Abstract:

    Patent allowance text is a legal text that records a technical solution to be protected. An invention patent application usually goes through a series of procedures such as drafting, submission, preliminary examination and substantive examination before being allowed. However, even if the invention patent application has been allowed, there may be minor flaws due to some omissions or the patentee wishes to make formal amendments to allow the protection scope of the claims to be clearer. Then, in China, could the allowed patent document still be initiatively amended? This article sets forth it according to the relevant provisions of the Chinese Patent Law, the Implementing Regulations of the Patent Law and the examination practice experience, in order to provide more understanding on this aspect.

    Keywords: patent allowance, amendment, Chinese patent law

    An invention patent application usually needs to go through a series of procedures such as drafting, submission, preliminary examination, and substantive examination before it is granted, especially the procedure of substantive examination. However, in actual practice, even if the invention patent application has obtained a patent allowance, it may have minor flaws due to some omissions or the patentee wishes to make formal amendments to make the scope of protection of the claims clearer.

    There are relief procedures for initiative amendments after allowance in the United States and Europe. Among them, in the United States, the patentee can submit initiative amendments at any time after the patent application is granted, and can initiatively amend the specification, drawings and the claims. The new subject matter cannot be added when making initiative amendments. Also, amendments to broaden the scope of claims can also be filed within two years from the date of grant of the original patent[i]. In Europe, the patentee can initiatively amend the granted patent, but cannot broaden the scope of protection of the claims[ii]. However, in China, the post-allowance remedy procedure is relatively strict. According to the relevant provisions of the Chinese Patent Law, if the patentee discovers obvious errors in the allowed text after it is announced, the patentee can correct obvious errors in the original allowed text in the course of the invalidation procedure, or the patentee can also actively submit a "request for correction of errors" to the State Intellectual Property Office of China (hereinafter referred to as "CNIPA") after the announcement of the allowed text, and submit the corresponding revised documents and the reasons (without official fees). The relevant legal provisions of the Chinese Patent Law, Implementation Rules and Examination Guidelines are listed below.

    Rule 69 of the Implementing Regulations of the Patent Law (2010) rules: “In the course of the examination of the request for invalidation, the patentee for the patent for invention or utility model concerned may amend its claims, but may not broad the scope of the patent protection. The patentee for the patent for invention or utility model may not amend its description and drawings, and the patentee for the patent for invention or utility model not amend its drawings, photographs and brief explanation of the design".

    The "Patent Examination Guidelines" (revised in 2017), Part IV, Chapter 3 rules: "The specific methods for amending claims in invalidation procedures are generally limited to the deletion of claims, the deletion of technical solutions, further definitions of claims, and obvious errors rectification ".

    Rule 58 of the Implementing Regulations of the Patent Law (2010) rules: “The patent administration department under the State Council shall correct promptly mistakes in patent announcements and patent pamphlets issued by it once they are discovered, and the corrections shall be announced”.

    The above are the relevant provisions of the Chinese Patent Law, Implementation Regulations and Examination Guidelines on the relief procedure for amendments after the invention patent application is allowed.

    In addition, the patentee may also consider amending the obvious errors in the allowed text after the notification to be granted is issued and before the allowed text is announced, although there are no relevant provisions in the Chinese Patent Law, and such amendments may be also accepted by the examiner (of course it is very likely that the examiner will not accept them). Compared to the procedure for amending the patent document after the allowed text is announced, the procedure at this stage is relatively simpler and the time period is relatively shorter.

    Specifically, at this stage, the patentee can submit an "initiative correction" (or "statement of opinion") to CNIPA or a "request for correcting errors" (or "statement of opinion") to CNIPA. Under normal circumstances, the examiner will accept formal amendments and obvious error corrections; the following is specific cases of initiative amendments which have been accepted.

    Case 1

    The technical features related to initiative amendments in dependent claims:

    wherein the sampling transistor is configured to turn on (t11-t12, t15-t16) and off (t12-t15, t16-) multiple times in a non-luminous period (t10-t18), the source node of the drive transistor is in a non-floating state in a period (t11-t12) from a first time the sampling transistor turns on (t11) to off (t12) among the multiple times, and the source node of the drive transistor is in a floating state until the sampling transistor turns on (t15) after the period (t11-t12).

    Since only the independent claims in the allowed text contain parentheses and the reference signs in the parentheses, in order to make all claims clear as a whole, the patentee wishes to delete the parentheses and the reference signs in the parentheses from the independent claims. To this end, the patentee submitted the "initiative amendments" request and revised text, in which the parentheses and the reference signs in the parentheses were deleted. In the end, the examiner accepted such revised text, and issued the "Allowance Correction Notification" on the basis of this revised text.

    Case 2:

    The technical features related to initiative amendments in dependent claim:

    providing a plurality of frequencies to a double data rate synchronous dynamic random access memory physical layer circuit, so that the DDR SDRAM physical layer circuit can generate the first signal and the second signal according to the plurality of frequencies, wherein the first frequency and the second frequency are used to access a storage circuit.

    Since "the DDR SDRAM physical layer circuit" in the independent claims should be "the double data rate synchronous dynamic random access memory physical layer circuit" as a whole, rather than "the DDR SDRAM" being separated from " the physical layer circuit" so that "the DDR SDRAM" lacks a referential basis. The patentee submitted "initiative amendments" request and revised text, in which the expression "the DDR SDRAM physical layer circuit" was amended to read as "the double data rate synchronous dynamic random access memory physical layer circuit". In addition, the technical feature "the first frequency and the second frequency" should essentially be "the first signal and the second signal", and also was corrected in the revised text. In the end, the examiner accepted the revised text, and issued the "Allowance Correction Notification" on the basis of the revised text.

    In general, according to the relevant provisions of the Chinese Patent Law on the post-allowance relief system, after the allowed text is announced, the patentee can correct the obvious errors in the original allowed text by means of the invalidation procedure, or actively submit "Request for Correction of Errors" and the corresponding amendment documents to CNIPA and states the reasons for the amendment, in which there is no additional official fee.

    In addition, the patentee can also verify the allowed text after receiving the notification to be granted and try to correct the obvious errors before the allowed text is announced. This amendment procedure is simpler, the time period is relatively shorter, and the amendments may be accepted by the examiner. It is recommended to communicate with the deacon examiner by phone before submitting the relevant amendments in order to persuade the examiner to accept the relevant amendments.

    The above is just a little experience in practical operation. The cases are different, and not all cases can be modified successfully. I hope to provide a reference for the colleagues in the industry. If there is any impropriety, please feel free to point out and provide guide.

[1] 35 U.S.C. 251

[1] Article 123, European Patent Convention