Re-examination Procedure

Introduction

The Patent Office may reject any application, which does not comply with the Patent Law after the applicant has filed a response to the first office action. Usually, however, the Patent Office will issue several office actions before issuing a Decision of Rejection.

If the applicant wants to continue with an application after receiving a Decision of Rejection, they must file a request for re-examination with the Patent Re-examination Board (PRB) within 3 months from receipt of the Decision of Rejection. This deadline cannot be extended. If no request for re-examination is filed then the Decision of Rejection becomes effective and the application dies.

Requirements for filing a request for re-examination

The request for re-examination should be accompanied with detailed observations and, if necessary, evidence to overcome the rejection. The applicant may also file claim amendments together with the request for re-examination. Any amendments must be supported by the original disclosure and be in direct response to the issues raised in the Decision of Rejection.

Procedure

The re-examination procedure is as follows:-

1. Formal examination by the PRB.

2. Application sent back to examining department for preliminary review

3. Substantive examination by the PRB

4. Re-examination reports

5. Decision

1. Formal examination by the PRB

This is to check that the request for re-examination meets the formal requirements. If there are any formal defects a time limit is set for rectifying the defects.

2. Application sent back to examining department for preliminary review

If the examining department is persuaded by the new arguments and evidence, or considers that the new claim amendments overcome the rejection, the Decision of Rejection is withdrawn.

3. Substantive examination by the PRB

If the examining department maintains its original decision then the request for re-examination is considered substantively by the PRB. The PRB forms a three-person panel, or exceptionally a five-person panel, to re-examine the case and is independent of the examining department.

4. Re-examination reports

If the PRB is immediately persuaded by the request for re-examination then it revokes the Decision of Rejection.

Otherwise the PRB issues at least one re-examination report explaining the reasons why the application does not comply with the Patent Law and setting an extendable 1-month deadline for reply. The applicant must submit observations, evidence and/or amendments in response to this re-examination report. Any amendments must be in direct response to the issues raised in the re-examination report.

5. Decision

The PRB issues a written decision (see below for more details).

Decision and Appeal

The PRB will issue a written decision. The written decision will either overturn the examining department’s decision of rejection (because it was unjustified or has been overcome by the applicant’s amendments) or reject the application (and any amendments made by the applicant).

If the decision of rejection is overturned, then the application is sent back to the examining department, which has to follow the decision of the PRB. Normal examination is then continued and if there are no further outstanding issues, the application is granted.

If the PRB decide to reject the application, then the applicant may file an appeal to the people’s court within 3 months from notice of the PRB’s decision.