Abstract:

    In recent years, with the deepening development of global economic integration, more and more Chinese companies have begun to explore overseas markets. At the same time, in order to seek protection of patents in overseas markets, the number of Chinese companies applying for patents abroad has increased year by year. At present, most domestic companies are familiar with the application process for overseas patents, but there is still a shortcoming in the experience of domestic companies in the Office Action response. Especially, due to the large differences in laws, regulations and practices in different countries / regions, the rules for amending application documents are different in different countries / regions, which brings challenges for applicants. This article starts with the amendment of the application documents when responding to the Office Action, and explores the differences in amendments of the application documents of mainstream countries such as Europe, the United States, Japan, and South Korea. It is intended to provide some help for companies wishing to have “overseas patents”.

Key words:

Response to the Office Action, Amendments to application documents, amendments beyond the scope

I. The Significance of Application Amendments in the Office Action Response

    The Article 33 of the Patent Law of China:

    An applicant may amend his or its patent application documents, however, the amendment to the patent application documents for an invention or utility model may not beyond the scope of disclosure contained in the original description and claims, and the amendment to the patent application documents for a design may not beyond the scope of the disclosure as shown in the original drawings or photographs. Rule 51 of the Implementing Regulations of the Patent Law further provides for the amendment to the procedures for responding to Office Action: Where the applicant amends the patent application documents after receiving the notification of the examination report as to substance of the patent administration department under the State Council, he or it shall amend the amendment directed to the defects pointed out by the notification.

    The applicant can correct some obvious errors in the application documents when replying to the notification of an office action. More importantly, the applicant can make more targeted amendments to the application documents according to the Office Action and the reference documents retrieved by the Examiner. Adjusting the protection scope of the application documents by means of modification can make the application documents satisfy the substantive requirements of novelty, inventive step, etc., and then make the application finally granted a patent.

II. Two basic questions to be answered in response to the Office Action

    Peers with domestic agency experience know that there are two basic questions in responding to China's Office Action. The first is the timing of the revision and the second is the content limitation.  

    As far as the timing is concerned, once entering the stage of comment reply, only the question indicated by the examiner can be amended, rather than the active amendment, and the number of times of modification is not limited, which depends on the examination situation. According to Guidelines for Patent Examination, Part II, Chapter VIII, Section 4.11.3.1, if the examiner believes that it is necessary to issue an office action notification again for the modified document, then the examination procedure is not yet finished, and the applicant still has the opportunity to amend the application. The examiner usually sends two notifications.

    With regard to the limitation to modify contents, except being limited by passive amendments, the most important limitation is that the amendments shall not beyond the scope of disclosure contained in the original application documents. For example, when modifying the application documents, it is basically impossible to add new drawings, and it is impossible to make substantial modifications to the drawings. The amendments to the description are also relatively strict, and the description can generally be modified in two cases, in which one is an adaptive modification according to the amendments to the claims, and the other is an obvious defect correction.

    With regard to the modification to the claims, in general, the independent claims will be amended. And common modification methods comprise incorporating all or some of the technical features of the dependent claims, incorporating the technical features specified in the description and incorporating the technical features specified in the drawings accompanying the description. The above-mentioned amendments all cause the scope of protection of the independent claim to be reduced, and the amendments to the reduced scope of protection comply with Rule 51.3 of the Implementing Regulations of the Patent Law, and are basically acceptable to the examiner.

III. Features of Amendment in European Office Action Response

    With regard to the limitation to the timing and content of the amendments, Article 123 of the European Patent Law provides that "the applicant shall be given the opportunity to amend at least once and shall not beyond the scope of the original application".

    Generally speaking, the requirements of the amendments to the European patent application documents are similar to those in the Chinese case, and the requirements are relatively strict. Generally, new drawings cannot be added basically, and the drawings cannot be substantially modified. The amendments to the part relating to the solution of the present application in the description also have many limitations, and in addition to obvious incorrect amendments, the contents of the description generally cannot be amended.

    In terms of the amendments to the claims, similar to the domestic amendments, the independent claims are generally amended. All or some of the technical features of the dependent claims may be incorporated, the technical features specified in the description may be incorporated, and the technical features specified in the drawings accompanying the description may be incorporated. After the amendments, the applicant needs to provide a clear basis for the amendments.

    It should be noted that the European Office Action is generally issued more than twice, the first written opinion for the European supplementary search report is issued by the search Examiner and is generally given a response period of six months. At this point, the applicant has the opportunity to modify the application according to the search results actively. Of course, due to the particularity of the process, the feature comparison between the application documents and the reference documents in the written opinion of the supplemental search report in Europe would be relatively simple. The applicant is required to perform an overall analysis on the reference document in order to seek the best modification method and avoid simple response due to simple comments, which has a key effect on shortening the period of examination and reducing the overall cost. The second time is the formal examination opinion, which is issued by the substantive Examination and is usually given a four-month response period.

IV. Features of Amendment in United States Office Action Response

    The examination procedure and regulations in the United States are quite different from those in China, and require special attention from applicants.

    With regard to the modification timing, the examination procedures in the United States is relatively flexible, and although the general pattern is two office actions, the first one is a non-final office action, the period of response is three months, the second one is a final office action, and the period of response is also three months. However, the United States patent system is unique in that a request for continuing examination (RCE) can be made by paying a fee. In theory, the case can be kept under examination as long as the fee is paid. With regard to the limitation of modifications, although 35 U.S.C. 132 provides that "no modification shall introduce new content into this invention." That is, the revision of patent application documents also requires that no new content should be introduced, but U. S. Examiners are more flexible for "new content". There are two main characteristics:

    Firstly, the determination of whether a claim amendment is beyond the scope is based not on whether it is "recorded", but on whether the requirements of 35 U.S.C. 112 on the support of original application documents are satisfied. For example, in response to the United States office action, the manner in which an independent claim is modified by deleting a part of the technical feature (which is not a feature of creative contribution) is to some extent acceptable to the United States Examiner. For example, if the independent claim 1 refers to the feature "Part F is connected with Part G by screw", and the attached drawing must show all the features mentioned in the claim in accordance with the requirements of federal regulations of the United States (see 37 CFR 1.83 (a)), where other features are reflected in the attached drawing, if the above feature "screw" is not reflected in the attached drawing, and the applicant cannot provide a new attached drawing (can show "screw"), the applicant may remove the feature "through screw", then the scope of protection of the new independent claim 1 is "Part F is connected with Part G".

    Secondly, the claims are also made public as part of the original application document, so that many modifications to the supplementary specification are acceptable to the United States examiner, provided that certain elements of the claims are made public, including graphical content. According to the practice of patent agency, the appended drawings may be amended or new appended drawings may be added, no matter whether they are amended on initiative when they enter the country or in the opinions of examination. Of course, the aforesaid amendment also needs to meet certain conditions. For details, please refer to the US Patent Examination Guidelines MPEP 608.01 (l).For the part of the specification concerning the technical solution of the application, the supplementary explanation, adding the principle explanation and so on can also be accepted by the American examiner.

   Although the U. S. examination process for the modification of the requirements is relatively loose, but need to pay attention to estoppel. With regard to the amendment to the narrowing of the scope for the purpose of obtaining patent authorization, if such scope does not record in the original claims, it is likely that the doctrine of equivalents can not be used to claim infringement in the subsequent right protection process.

    In addition, in accordance with the practice of the patent strategic, the treatment of the side-by-side scheme by the U. S. examiner is rather friendly. The U. S. allows the applicant to reserve, by modifying the claims, a plurality of schemes lacking unity of invention. For example, where the independent claims lack patentability and a plurality of parallel dependent claims are patentable, the applicant of the present invention would have been able to readily receive from the American examiner the applicant of the present invention by modifying the solutions of the plurality of dependent claims into a plurality of different scopes of protection of the plurality of independent claims.

    For example, independent claim 1 is not patentable, dependent claims 6 and 7 both refer to claim 1, and dependent claims 6 and 7 belong to parallel solutions and are both patentable. At this point, the additional technical features of dependent claim 6 can be incorporated into independent claim 1 as new independent claim 1, and at the same time, the additional technical features of dependent claim 7 can be incorporated into independent claim 1 as another independent claim. At this point, the applicant has obtained two claims with completely different scopes of protection.

V, Features of Amendment in Japan Office Action Response

    The modification time of Japan greatly differs from that of China, and the applicant is required to pay special attention.

    With regard to the timing of modification, the examination procedure in Japan is relatively short. Generally, Japan only issues one notice of an office action, and the period of response is three months. The response may be directly authorized or directly rejected, and in the case of rejection, the applicant needs to consider subsequent procedures according to practical situations. Therefore, with regard to the amendments to the Japanese application documents, it seems particularly important to carry out the active modification at the time of OA1 and to modify to a suitable scope once. In addition, different modification timings also have different limitations to the modified contents, and the later the occasion of making the amendments to the claims, the smaller the degree of freedom of the amendments. Specifically, in the case of active modification, only "the modification shall not exceed the scope" is required; upon receipt of the notification of the first office action, the modification of the application documents is also more lenient, and two requirements need to be met, namely, "the modification shall not exceed the scope" and "the invention before and after modification shall meet the requirement of unity of invention"; in the case of reply to the notice of rejection, in the case of modification to the Japanese application documents, in addition to the deletion of the claim, the scope of protection of the claim can only be further narrowed, and the modification method is significantly different from Chinese modification.

    For example, if an independent claim (assuming that it includes features A, B, and C) is modified in response to the first review opinion to narrow the scope of protection and is incorporated into a technical feature (such as feature D), the response to the rejection notice can only further be defined that technical feature (feature D) (feature D '), while the modification incorporating other technical features (such as feature E) is not acceptable to the Japanese examiner.  

VI, Features of Amendment in Korea Office Action Response

    Finally, it discusses the modification of the application documents in the reply to the examination office action of the Korean patent application.

The examination procedures in Korea and Japan are relatively similar, and in general, Korea only issues one notice of an office action, and the period of response is two months.

In response to the Korean office action, it is also necessary to consider the problem of the modification opportunity. Similar to Japan, the later the opportunity to make a modification to a claim is, the smaller the degree of freedom of the modification is. In response to a Korean office action, the requirements on responding to the notice of the first office action and the notice of rejection are very similar to those in Japan, and a description thereof will be omitted here.

VII, Summary

To sum up, different countries in Europe, the United States, Japan and South Korea, when replying to the examination office action, require the amendment of application documents under the framework of "not exceeding the scope of the original application", but each country has different requirements and characteristics. When replying to the examination office action of different countries, it is necessary to make full use of the characteristics of each country, taking into account the scope of protection, examination cycle, cost control and other circumstances to obtain the best modification strategy.