After submitting a patent application in China, there are several opportunities to amend the application, provided these amendments comply with Article 33 of the Chinese Patent Law. This article stipulates that the applicant can amend their patent application documents, but amendments to invention and utility model patent application documents must not go beyond the scope of what was originally disclosed in the specification and claims, and amendments to design patent application documents must not exceed the scope of the original drawings or photographs. As time progresses from the submission of the application, the scope of allowable amendments becomes increasingly restrictive. The following are five key time points for amending application documents for your reference:
1. Voluntary Amendments After Filing
Invention Patent Applications:
- There are two opportunities for voluntary amendments:
- When filing the request for substantive examination according to Article 51 of the Implementing Regulations of the Patent Law.
- Within three months after receiving the notification of entering the substantive examination phase.
- PCT international applications entering the Chinese national phase also follow these provisions for voluntary amendments.
Utility Model and Design Patent Applications:
- Amendments can be submitted within two months from the filing date of the utility model or design patent application.
- PCT international applications entering the Chinese national phase for utility model patents can be voluntarily amended within two months from the entry date.
The scope of voluntary amendments at this stage is relatively broad. Within the limits of Article 33 of the Patent Law, applicants can amend both the claims and the specification. The amendments can expand or narrow the scope of protection requested, and the number of claims can be increased.
Special Situations: Sometimes applicants may submit multiple voluntary amendments or fail to submit amendments within the specified time. According to the “Patent Examination Guidelines,” Part II, Chapter 8, Section 4.1: “If the applicant makes multiple voluntary amendments within the specified period, the last submitted application document will be the one examined. Amendments submitted outside the specified period will generally not be accepted, and the modified documents will not be considered for examination. The examiner should inform the applicant in the examination notice that the amendment is not considered for examination and will use the previously accepted document for examination. If the examiner believes that the amended document eliminates defects in the original application and complies with Article 33 of the Patent Law, and examination based on this document will save procedural time, the amended document may be accepted for examination.”
Thus, multiple amendments within the voluntary amendment period are acceptable, but amendments submitted after this period are generally not accepted unless the examiner deems them beneficial for eliminating defects and saving procedural time.
2. Amendments in Response to Official Actions or Notifications
Applicants can amend their application documents when responding to:
- Correction Notices
- Examination Notices
- Examiner’s telephone notifications from the CNIPA
During the examination phase, the examiner raises issues, and the applicant makes targeted amendments to address these issues, ensuring the stability of the claim protection scope. Amendments at this stage are generally limited to addressing the examiner’s comments, and new claims are not allowed to be added.
3. Amendments During Reexamination
If a patent application is rejected, the applicant can request reexamination and amend the invention patent application when submitting the reexamination request or responding to the reexamination notice. Amendments at this stage must comply with Article 33 of the Patent Law, address the deficiencies noted in the rejection decision or pointed out by the reexamination board, and must not broaden the scope of protection relative to the rejected claims.
4. Amendments During the Grant Stage
Once the CNIPA issues the “Notice of Grant of Patent Right,” further amendments are generally not allowed. The notice clearly states that amendments submitted after the issuance of this notice will not be considered. However, if the notice includes amendments made by the examiner ex officio, usually formal amendments, the applicant can communicate with the examiner if they disagree with the amendments. The applicant can submit a statement of opinion along with the amended documents before the registration deadline. If the examiner agrees to the amendments, the CNIPA will issue a “Notice of Correction to the Notice of Grant of Patent Right,” indicating the modified content as the basis for the grant.
5. Amendments During the Invalidation Stage
During the invalidation stage, the restrictions on amending patent documents are more stringent. Patent owners of invention or utility model patents can amend their claims, but they must not broaden the original scope of protection. Amendments to the specification and drawings of invention or utility model patents, and to the pictures, photographs, and brief descriptions of design patents, are not allowed. Amendments to claims are generally limited to deletions, mergers, and deletions of technical solutions.
Although there are many opportunities to amend a patent application after submission, the high quality of the original application documents is far superior to any amendments made later. Emphasizing meticulous drafting of the patent application documents and making the best use of various amendment opportunities can maximize the scope of claim protection.