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Amendment Opportunities and Methods for Multiple Dependency as a Chinese-specific Patent Issue

18

JUN

2021

In the current world, science and technology is the primary productive force and innovation is the primary driving force for development. In order to promote technological innovation, countries around the world have enacted patent laws in succession. From the perspective of the legislative purpose of the patent laws, all countries in the world have the same purpose of enacting patent laws. With the continuous development of globalization, the international cooperation deepens increasingly, and international patent procedures such as the "Paris Convention for the Protection of Industrial Property" and the Patent Cooperation Treaty (PCT) have been established correspondingly. However, there are still subtle differences in many provisions between the patent laws of various countries according to actual conditions of each country. In many cases, it is exactly these subtle differences that affect whether a patent is allowed or whether an appropriate protection scope is obtained. Therefore, it is very necessary for foreign applicants to clearly understand these Chinese-specific patent practices. As the topic of China-specific provisions is too broad, the author in this article only discusses relevant provisions stipulated in Article 22.2 of the Implementing Regulations of the Chinese Patent Law (IRCPL) and relevant practices for the reference of foreign applicants (including, of course, Chinese and foreign patent attorneys handling foreign-domestic cases).

Article 22.2 IRCPL stipulates "Any multiple dependent claim, which refers to two or more claims, shall refer to the preceding claims in the alternative only, and shall not serve as a basis for any other multiple dependent claims". Generally the case that "any multiple dependent claim, which refers to two or more claims, serves as a basis for any other multiple dependent claims" is called as "a multiple dependent claim refers to another multiple dependent claim" or as "multiple dependency" for short. In particular, it should be noted that a parallel independent refers to a multiple dependent claim, it does not belong to the case of multiple dependency. This is often confused by foreign applicants. In the actual process of handling cases, the clients often make amendments such that the independent claim also only refers to the first claim of the previous set of claims. Specific examples will be given in the part of Amendment methods.

As stated above, multiple dependency in claims is not allowed in China. However, multiple dependency is allowed in most of other counties and regional organizations (e.g., the EPO, German, the USA and the like). Therefore, the foreign applications that enter the Chinese national phase through the PCT or Paris Convention (which can be referred to as "foreign-domestic applications") basically have claims involving multiple dependency. When and how to amend these claims involving multiple dependency often troubles foreign applicants. The author will explain in detail below.

I. Amendment opportunities

1) Making amendments in the application stage

The application documents are amended directly when an application enters China through the Paris Convention.

2) Making amendments in the time limit for voluntary amendments

Amendments are made according to Article 28/41 PCT when an application enters the Chinese national phase through the PCT. For patent applications that enter the Chinese national phase through the Paris Convention or PCT, an amendment may be made to a patent application for invention when a request for examination as to substance is made or within the time limit of three months after the receipt of the notification on the entry into examination as to substance of the patent application for invention; and a voluntary amendment may be made to a patent application for utility model within two months from the date of filing.

3) Making amendments upon receipt of a notification from the Examiner (including OA, Notification to Make Rectification and telephone notification)

If the defect of multiple dependency is pointed out in the examiner's notification, an amendment should be made in response. Certainly, even if the defect of multiple dependency is not pointed out in the examiner's notification, the applicant may make a voluntary amendment according to the principle of saving examination procedures.

The advantage of item 1) making amendments in the application stage is that the patent right can be granted as soon as possible when there are no other defects in the patent application, and especially for a utility model application, a patent right may be granted directly. One disadvantage is that if the claims are amended by the method of deleting a technical solution (e.g., the following amendment methods1)-3)), the situation that the amendment goes beyond the scope of disclosure contained in the initial application documents may arise in the subsequent procedures (for example, in the case that a certain technical solution which is not clearly disclosed in the description is deleted, if it is intended to protect the technical solution through amendment in the subsequent procedures, it may involve the issue that the amendment goes beyond the scope of disclosure contained in the initial application documents). The other disadvantage is that if the claim is amended by the method of splitting a multiple dependent claim (e.g., the following amendment method 4)), the number of claims will be increased. Payment of an additional examination fee of claims is required when the number of claims exceeds 10 due to the amendment.

The advantages of making amendments in the times provided in items 2) and 3) include that the technical solution can be retained to the maximum extent according to the comments of the examiner or the examination results of the family applications in other countries, the issue that the amendment goes beyond the scope of disclosure contained in the initial application documents will not arise, no additional fees of claims will occur, and even in some cases, the examiner may not necessarily point out the defect of multiple dependency (of course, this rarely happens) because multiple dependency is not included in the provisions of patent invalidation. The disadvantage is that the defect of multiple dependency may be pointed out by the examiner in the notification of OA, and sometime, granting speed of the application may be affected only by the defect of multiple dependency, especially for patent applications for utility model.

II. Amendment methods

Specific examples are provided below to illustrate the relevant amendment methods that can be adopted for the defect of multiple dependency.

1. An apparatus, characterized in a technical feature A.

2. The apparatus according to claim 1, characterized in a technical feature B.

3. The apparatus according to claim 1 or 2, characterized in a technical feature C.

4. The apparatus according to any one of claims 1-3, characterized in a technical feature D.

5. The apparatus according to any one of claims 1-4, characterized in a technical feature E.

6. A device including the apparatus according to any one of claims 1-5.

In the above example, claims 4-5 involve the defect of multiple dependency.

It is stressed first that foreign applicants, when encountering the examination comments of multiple dependency, often amends claim 6 to "6. A device including the apparatus according to claim 1". Such amendment is unnecessary. Therefore, it is necessary to clearly inform the applicant that independent claim 6 can remain not amended since the number of the amended solutions will be reduced significantly, and it is advantageous for the applicant not to make amendment.

Method 1) Amending the multiple dependent claim involving the defect of multiple dependency

For example, the claims are amended to:

4. The apparatus according to claim 1, characterized in a technical feature D.

5. The apparatus according to claim 1, characterized in a technical feature E.

Or, the claims are amended to:

4. The apparatus according to claim 2, characterized in a technical feature D.

5. The apparatus according to claim 2, characterized in a technical feature E.

Or,

4. The apparatus according to claim 3, characterized in a technical feature D.

5. The apparatus according to claim 3, characterized in a technical feature E.

Or,

4. The apparatus according to claim 3, characterized in a technical feature D.

5. The apparatus according to claim 4, characterized in a technical feature E.

The principle of this amendment method is to reduce the dependent claims as referred to, thereby avoiding multiple dependency and reducing technical solutions. The applicant can make choice according to the technical solutions.

Method 2) Amending the multiple independent claim as referred to

  For example, the claims are amended to:

  3. The apparatus according to claim 1, characterized in a technical feature C. Or, claim 3 is amended to "The apparatus according to claim 2, characterized in a technical feature C". In this manner, dependent claim 4 can retain not amended.

Method 3) Incorporating the features of several dependent claims into one or several dependent claims in the form of "or", to reduce the number of claims to be amended by splitting. Of course, use of such method has a premise that these features are indeed parallel or can be regarded as parallel. Sometimes this amendment method is also more effective and can be used as appropriate.

For example, the claims are amended to:

4. The apparatus according to claim 1 or 2, characterized in a technical feature D or E.

5. The apparatus according to claim 3, characterized in a technical feature D or E.

Method 4) Splitting the multiple dependent claim

  For example, the claims are amended to:

4. The apparatus according to claim 1 or 2, characterized in a technical feature D.

5. The apparatus according to claim 3, characterized in a technical feature D.

6. The apparatus according to claim 1 or 2, characterized in a technical feature E.

7. The apparatus according to claim 3, characterized in a technical feature E.

8. The apparatus according to claim 4, characterized in a technical feature E.

9. The apparatus according to claim 5, characterized in a technical feature E.

The amendment methods 1)-3) have an advantage that the reference relations of the claims are concise, it is not easy to make mistakes in amendments, and have a disadvantage that some technical solutions need to be deleted. The amendment method 4) has an advantage that all the technical solutions are retained, and has a disadvantage that the number of claims after the amendment is increased. Especially for applications with more original claims, a large number of technical solutions will be produced by splitting, and it is easy to confuse the reference relations and make mistakes.

In general, under the current Chinese patent practice, since usually at least one notification of OA is issued for a patent application of invention, making amendments during the application stage (i.e., amendment opportunity 1) can only produce negative effects, and will not bring about any obvious benefits. Therefore, generally, amendments in the application stage are not suggested for patent applications of invention which enter China through the Paris Convention. However, for patent applications of utility model, if the applicant is eager to obtain granting of a patent, he may make amendments for multiple dependency in the application stage, which has a strong possibility of being patented directly. In particular, there is no standard answer to the amendment method of multiple dependency. The amendment can be conducted by using the above methods 1)-4) alone or in combination. It should be always kept in mind that the purpose of amendment is to retain as many technical solutions as possible, try to retain the claim with a large protection scope, and retain the technical solutions which the client considers useful, and at the same time ensure the clarity of the claims.

About the Firm

Unitalen Attorneys at Law
Address 7th Floor, Scitech Place, No. 22 Jian Guo Men Wai Ave., Beijing, 100004 P. R. China
Tel 86-10-5920 8888
Fax 86-10-5920 8588
Email mail@unitalen.com
Link www.unitalen.com

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