Tsubame IP Law Firm

In the last Patent Seminar, we introduced filing an amendment and appeal against decision of rejection (preliminary examination) in Japan. Similar Policy in China will be introduced in this newsletter.

 

Unfortunately, there are cases even if amendments and opinions(arguments) were submitted, the applicant may receive a notice of Rejection.

 

Similar to that in Japan, there are 3 options after receiving a notification of the Decision of Rejection in China

(1) filing a re-examination request;

(2) filing a divisional application; and

(3) filing a re-examination request with amendments.

 

With this newsletter, we would like to explain the option (3) filing a re-examination request with amendments for those cases that applicants try to submit amendments against the Rejection.

 

Equivalent to Appeal after a Refusal in Japan, it is called a Request for Re-examination in China. The available period for submit a Request for Re-examination is three months from the date when the applicant receives a Notification of the Decision of Rejection.

 

As a general rule, the original examiner will review the documents filed for re-examination. This is called Preliminary Examination. Unlike that in Japan, a preliminary examination is required even if there is no amendment submitted with the re-examination request in China.

 

A re-examination request should be submitted with a statement(arguments), and if necessary, relevant evidence may be attached. Amendments to the original application document may also be submitted together.

 

After formal review of the submitted documents, the CNIPA Re-examination Committee transfers the request for re-examination to the original examiner for preliminary examination. The examiner shall give opinions of preliminary examination within one month from the date of receiving the case file transferred by the Re-examination Committee.

 

During the preliminary examination, by reviewing the amended document, new evidence and statement, the examiner judges whether the re-examination request is legal, whether the amendment would overcome the rejection reason in the previous document. Finally, the examiner makes a decision of revoking the decision of rejection or remaining the refusal.

 

After the preliminary examination, if the examiner makes an opinion to agree to revoke the decision of rejection, the CNIPA re-examination committee shall notify the applicant and the application shall enter into another substantive examination stage (re-examination).

 

If the examiner's decision is to remain the decision of rejection, a collegial review (written review or / and oral review) conducted by the Re-examination Committee based on the reasons and evidences for examiner's decision of remaining the refusal is needed. The applicant may submit a written answer to such a notification of remaining the decision of rejection within one month after receiving the notification.

 

Not only to obtain another examination stage after receiving a notification of decision of rejection, moreover, to increase the possibility of obtaining a patent by submitting amendment, with the "Re-examination Request", which the measure that we believe should be actively used.

 

APA has been actively utilizing the above-mentioned means even for cases that have been rejected, and has issued many patent registration cases. In addition, procedures for appealing rejections are also provided at a low cost.

 

Further, we assist you with the filing of your patents, utility models and trademarks as well as with rights management in Japan, China and Korea. Please feel free to contact us.