The reexamination procedure is a relief procedure initiated by the applicant who is dissatisfied with the decision of rejection. During the reexamination procedure, the reexamination petitioner may amend the application documents at the time of filing a request for reexamination, responding to Notification of Reexamination, or attending oral proceedings. Any amendment, however, shall comply with the provisions of Article 33 of the Patent Law and Rule 66 of the Implementing Regulations of the Patent Law. Article 33 of the Patent Law stipulates: "An applicant may amend his patent application documents, provided that the amendment to the invention or utility model patent application documents does not go beyond the scope specified in the original description and claims, or that the amendment to the design patent application documents does not go beyond the scope shown in the original drawings or pictures". Rule 66 of the Implementing Regulations of the Patent Law stipulates: "the petitioner may amend patent application documents at the time of filing a request for reexamination or responding to the notification of reexamination of the patent administration department under the State Council. However, the amendments shall be limited only to removing the defects pointed out in the decision of rejection or in the notification of reexamination".

    It can be seen that during the reexamination procedure, the applicant is usually not entitled to the right to amend the patent application documents on his/her own initiative, while the content and scope of the amendment are subject to certain restrictions. According to Rule 66 of the Implementing Regulations of the Patent Law, the amendments to the patent application documents by the reexamination petitioner shall be limited only to removing the defects pointed out in the decision of rejection or by the panel. Generally, the above requirement is not considered to be met in the following situations:

(1) where a claim amended extends the scope of protection as compared with the claim rejected in the decision of rejection;

(2) where a claim amended is derived from the technical solution that lacks a unity with the claims rejected in the decision of rejection;

(3) where the type of a claim is altered, or the number of claims is increased; or

(4) where the amendments are directed to the claims or the description that were not involved in the decision of rejection, unless they are intended merely to correct obvious clerical errors or to amend the defects of the same nature with that indicated in the decision of rejection.

    That is to say, in view of the particularity of the reexamination procedure, in addition to complying with the general provision of Article 33 of the Patent Law on the amendments to the patent application documents, the amendments to the patent application documents during the reexamination procedure shall be limited only to removing the defects pointed out in the decision of rejection or by the panel, and no arbitrary amendment or addition of content is allowed.

    It should be noted that for the above situation (1), it is necessary to compare the claim amended during the reexamination procedure with the claim rejected in the decision of rejection, rather than with the claim originally filed. If the protection scope of the claim amended during the reexamination procedure is greater than the protection scope of the claim rejected in the decision of rejection, even if the amendment to the patent application documents does not go beyond the scope specified in the original description and claims, the above amendment does not comply with the provision of Rule 66 of the Implementing Regulations of the Patent Law.

    For the above situation (2), it is necessary to compare the claim amended during the reexamination procedure with the claim rejected in the decision of rejection to determine whether there is a unity between the amended claim and the claim rejected in the decision of rejection, rather than determining whether the amended claims lack a unity therebetween. If there is not a unity between the claim amended during the reexamination procedure and the claim rejected in the decision of rejection, the above amendment does not comply with the provision of Rule 66 of the Implementing Regulations of the Patent Law.

    For the above situation (3), if the applicant amends a product claim into a method claim or amends a method claim into a product claim, or adds a new claim on his own initiative when filing a request for reexamination or responding to Notification of Reexamination, the above amendment does not comply with Rule 66 of the Implementing Regulations of the Patent Law. However, if the applicant deletes the feature of the subordinate concept from the claim rejected in the decision of rejection and defines the feature of the deleted subordinate concept in a new claim in order to overcome the unclear problem caused by the coexistence of the superordinate concept and subordinate concept pointed out in the decision of rejection, although this situation leads to an increase in the number of claims, the above amendment is still allowed and complies with the provision of Rule 66 of the Implementing Regulations of the Patent Law.

    For the above situation (4), if the applicant amends the claim that has not been pointed out as having any defects in the decision of rejection when filing a request for reexamination, the above amendment does not comply with the provision of Rule 66 of the Implementing Regulations of the Patent Law, unless the amendment is intended merely to correct obvious clerical errors or amend the defects of the same nature with that indicated in the decision of rejection.

    During the reexamination procedure, if the amended application documents filed by the reexamination petitioner do not comply with the provision of Rule 66 of the Implementing Regulations of the Patent Law, the panel will generally refuse to accept the amendment; and will examine the previous acceptable text, which may cause the reexamination petitioner to waste an opportunity to make the amendment. Therefore, in order to avoid the above problems, the reexamination petitioner is required to strictly follow the relevant provisions of the Patent Law and the Regulations for the Implementation of the Patent Law when making the amendment to the application documents during the reexamination procedure.

    In order to better understand the relevant provisions on the amendment of application documents during the reexamination procedure, the author conducts an analysis and a discussion by a specific example below, hoping to provide some reference and help for applicants and agents when amending the application documents during the reexamination procedure.

Example

    An originally filed claim: a composition for treating a cancer, comprising compound A.

    A claim rejected in the decision of rejection: a composition for treating a cancer, comprising compound A and an excipient. In the decision of rejection, the examiner believes that the claim does not involve an inventive step with respect to document 1.

    The first amendment way when filing a request for reexamination: a composition for treating a cancer, comprising compound A.

    The second amendment way when filing a request for reexamination: use of a composition comprising compound A and an excipient in the preparation of a medicament for treating a cancer.

    As for the first amendment way when filing a request for reexamination, it can be seen from the comparison between the amended claim and the claim rejected in the decision of rejection that, compared with the claim rejected in the decision of rejection, the reexamination petitioner deletes the technical feature "and an excipient" from the claim rejected in the decision of rejection. Since the technical solution of the claim amended according to the first way is clearly recorded in the originally filed claims, the first amendment way does not go beyond the scope specified in the original description and claims, and complies with the provision of Article 33 of the Patent Law. However, the protection scope of the claim amended according to the first way is greater than the protection scope of the claim rejected in the decision of rejection, that is, the claim amended according to the first way extends the scope of protection as compared with the claim rejected in the decision of rejection. This situation does not belong to the amendment way for removing the defects pointed out in the decision of rejection or by the panel. Therefore, the first amendment way does not comply with the provision of Rule 66 of the Implementing Regulations of the Patent Law.

    The claim rejected in the decision of rejection seeks to protect a composition for treating a cancer, which belongs to a product claim. The claim amended according to the second way belongs to a claim of pharmaceutical use of substance. In order to traverse the problem of inventiveness, the reexamination petitioner amends the product claim into the claim of pharmaceutical use of substance when filing a request for reexamination. Although the claim amended according to this way complies with the provision of Article 33 of the Patent Law, this amendment way obviously alters the type of the claim, and the substantive examination department does not express any substantive opinions on the pharmaceutical use of substance. Therefore, the reexamination petitioner is not allowed to amend the product claim into the claim of pharmaceutical use of substance when filing a request for reexamination. In view of this situation, applicants and agents should avoid amending the product claim into the claim of pharmaceutical use of substance when filing a request for reexamination or responding to Notification of Reexamination. Amending a product claim for treating a disease into a claim of pharmaceutical use of substance is a common amendment way at the substantive examination stage, but this amendment way is not allowed at the reexamination stage. This point needs special attention and is easily overlooked.

    In the above, the author analyzes the relevant provisions on amending the application documents during the reexamination procedure through an exemplary case for reference by applicants and agents. It is hoped that applicants and agents can get a glimpse from it, fully understand the relevant provisions on amending the application documents during the reexamination procedure, carefully consider the way to amend the application documents during the reexamination procedure, accurately grasp the principles of amending the application documents during the reexamination procedure, and avoid wasting amendment opportunities. In the actual operation process, the amendment to the application documents during the reexamination procedure may be complicated, and applicants and agents need to flexibly adjust the amendment strategy according to the specific situation, and carefully choose the way and content of amendment to ensure that the amended content complies with the relevant provisions of the Patent Law and the Regulations for the Implementation of the Patent Law.

    To sum up, during the reexamination procedure, the panel normally restricts its examination to the grounds and evidence on which the decision of rejection is based, and is not obliged to undertake a comprehensive examination on the patent application, therefore, there are certain restrictions on amending the application documents during the reexamination procedure, in addition to complying with the general provision that the scope specified in the original description and claims must not be gone beyond, the amendments shall be limited only to removing the defects pointed out in the decision of rejection or by the panel, the scope of protection cannot be extended as compared with the claim rejected in the decision of rejection, a claim amended cannot be derived from the technical solution that lacks a unity with the claims rejected in the decision of rejection, the type of a claim cannot be altered or the number of claims cannot be increased, and the amendments cannot be directed to the claims or the description that were not involved in the decision of rejection.

    This article is based on the author's personal experiences in practice and is meant to serve as a starting point for readers. It is hoped that it can provide some helpful insights to readers. If there are any inaccuracies or inappropriate points, please feel free to point them out.