We have recently received more office actions regarding patent application amendments and a growing number of applications are being rejected due to improper amendments. The regulations on amendments and the measurements followed by examiners in China are different from those in other countries, hence foreign applicants and patent attorneys may make some amendments which although acceptable to local examiners but will not be accepted by Chinese examiners.

This essay will explain what applicants should pay special attention to when amending a Chinese patent application with reference to actual cases in order to help foreign applicants and patent attorneys to make amendments and answer office actions efficiently.

According to Article 33 of the Chinese Patent Law, an applicant may amend his application but the amendment shall not go beyond the scope of the disclosure contained in the initial description and claims. This is an substantial regulation on the content of amendment.

With respect to the time and manner for making an amendment, there are two related rules in the Implementing Regulations of the Chinese Patent Law: Rule 51.1 stipulates that when a request for substantive examination is made or within three months after receipt of the notification of entering the substantive examination stage, the applicant may amend the application on his own initiative; and Rule 51.3 stipulates that the applicant may amend the application after receiving an office action, but the amendment shall be made as required by the office action – in other words only on the defects pointed out in that action.

It might appear that the applicant has only two chances to amend the application on his own initiative: one at a particular point in time and the other within a time frame of three months. This represents a big difference to other countries where the applicant has numerous chances to amend the application on his own initiative.

With respect to making an amendment in response to an office action, the amendment should not go beyond the scope of the disclosure contained in the initial description and claims and should also be limited to the requirements of the office action. The limit is not fixed but correlates with the specific opinions in the office action or examination measurements followed by the specific examiner. In practice, it is hard to handle.

Understanding Rule 51.3

According to Rule 51.3, the amendment made by an applicant in response to an office action should only overcome the defects pointed out by the examiner in the office action. If, therefore, an applicant wants to overcome a defect found by himself in the response to an office action, will Chinese examiners accept such an amendment? We present a number of cases for reference that will provide a better understanding the rules followed by Chinese examiners.

When responding to an office action, the applicant found that Claim 3 of the application falsely refers to Claim 1 and amended, on his own initiative, Claim 3 to refer to Claim 2.

Amendments to obvious mistakes such as different terms being used to describe the same technical features or the reference signs in the attached figures being different from those given in the description.

The Chinese Guidelines for Examination points out that an amendment made on the applicant's own initiative in response to an office action usually shall not be accepted if the amendment addresses a defect not pointed out in the office action. However, if the amendment complies with Article 33, the amendment may be deemed to be agreed by the examiner, which is equivalent to the amendment being made according to the requirements of the office action. Application documents amended in this way may be acceptable, provided that the defects in the initial application documents are eliminated and there is the prospect the application will be granted a patent right.

By doing so, it is beneficial to economise the examination procedure. In cases similar to Case 1 or 2, when the amendment is made to overcome existing defects, as long as the amendment complies with Article 33 and helps to save the examination procedure, the examiner usually will accept it even those defects are not pointed out by him.

However, sometimes an applicant may wish to amend not only formal issues or obvious mistakes but also substantive issues when responding to an office action. According to the Guidelines for Examination, an amendment addressing a defect not pointed out shall not be accepted even if it complies with Article 33, if the amendment does not economise the examination procedure. Such an amendment may include: removing or changing a technical feature in an independent claim to broaden the protection scope of the claim; changing a claim in a way that the subject matter of the changed claim lacks unity with the subject matter of the initial claim; and adding a new claim to protect a technical scheme that never appears in the initial claim.

The subject matter of the original claim is "a cap assembly for a secondary battery" and the applicant changes "secondary battery" into "battery" on his own initiative when responding to an office action.

As discussed above, such amendment to broaden the protection scope usually will be unacceptable to Chinese examiners.

The subject matter of the original claim is "a cap assembly for a secondary battery" and the applicant adds another independent claim when responding to an office action to claim "a battery casing" thus defining a technical scheme that did not appear in the initial claim.

Chinese examiners usually will not accept such additional independent claim, even when the related technical scheme is included in the initial description. However, Case 5 provides an exception.

The subject matter of the original Claim 1 is "a cap assembly for a secondary battery" and the applicant adds another independent claim when responding to an office action to claim "a secondary battery comprising the cap assembly of Claim 1".

As long as the technical scheme of the secondary battery comprising the cap assembly is included in the initial description and there is the prospect the application may be granted a patent right, an examiner will usually accept the new claim since no extra patent search is needed and the examination period will not be prolonged.

It can be seen that fewer chances are provided for applicants to make amendments on their own initiative in China and more restrictions are applied to amendments made on applicants' own initiatives in their response to office actions. We hope that foreign applicants and patent attorneys take note of such differences.

Understanding Article 33

With respect to Article 33, the Guidelines for Examination point out that the scope described in the initial description and claim includes the contents described in the initial description and claim, and the contents determined directly and unambiguously according to the contents described in the initial description and claims, and the drawings of the description.

It is easy to judge what should be regarded as the contents described in the initial description and claims, but how do we define the contents determined directly and unambiguously according to the contents described in the initial description and claims and the drawings of the description? Here are some cases that help us to understand this concept.

When responding to the rejection of Claim 1 on the basis it possessed no novelty, the applicant incorporated Claim 5 which refers to Claim 1 directly into Claim 1. Then the examiner issued a further office action indicating that the amendment to dependent Claim 2 does not comply with Article 33 because the original Claim 2 refers to original Claim 1 while the amended Claim 2 actually refers to original Claim 5. However the technical scheme including the addition technical feature of both original Claim 2 and original Claim 5 is not described in the initial description and claims.

Similarly, an amendment that arranges several separate features in the initial application into a new combination while the correlation of the features is not described in the initial application will be regarded as not complying with Article 33.

The subject matter of original Claim 1 is "a mechanical component". For overcoming the defect pointed out in the first office action that Claim 1 lacks novelty, the applicant added a new technical feature: "the mechanical component has at least one leg", based on the initial description that contains two embodiments in which the mechanical component has one leg and two legs respectively. Then the examiner issued a second office action, pointing out that "the mechanical component has at least one leg" goes beyond the scope of the disclosure contained in the initial description and claims because "at least one leg" means there could be more than two legs and such a technical scheme is not described in the initial description and claims.

This is a typical case of generalisation leading to an amendment not complying with Article 33. The technical feature of mechanical component having "at least one leg" is derived by means of generalisation of two embodiments in the description and might be supported by the description. However, it is inappropriate to add a generalised concept into a filed application. Just as the examiner pointed out, the technical feature of mechanical component having more than two legs is not described in the initial description and claims.

The subject matter of original Claim 1 is "a workpiece transport device". The device comprises a guide rail and the guide rail has a channel. The applicant amended Claim 1 on his own initiative in accordance with Rule 51.1 and removed the technical feature "the guide rail has a channel".

The examiner pointed out that the amendment does not comply with Article 33 because, the guide rail might have or not have a channel if the technical feature is removed, and the technical scheme of the guide rail having no channel is obviously beyond the disclosure of the initial description and claims.

The subject matter of original Claim 1 is "a fuse device for a battery". The device comprises a conductive pattern which includes a weak circuit portion and other portions. In the response to the first office action, the applicant added a new dependent claim with an additional technical feature "the weak circuit portion is formed from a material same to that of other parts of the conductive pattern".

However, the examiner pointed out in the second office action that the amendment does not comply with Article 33. The applicant argued that it is recorded in the initial description that "the weak circuit portion may be a narrow-width portion or a different-material portion of the conductive pattern", since the conjunction "or" is usually used to link two parallel contents rather than two repeated contents, it can be deduced from "a different-material portion" after "or" that the "narrow-width portion" uses the same materials as other portions of the conductive pattern, so the newly added technical feature is implied by the initial description and the amendment complies with Article 33. The examiner finally accepted the argument and the amendment.

The subject matter of original Claim 1 is "a secondary battery" which comprises a center pin and the additional technical feature of dependent Claim 2 is "the center pin has a shape of body of revolution". When responding to the first office action, the applicant amended dependent Claim 2 into "the center pin is bulged" based on the shape of the center pin. The examiner issued the second office action, pointing out that the corresponding expression in the description is "truncated conical" and the technical feature "bulged" cannot be directly and unambiguously derived from the initial description and claims, which results in the amendment not complying with Article 33.

It is also very possible that an amendment only based on drawings would not be accepted by Chinese examiners.

Qi Wang

Qi Wang is the co-founder of DEQI Intellectual Property Law Corporation. She earned her BS degree in Electronics from Sun Yat-Sen University and then worked as an electronic R&D engineer in the Chinese NASA before joining a telecommunications equipment company for 10 years. Qi has practiced in the field of IP for 13 years. She has extensive experiences in drafting and prosecuting patent applications, patent re-examinations, and appeals, invalidations in the fields of electronics, software, telecommunication and network. Her expertise also extends to patent validity, patentability and infringement opinions and advises clients on patent strategy and intellectual property management. She is also experienced in training IP law service beginners and fresh patent attorneys. Qi is a member of the All-China Patent Agents Association.

Zhengyun Luo

Zhengyun Luo is a partner in DEQI Intellectual Property Law Corporation. He earned his BS degree and MS degree in Vehicle Engineering from Beijing Institute of Technology and then worked as an editor in a science and technology publishing house for four years. Zhengyun has practiced in the field of IP for seven years and his practice covers a wide range of intellectual property including patent prosecution, patent re-examinations, and invalidations in the fields of mechanical engineering, electronic engineering and telecommunications. He has particular experiences in advising clients on patent portfolio management both in China and in other countries. Zhengyun is a member of the All-China Patent Agents Association.