of indefinite terms, the PRB panel may find that dependent claim 2 also suffers from lack of clarity for similar reasons.
The PRB panel also has discretion to introduce new evidence to support the original examiner’s objections. Such evidence may comprise extracts from technical manuals or text books that support objections based on common general knowledge (a favourite of Chinese patent examiners).
The PRB will examine the arguments and amendments (if any) submitted by the applicant and ultimately make one of the following three decisions:
- the decision of rejection is upheld;
- the decision of rejection is revoked; or
- the decision of rejection is revoked based on amendments made by the applicant which overcome the objections.
Outcomes 2 and 3 will result in the application being sent back to the original Chinese examiner for continued examination. This is the goal of the applicant when requesting re-examination and, depending on the type of objections overcome, is often a good sign that the application will soon proceed to grant.
Outcome 1 is effectively the end of the road as far as the re-examination procedure is concerned and to be avoided, if possible. Whilst it’s possible to appeal the PRB’s final decision to the Chinese Courts within 3 months of receipt of the decision (not including the additional 15 days which may not be applied by the Chinese Courts), the chances of the appeal being successful are low, especially if the decision was based on lack of novelty or inventive step grounds.
Before issuing a decision to uphold a decision of rejection, though, the PRB will issue a Notification of Re-Examination and give the applicant at least one further opportunity to present observations and amendments (subsequent Notifications of Re-Examination may be issued). A Notification of Oral Proceedings for Request for Re-Examination is also possible but, in practice, this is rarely issued in re-examination cases.
The Notification of Re-Examination may indicate one of the following:
- the decision of rejection is intended to be upheld;
- the decision of rejection can be revoked subject to further amendments of the application by the applicant;
- further evidence or explanations are required from the applicant; or
- new grounds or evidence not previously relied upon in the decision of rejection must be introduced.
In each case, the applicant has a shortened period of 1 month from receipt of the notification in which to present additional observations and amendments in the hope the PRB panel can be persuaded to revoke the decision of rejection.
At this stage of the process, though, since the next communication could be an almost fatal decision upholding the decision of rejection, it’s a good idea to get on the phone to one of the panel members to try and open a dialogue.
The responsiveness of a panel member will vary but if the applicant can find a receptive examiner, this can be invaluable in gaining some insights as to how to overcome any objections raised and find a way forward. For particularly kind-hearted panel members, they might also be encouraged to issue a further Notice of Re-Examination to provide an additional opportunity to address any objections in the event a first response is not successful.
It’s not always possible but the key at this stage is to avoid the dreaded final decision upholding the decision of rejection. In the event of such a decision, though, all might not be lost if it’s still possible to file a divisional patent application and continue to seek some form of patent protection.
A decision of rejection is a normal event during prosecution of a Chinese patent application and does not have to be the end.
The Chinese Patent Re-Examination procedure can, and often is, used to overturn a decision of rejection. Provided the applicant is cautious with its responses and is prepared to make some concessions in terms of amendments (where prudent), a favourable decision from the PRB can often be secured. Such a decision can even directly lead to the subsequent grant of a Chinese patent.
If your Chinese patent application is the subject of a decision of rejection and you would like some input or assistance, please do not hesitate to contact us.