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Amendments Involved in One Application
date: 2017-12-18Hongfang Zeng

Patent applications often require several amendments before granting; as such, the content of a granted application is usually quite different from the content of the original application.  There are many different types of amendments available in different stages of the application process and this can often leave applicants confused.  To help clarify this process it’s easiest to split these amendments into four major types:

 

1.      Active or passive. Active amendments are made by the applicants without the examiner’s feedback, and the passive amendments are made on the advice of the examiner.

2.      Amendments may be made to the claims only or to the entire application.

3.      The amendment form may be restricted or non-restricted, where it is restricted an applicant may merely incorporate or cancel claims.

4.      An Examiner may have powers to amend an application, or no powers to amend.  Where they have this power, they may amend obvious errors in the application, but not defects which may change the scope of protection.

 

The amendment options available are different at every stage of the application process.

 (1) For a patent application made in China:

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The substantive examination stage:

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NB: the active amendments can only be made when requesting a substantive examination, or within 3 months of receiving a notice of patent application for invention entering the substantive examination stage.

 

Reexamination stage:

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Invalidation stage

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(2) For a PCT application based upon a domestic application:

International Phase:

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NB: in this phase, we generally recommend clients not to make amendments where the priority has expired (so after a year of the initial filing), or where an application has been restored.

Beside active amendments made when filing the PCT application, active amendments are allowed within 2 months of receiving the International Search Report (ISR) and the written opinion of the International Searching Authority (ISA).  In accordance with Article 19 of the PCT Treaty the amendments available are limited to the claims and may only be made once.

Passive amendments are allowed in the international preliminary examination procedure; they may be made to the entire application and are allowed to be made multiple times.

National Phase (Only when filling the application document)

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(3) Applications Based Upon the Paris Convention (Only when filling the application document)

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It should be noted that in all cases where an application claims the priority of the original application, no amendments may exceed the scope of the original application document; as even if the examiner accepts the amendment during the examination it would cause problems in the follow-up invalidation and/or litigation procedure.

Although most of these amendments will improve or better protect the application, some amendments may negatively affect the application if used inappropriately.  So, how can we judge which amendments are appropriate in any given case?  Each type of amendment has its own benefits and disadvantages; every case is different, so you should seek the advice of a good patent attorney when determining which options are most suitable for your application.

Please note that the above comments belong to the author, and do not represent the views of any other person or organization.

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