China: The Ins And Outs Of Reconsideration

Last Updated: 22 September 2017
Article by Xiaojun Guo
Most Read Contributor in China, February 2019

In patent prosecution, reexamination or invalidation proceedings, the State Intellectual Property Office of China (SIPO) or the Patent Reexamination Board (PRB) undertakes examinations and informs the applicant, petitioner or patentee of its decisions (in essence "specific administrative acts") by various notifications in different phases.

Against those decisions, unless otherwise specified by the laws or regulations, the applicant may either initiate legal proceedings before the Beijing Intellectual Property Court or file a request for administrative reconsideration with SIPO.

Some decisions, such as rejection decisions of SIPO, reexamination decisions and invalidation decisions of the PRB, are not subject to administrative reconsideration. If an applicant is not satisfied with a rejection decision, it can only file a request for reexamination with the PRB. If an applicant is not satisfied with a reexamination decision or a party is not satisfied with an invalidation decision, it can only appeal against the decision to the court.

Although various decisions in relation to patent applications or patents can be subject to administrative reconsideration, such proceedings were not prevalent in the past. Only in recent years has there been a rapid growth of the cases. In 2016, SIPO received 165 administration reconsideration cases, an increase of 129% over 2015.

Most of the administrative reconsideration cases concern procedural matters, although they may involve substantive matters, such as rejection of a priority claim because the later and the prior applications relate to different subject matter.

Case studies

In an administrative reconsideration case, two consecutive numerals of the priority number were wrongly transposed. SIPO rejected the priory claim and the decision was affirmed in the administrative reconsideration proceedings.

Another administrative reconsideration case involved the priority claim of a Chinese design application to a prior US design application, which was denied because part of the broken lines in the prior application were amended into solid lines to show an entire product. The decision of the design division was affirmed during the administrative reconsideration proceedings and SIPO held that the subject matter in the two applications was different.

In another administrative reconsideration case, the applicant requested SIPO to cancel the previous decision of an examination division that its divisional application was deemed not to have been filed. The applicant said the opinions of the examiner on the unity of the claims were raised in the rejection decision and did constitute effective opinions for filing a divisional application. SIPO refused the request and made a decision of administrative reconsideration affirming its previous decision.

The administrative reconsideration proceedings are conducted within SIPO, but by the division of legal affairs—a separate division from the examination divisions. In spite of this, the examiners handling reconsideration matters and the examiners in charge of examinations are normally trained in the same system, they share information within SIPO, and some examiners of the division of legal affairs are from the PRB or the examination divisions.

It is not surprising therefore that the examiners of the division of legal affairs are inclined to sustain decisions made by the examination divisions or the PRB in administrative reconsideration proceedings.

The time to file

When should someone consider filing a request for administrative reconsideration instead of initiating legal proceedings right away?

A decision issued by examination divisions is normally made by one examiner. In administrative reconsideration proceedings, however, the applicant can normally rely on a panel of three experienced examiners and can even ask for a face-to-face meeting with them. The applicant may sometimes get constructive input from those experienced examiners, although the examiners are obliged to follow the provisions of the Patent Examination Guidelines strictly.

A request for administrative reconsideration shall be filed within 60 days of a decision of the examination divisions; this time limit is the same as that for initiating legal proceedings. However, the administrative reconsideration proceedings are much more flexible and easier than legal proceedings. For example, the power of attorney doesn't need to be notarised and legalised, and the evidence doesn't need to be prepared as strictly as in legal proceedings.

The administrative reconsideration proceedings are free of official fees. SIPO shall normally make a decision of administrative reconsideration within 60 days. Upon receiving the decision, the applicant may initiate legal proceedings within 15 days. Counting from the previous decision of the examination divisions, it offers the applicant an additional 75 days to get ready for a possible administrative litigation.

Alternatively, the applicant may appeal against a decision of administrative reconsideration with the State Council to obtain a final decision. However, this hardly occurs in practice. (Published on WIPR )

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Sign Up
Gain free access to lawyers expertise from more than 250 countries.
Email Address
Company Name
Confirm Password
Mondaq Newsalert
Select Topics
Select Regions
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions