China: A New Change In China's Patent Examination

Last Updated: 5 September 2019
Article by James P. Chen

Recently, when responding to a First Office Action (hereinafter referred to as "OA1") by only submitting arguments in a bid to pursue the greatest possible scope of protection, as per the usual method from before, you will now be much more likely to receive a Decision of Rejection (hereinafter referred to as "rejection"). Unlike before, the examiner will not allow for another opportunity to modify the claims and limit the scope of protection.

This is the reality that applicants are facing. This year alone, the number of rejections we have received has increased significantly, especially the number of direct rejections issued after an OA1. From our statistics, the number of such rejections from the beginning of this year to date is more than a dozen times that of last year's total, and even more are expected in the future.

This obvious change has also been officially confirmed. Last month, at the examiner-attorney communication conference organized by the All-China Patent Attorneys Association, the leader of the China National Intellectual Property Administration (CNIPA) clearly announced that the number of cases submitted for patent examination and then rejected  after an OA1 would increase in the future.

The main reasons for these new changes lie in policy considerations of efficiency (shortening the patent examination cycle) and improving patent quality. The signaled intent is that low-value patents be examined quickly and strictly. Additional information indicates that the patent examination cycle will be reduced to 14-16 months, varying slightly depending on the specific technical field. Accordingly, the patent examination period limit on the examiner will become stricter. The period of being assigned to an application to issuing an OA will be two months, and the period of receiving the applicant's response (argument/modification) to issuing the next OA will also be two months. This is all designed to achieve the patent examination cycle objective of efficiency mentioned above. In this regard, it is understandable that the number of recent rejections, especially those directly rejected after an OA1, has increased significantly.

In fact, not only has the possibility of being directly rejected just by submitting an argument greatly increased, even if an amendment has been made, it does not necessarily ensure that it will not be directly rejected. For example, if during a patent examination process an examiner has commented that a dependent claim is not inventive, and said claim is then incorporated into an independent claim to resolve this problem, unlike previously, this amendment may not be recognized and may be directly rejected. Even after such amendments have actually resulted in new technical solutions that have not been previously examined, the examiner may still ignore them.

This may raise the question on whether it is still effective to take the initiative and communicate with the examiner to ask him not to directly reject the application for patent examination. From a practical point of view, the scenario where an examiner has given a promise over the phone, but did not follow through later has also been on the rise. After all, this year has seen Chinese examiners workload greatly increase, and they have to consider their own performance indicators.

It should be pointed out that the above changes do not mean that Chinese examiners will arbitrarily issue rejections without any basis or reason. The applicant still has a means of remedy by submitting a request for reexamination; in the reexamination stage, if the rejection is overturned, it will have a detrimental effect on the prior examiner's performance evaluation. Furthermore, returning to the point of "quality improvement", the examiner is required to make a very comprehensive and accurate search to find strong comparative references at the time of issuance of the OA1. For the applicant, when dealing with the OA1, it is necessary to analyze the examiner's opinions more rationally and comprehensively, so as to formulate a proper response plan (revision and/or reasonable argument). Instead of the alternative of trying to blindly obtain a large scope of protection by taking risks and arguing forcibly.

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.

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