A Review of the Patent Re-examination Procedure Related to Amendment Defects Exceeding the Scope of the Original Disclosure

2007/6/1By Wen Liping,[Patent]

【Abstract】

In the re-examination procedure, an amendment defect exceeding the original scope of disclosure in the text for examination usually includes the following circumstances: 1. the text upon which the rejection decision is made has amendment defects exceeding the original scope of disclosure; 2. the amended text provided by the applicant in the reexamination procedure goes beyond the original scope. This article analyzes two cases under the two above-mentioned circumstances by combining the principles of hearing, requesting and procedural economy, and then gives a simple analysis for such kinds of problems. 

Ⅰ. Foreword

No matter it is the re-examination of the patent application or the examination of a patent right invalidation case, the text is the basis for examination. In the collegiate examination procedure, the determination of the text shall be of primary importance. How shall the collegiate panel examine a re-examination case when the text for examination has amendment defects surpassing the original scope? I believe that there are two common circumstances. The first is where the text upon which the rejection decision is based cannot be accepted. In this circumstance, is it appropriate to directly withdraw the rejection decision when the collegiate panel points it out? The second circumstance involves how to carry out the examination when the applicant submits the amended text, which the collegiate panel determines as exceeding the original scope during the re-examination procedure, which is not permissible.

In fact, it relates to the problem of how to comprehend the scope of a collegiate examination in the re-examination procedure as well as the problem of how to deal with the relationship of the principles of hearing, requesting and procedural economy.

Ⅱ. Analyzing of the issues

The following two cases illustrate two circumstances I found in my examination work. The reason why the amended text exceeds the original scope is not the key point of this article. Rather, the critical point is the examination procedure related to amendments that exceed the original scope. Therefore, there is no detailed content as to why the amended text goes beyond the original scope. What is noted is the definite conclusion that the amended text exceeds the original scope. It shall be further noted that the following two cases have no prospect to be granted patent rights from the viewpoint of the collegiate panel.

【Case A】
Application A is rejected during the substantive examination procedure due to the lack of inventiveness. However, the text upon which the rejection decision was made has amendment defects beyond the scope of the original disclosure. Under this circumstance, in the re-examination procedure, shall the examiner use the defective text for examination as the reason for directly withdrawing the rejection decision without considering the inventiveness issue or shall the examiner issue a re-examination notice to continue the examination by considering the inventiveness issue? Furthermore, upon which text shall the inventiveness comments be based?

【Case B】
Application B is rejected in the substantive examination process due to lack of inventiveness. Further the amended text provided in the reexamination request submission goes beyond the original scope that is recorded in the original application file. Under this circumstance, how will the collegiate panel proceed with the examination? Is it necessary for the panel to point out the problem of the amended text exceeding the original scope? Also, is it appropriate to comment on the inventiveness at the same time? Furthermore, which text shall be the one upon which the inventiveness finding will be based?

In the re-examination procedure, shall the collegiate panel elaborate on the discovered defects in the amended text surpassing the original scope? Or shall the panel issue the re-examination notice by disregarding the defects until making the re-examination decision of maintaining the rejection decision? 

Ⅲ. Relevant provisions and analysis

Article 33 of the Patent Law provides: "An applicant may amend his application document for a patent, but the amendment to the application for a patent for invention or utility model may not go beyond the scope of the original disclosure contained in the initial description and claims, and the amendment to the application for a patent for design may not go beyond the scope of the original disclosure as shown in the initial drawings or photographs."

It can be seen from this Article that its purpose lies in the following aspects:
Firstly, China's patent system adopts the First-to-File Rule. In order to present the First-to-File Rule, it regulates that the amendment to the application for a patent invention or utility model may not go beyond the scope of the original disclosure contained in the initial description and claims. That is to say, it is not permissible to introduce a new technical solution which is not recorded in the initial description or claims after the filing date. Secondly, it is difficult to avoid defects such as inaccurate wording or expressions while composing an application. Additionally, it might affect the accuracy of the protection scope for the patent right and the public's utilization of the patented technical information if this kind of defect is not corrected, so that the application cannot be granted a patent right for failing to comply with the relevant provisions of the Patent Law and its Implementing Regulations


n the examination and approval procedure for patent applications, the applicant can amend the application file under certain conditions and within certain limits. Discretionary amendment is now allowed. This is the initial legislative purpose of Article 33 of the Patent Law. It can be understood as we should not turn a blind eye to an application file with the amendment defect of exceeding the scope of the original disclosure. As described above, no matter it is a re-examination or examination of an invalidation case, determination of the proper text for examination is very important. If the determination of the text for examination is inappropriate, the examination decision will be nonsensical, even if the decision is written perfectly and the argument is very thorough. In this case, the determination of the text for examination becomes a vital element in the re-examination procedure, so that the collegiate panel must point out in the application file that the amendment is defective for exceeding the original scope. However, what is the basis? Is it within the scope of the collegiate examination to examine the application by introducing Article 33 of the Patent Law? Or does the collegiate panel introduce Article 33 according to its authority? In particular, how is one to comprehend the relevant regulations after the Guidelines for Examination was revised? 

The 2006 Guidelines for Examination provides a more detailed and specific regulation of the examination scope by a collegiate panel: "in the reexamination procedure, the collegiate panel normally examines only the grounds and evidence upon which the decision of rejection is based.

In addition to the grounds and evidence upon which the decision of rejection is based, where the panel finds the text of the application being examined has one of the following defects, it may examine the grounds and evidence related to the defect, and if the panel confirms the defect after examination, it shall make a decision upholding the rejection decision by basing its decision on the said grounds and evidence:

(1) defects which are sufficient for rejecting the application on the basis of other grounds and evidence which the applicant has been notified of before the rejection; or

(2) defects which are not indicated in the decision of rejection but are obvious and substantive or of the same nature as those indicated in the rejection decision.
During the collegial examination, the panel may introduce the common knowledge of the skilled art into the examination, or supplement the evidence by providing common knowledge such as that contained in a technical dictionary, technical manual, or textbook.

It is obvious that the 2006 Guidelines for Examination provides a specific regulation for the scope of collegiate examination in the re-examination procedure, which is the grounds and evidence on which a rejection decision is based. The Guidelines regulate the scope that the collegiate panel can do examination according to its authority, which are the grounds and evidence which the applicant has been notified of before rejection but has not been pointed out in the rejection decision, defects which are not indicated in the decision of rejection but are obvious and substantive or of the same nature with those indicated in the decision of rejection, and the common knowledge of the skilled art introduced according to the authority by the collegiate panel and corresponding evidence.

The aim of making the aforesaid regulations in the Guidelines for Examination is to enhance the operability and improve the consistency in law enforcement. The initial intention for establishing the Guidelines was very good, but discrepancies appear in the examination practice concerning how to comprehend the relevant regulations. For instance, is the collegiate panel's examining whether the amended text exceeds the scope of the original disclosure within the scope of the collegiate examination or the scope of examination according to its authority? In addition, how can we comprehend the effect of Article 33 of the Patent Law in the re-examination procedure?

Ⅳ. Case Analysis

The circumstances of the above two cases both relate to the problem of amendments exceeding the original scope. In Case A, there is the problem of an amendment exceeding the substantive examination procedure. The examiner did not point out this problem but made the rejection decision for the lack of inventiveness based on the text, which was amended beyond the original scope. In Case B, there is no problem of any amendment exceeding the substantive examination procedure. In order to overcome the defects pointed out in the rejection decision, the application file was amended in the re-examination procedure, which resulted in the problem of the amendment beyond the original scope. The common ground of the two cases is that they have no granting prospect, which is also the precondition for this article's discussion. These two cases aroused considerations in the collegiate examination and while conflicting opinions appeared in the collegiate panel. 

In the examination of the two cases, there existed the same opinion that the collegiate panel could ignore the problem of an amendment exceeding the original scope, issue an opinion based on inventiveness and make a re-examination decision maintaining the rejection decision as there was no granting prospect and the Guidelines for Examination cancelled a series of regulations related to the order of examination. However, the opposite point of view believed that the determination of the text for examination was the precondition and basis for the examination in the re-examination procedure. In this case, no matter what the result of the examination is, the examination of the amended text cannot be affected. That is to say, the examination for the text amended beyond the original scope cannot be connected with the examination prospect. In fact, the difference between the two views is related to the question of how to comprehend the principles of hearing, requesting and procedural economy in the re-examination procedure. Answering this question will define the function of the examination process complying with Article 33 of the Patent Law in the re-examination procedure. In addition, I want to raise a further question which relates to the regulation cited from the Guidelines for Examination; that is, whether the examination of the amended text in the re-examination procedure is within the scope of collegiate examination regulated by the Guidelines for Examination, or is it within the scope of the collegiate panel's authority to examine?

With respect to the above two cases, I agree with the second opinion. That is, in spite of the examination prospects, the problem relating to the amended text exceeding the original scope must be resolved at the beginning of the collegiate examination. In other words, examining Article 33 of the Patent Law in the re-examination procedure is within the scope of the collegiate examination, which has very important effect on the collegiate examination. Another method can be adopted to deal with this circumstance according to this point of view. For instance, when the collegiate panel believes that an application has no granting prospect, the panel can provide comments on its inventiveness and indicate that the amended text goes beyond the original scope. Given that comments on inventiveness usually return to the former text for examination, whether it is entirely economical deserves to be discussed. Because when the applicants respond to an office action, instead of returning to the former text for examination, most of them usually file a new amended text. In this case, further discussion is necessary for its operation.

Another issue I want to discuss in this article is how to handle the relationship of the principles of hearing, requesting and procedural economy. While Case A mainly relates to the handling of the relationship between the hearing principle and the procedural economy principle, Case B relates to the comprehension and handling of the relationship between the request principle and the procedural economy principle.

In Case A, will it definitely result in the withdrawal of the rejection decision while there might be circumstances where the hearing principle is not satisfied in the substantive examination? It is regulated in Chapter 2, Part 4 of the Guidelines for Examination that this is the one circumstance where the rejection decision in the substantive examination shall be withdrawn when the examination violates the legal proceedings. However, does it mean, "the examination violating the legal proceedings will result in the withdrawal of the rejection decision"? I hold an opposite opinion. Examinations violating the legal proceedings might have disadvantageous effects on the substantive rights of the party and do harm to fair and proper examinations, but it may involve a small defect which will not cause any substantial impact to the substantive rights of the party.

In the examination practice, the common circumstance is that although a hearing is sometimes not carried out sufficiently in the substantive examination procedure, it will not be the reason for the re-examination petitioner to grant the re-examination request. Case A discussed in this Article belongs in such a kind of situation. What the petitioner is concerned with is the problem of inventiveness being resolved. Therefore, it is a fact that a defect in the examination violating the legal proceedings (the hearing principle) does exist in the substantive procedure, but to avoid the examination and approval procedure being extended irrationally (the principle of procedural economy), the examination should be continued by issuing a "re-examination notification" by first indicating the problem of an amendment exceeding the original scope, and then subsequently commenting on its inventiveness.

Meantime, if we withdraw the rejection decision by the reason that the examination is not in conformity with the hearing principle, it violates the request and procedural economy principles. Since the examiner will constantly persist in making the rejection decision after the procedural defect is overcome, if the rejection decision is withdrawn for this reason, then the petitioner will make the same re-examination request. The result will be that the procedures will be extended irrationally, which will make the parties waste their time.

Case B relates to the handling of the request principle and the principle of procedural economy. I suggest as in the previous paragraphs that the problem of an amended text beyond the original scope first must be pointed out, which indicates that the amended text cannot be accepted. With respect to whether comments on the inventiveness shall be given at the same time, I think that an examiner can directly air his opinion on the inventiveness, point out the amendment defects of exceeding the original scope, and then continue the examination according to the petitioner's response. If the petitioner agrees with the collegiate panel, and abandons the amended text without providing a new amended text, the panel can examine the inventiveness by going back to the original application file.

If the petitioner submits the amended text again without deleting the technical features related to the amendment beyond the original scope, it means that the petitioner does not agree with or recognize the collegiate panel's finding of an amended text defect, but insists on the original amendment opinions. In this case, it is not appropriate for the collegiate panel by itself to examine the inventiveness by going back to the original text. In accordance with the request principle, it is only appropriate for the collegiate panel, upon re-examination, to maintain the rejection decision based on the said application text alleged by the petitioner for not being in conformity with the provisions of Article 33 of the Patent Law and Article 62 of the Implementing Regulations. 

Ⅴ. Conclusion

In the re-examination procedure, an examination concerning the defects in the amended text beyond the original scope is a vital factor. Prior to carrying on the examination for other substantive defects, it shall first take examination of whether the amended text is in conformity with Article 33 of the Patent Law, which is the precondition and basis for examination. It needs further consideration as to whether the examination of the said defects belongs in the "obvious substantive defects" regulated by the Guidelines for Examination or is within the scope of the collegiate panel's examining authority according to its authority. There is no problem with including the examination into the scope of the collegiate examination since the text for examination is the precondition and the basis for all examinations.
Furthermore, another issue I want to discuss is how the collegiate panel continues its examination while pointing out the amendment defects beyond the original scope. There are two usual methods. One method is to just indicate that the amended text does not comply with Article 33 of the Patent Law and ask the re-examination petitioner to submit a legal amended text without expressing an examination opinion on its inventiveness, which is a correct and very clear, concise decision. Another method is to present the examination opinion on the substantive inventiveness while pointing out the defects according to Article 33 of the Patent Law.

The initial intention of the second method is for procedural economy. However, there is a problem if the collegiate panel shall make its best efforts to ensure that the text upon which the examination is based on the possible or intended amendment, otherwise the panel will work fruitlessly. In other words, the collegiate panel will work a lot to evaluate the inventiveness of the claims, but there is no relationship between the amended text and the text being considered for inventiveness, which should be avoided in examination if possible. Certainly, accumulation of examination practice is a precondition for further analysis concerning this problem as well as the basis for a better handling of such kinds of problems. I believe that we will attain better solutions for these kinds of problems if we provide better service to the parties through our continuous accumulation of examination practice.

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