I.  Introduction:

Some applicants intend to make amendment to the application documents, but do not know when and to what extent the application documents can be amended.  Sometimes applicants, especially some foreign applicants, will encounter such confusion as "the Chinese application is rejected for amendments going beyond the scope of the initial description and claims, while the US counterpart application having the same claims have been granted. Why?". 

Generally speaking, compared with the examination system of Patent Offices in other contraries, such as US examination system, the Chinese examination system applies very strict criteria on amendment to the claims and description.  In the following, we will answer the other related questions and give some of our suggestions. 

II.  Related Law:

According to Article 33 of the Chinese Patent Law, an applicant may amend his or its application for a patent, but the amendment to the application for a patent for invention or utility model may not go beyond the scope of disclosure contained in the initial description and claims, and the amendment to the application for a patent for design may not go beyond the scope of the disclosure as shown in the initial drawings or photographs.

According to Part II, Chapter 8 in Guidelines for Examination of Chinese Patent Law, “the scope of disclosure contained in the original description and claims includes the contents described in the original description and claims, and the contents determined directly and unambiguously according to the contents described in the initial description and claims, and the drawings of the description.”

That is to say, the scope of disclosure contained in the original description and claims refers to either of the two aspects as follows:

1)    the contents described, i.e. literally/directly recorded, in the original description and claims; and

     2) the contents determined directly and unambiguously according to the contents described in the initial description and claims, and the drawings of the description, in short, the contents determined directly and unambiguously according to the original disclosure of the application.

III.  Voluntary Amendment Opportunities

According to the provisions of Rule 51 of the Implementing Regulations of the Chinese Patent Law, for an invention application, the applicant has two opportunities for filing a voluntary amendment: the first one is when filing a substantive examination request, and the second one is within the time limit of three months after the receipt of the Notification on the entry into substantive examination.

For the applications of utility model and design, since substantive examination is not performed, there is only one opportunity for filing a voluntary amendment, that is, a voluntary amendment may be filed within two months from the date of filing of the application.

When filing a voluntary amendment, the applicant is allowed to amend the application documents in any way, for example, add independent or dependent claims, as long as the amended content does not go beyond the scope of the original disclosure of the application.

IV.  Other Amendment Opportunities

The applicant is allowed to amend the application documents after receiving a Notification of Office Action or a Notification to Make Rectification from the CNIPA, however at this stage, he or it shall make the amendment directed to the defects pointed out by the Notification.  Therefore, the amendments made by the applicant is limited to a certain extent, for example, newly added claims are not allowed. 

For an application, if a Decision of Rejection is received, the applicant may file a request for reexamination within three months, it is allowable to make amendments in the request, also, the amendment shall also be directed to the defects pointed out by the Decision.

In addition, for a PCT international application, when it enters the Chinese national phase, the applicant is allowed to amend the application documents in any way, for example, add independent or dependent claims, as long as the amended content does not go beyond the scope of the original PCT disclosure.

V.  Examples for Amendments

Hereafter we list some examiners for Amendments.  In the followings example, we only discuss whether the amendment complies with the provisions of Article 33 of the Chinese Patent Law, that is, whether the amendment goes beyond the original disclosure of the application, assuming that the amendment complies with other relevant provisions of the Chinese Patent Law.  

Example 1: The applicant amended "resin" described in the description and claims to "condensed thermoplastic resin", and there is no feature "condensed thermoplastic resin" specifically recorded in the original disclosure of the application.  Obviously, since "resin" is the general concept of "condensed thermoplastic resin", the scope of "resin" is larger than that of "condensed thermoplastic resin". 

And thus, the amended feature "condensed thermoplastic resin" is not described in the original description and claims, and also can not be determined directly and unambiguously from the original disclosure of the application.  Therefore, this amendment is not allowed.

Example 2: The applicant amended "transparent glass" described in the description and claims to "glass", and there is no feature "glass" specifically recorded in the original disclosure of the application.  Obviously, since "transparent glass" is a specific concept of "glass", the scope of "transparent glass" is smaller than that of "glass".

And thus, the amended feature "glass" which is relatively broader is not described in the original description and claims, and also can not be determined directly and unambiguously from the original disclosure of the application.  Therefore, this amendment is not allowed.

Example 3: The original solution is a mobile phone, including a speaker, a keyboard, a microphone, and a controller. The amended solution is a mobile phone, including a speaker, a keyboard, a microphone, a controller, and a receiver.

This amendment is allowed since a person skilled in the art can directly and unambiguously determine that a mobile phone necessarily includes a receiver based on common knowledge.

Example 4: The original solution is a mobile phone, including a speaker, a keyboard, a microphone, and a controller. The amended solution is a mobile phone, including a speaker, a keyboard, a microphone, a controller, and an NFC module.

This amendment is not allowed since a person skilled in the art knows that a mobile phone may or may not include an NFC module, the amended feature can not be directly and unambiguously determined from the initial description and claims.

Example 5: Referring to the figure below, a feature "the gear has ten teeth" can be directly and unambiguously determined from this figure, however, a feature such as "the tooth height of the gear is 0.4 cm" can not be directly and unambiguously determined from this figure.  And thus, the feature "the gear has ten teeth" does not go beyond the original disclosure of the application, and it is allowed to be added into the claims and description; however, the feature " the tooth height of the gear is 0.4 cm " goes beyond the original disclosure of the application, and it is not allowed to be added into the claims and description.

In summary, if a feature defining a dimension parameter obtained by measuring the drawing, it is not allowed to be added into the claims and description.

VI.  Suggestions

Suggestion 1: It should be noted here that, although the applicant can make amendments to the application documents when responding to a Notification of Office Action issued by the CNIPA, but at this time the applicant should make amendments with respect to the defects pointed out in the Notification.  Therefore, the amendments made by the applicant is limited to a certain extent, for example, newly added claims are not allowed.  As the saying goes, don't miss the opportunity, it never comes again.  If a voluntary amendment is desired, the applicant must shall not miss the above-mentioned voluntary amendment opportunities.

Suggestion 2：If the applicant intends to make amendments to the application, it is better that the amended features belong to the contents literally/directly recorded in the initial description and claims, considering that the Chinese examiner’s criteria on amendment going beyond the original scope is generally very strict in China. 

Suggestion 3：We generally do not recommend making amendments to the description and drawings except to correct obvious errors and make necessary formal amendments, considering that the description and drawings do not affect the protect scope of the application.

Suggestion 4：If a rejection of amendments going beyond the initial scope is received, we need to judge whether the rejection is reasonable.  If the rejection is reasonable, we may make amendment and/or deletion and/or addition to the relevant part of the application to traverse the rejection. 

If the rejection is unreasonable, in particular, in a situation that the related amended features were not described in the original description and claims, but belong to the contents determined directly and unambiguously according to the original disclosure of the application.  Under such a situation, we recommend communicating with the examiner by telephone, so as to directly and clearly impart the comments to the examiner, in the hope of persuading the examiner to accept the amended features, thereby speeding up the examination process.  Also, the applicant should set forth in the written response about the detailed support (for example, the specific part in the drawing, on which some marks may be made to help understanding of the examiner, and/or the specific sentence in the Description) for each of the related amended features.  In conclusion, it is very important and effective to communicate with examiners for such amendment rejection in the Office Action.

In all, Chinese examiners are very strict in the examination of amendments to application documents.  When amending the application documents, the applicant must consider whether each amended feature is within the scope of the original disclosure of the application, and whether the amended solution as a whole is within the scope of the original disclosure of the application, so as to avoid undesired prolongation of the examination procedure in the hope that the patent application to be granted smoothly.