There are significant differences between U.S. and Chinese patent practice, particularly with respect to Office Action (OA) responses. U.S. patent practitioners should know about these differences so that (1) when they are drafting U.S. cases to be translated and filed in China, they can avoid submitting claims and doing other things that will not work in China and that will have to either be redone by the Chinese firm before filing or will result in needless rejections and delay, and (2) when they are working with their Chinese counterpart counsel, they can have a better understanding of Chinese practice.
- Adding new claims
New claims mean totally new claims submitted during responding OA that is not directed to OA rejections/objections. Unlike in U.S. OA responses where adding new claims is accepted, Chinese Patent Examiners will usually not allow an Applicant to add claims during OA response per Chinese Patent Examination Guidelines[1]. An Examiner will not examine added claims, but will instead issue a new OA rejecting the added claims, thereby delaying a potential grant of any allowed claims.
By contrast, similar to U.S. OA practice, one can amend the originally submitted claims according to Examiner’s rejections/objections during OA response. For example, the Applicant can replace the originally submitted claims with updated claims and the Examiner will normally accept the updated claims as long as the updated claims is directed to and overcome the Examiner’s rejections/objections.
As new claims will usually be rejected during OA response, if an Applicant does want to add claims, the Applicant can instead file a voluntary amendment at two stages: 1. When filing request for substantive examination. 2. Within three months from receipt of notice of entering substantive examination from SIPO. Note if the Applicant files voluntary amendments several times within the three-month period, the Examiner will examine the last version only. Further, the added contents should be supported by the original claims and specification. Otherwise, the Examiner will issue an OA and reject the added new claims as going beyond the scope of initial disclosure.
Further, the Applicant can take advantage of the voluntary amendment to eliminate excess claim fees at 150RMB(about 23USD) /claim in excess of 10. The strategy comprises 1. Filing an application initially with 10 claims; and 2. Adding new claims without paying excess claim fees during voluntary amendment. By contrast, for US practice, claim fees are calculated each time the number of total claims and/or independent claims increases.
- Addressing antecedent basis issues
Chinese Examiners are strict on antecedent basis. An Examiner usually requests the Applicant to recite exactly identical terms as the previously presented term. For example, if only one capacitor is recited in a claim but is initially recited as ceramic capacitor, the Examiner will usually objects to Applicant’s reference to it in the second instance as capacitor. In response, the Applicant should refer to it as ceramic capacitor usually.
- Addressing lack of literal support issue
Chinese Examiners are strict on literal support. The Examiner may object to Applicant’s replacement and/or deletion of quantifiers or adjective in claim amendment. For example, if a claim recites “three turbine blades,” and the description and drawings recite and show, respectively, three turbine blades, an Examiner is unlikely to accept replacing “three” with “a plurality” despite three being a plurality. Another example regarding deletion of adjective. The claim original recites “a side wall with ribs.” The Examiner is unlikely to accept Applicant’s replacement of “a side wall with ribs” with “a side wall.” Therefore, the Applicant is advised to disclose sufficient embodiments in the specification to serve as literal support for amendment.
- Addressing indefiniteness issue
Chinese Examiners are likely to object the terms such as “about,” “approximately” as indefinite. The Applicant may need to delete them from claims during OA responses upon Examiner’s objection. However, if the specification defines the extent of these terms, for example, the specification discloses “approximately three meters” means up to a 3% deviation from three meters, the Applicant may argue that the claim is clear, as the specification discloses the meaning of “approximately.” Further, even if the specification does not disclose the extent of the terms, for some technical fields, the Examiner may accept some indefiniteness. For example, the Examiner may accept a claim that recites “a substantially flat table surface” limitation in claims, as it is accepted in the field of furniture.
- Addressing preamble issue
US Examiners usually accept a preamble, such as “a method” only or “a device” only without any further limitation. However, a Chinese Examiner may object to such preamble as failing to disclose the technical field of the solution to which the method or the device is applied to. In response, it is advisable to recite more description in the preamble. For example, the Applicant may need to replace “a method” with “a method of processing digital signals.”
- Addressing method of treating human diseases
Unlike in US practice where methods of treating human diseases are patent eligible subject matter, it is not allowed by Chinese patent law. Therefore it may be advisable to amend the claim format to Swiss-type use claims, such as “Use of substance X in the manufacture of a medicament for the treatment of condition Y,”[2] to comply with Chinese patent practice.
- Filing divisionals for objected to/rejected claims
Unlike US OAs where Examiners will explicitly indicate allowable claims, Chinese Examiners do not explicitly do so. However, most Chinese Examiners will implicitly do so by not commenting upon the allowable claims. That said, the non-commented-upon claims are generally allowable. Therefore, the Applicant may expedite prosecution by adding the limitation of non-commented claims into independent claims, or maintaining the non-commented-upon claims only. The Applicant may cancel the objected to/rejected claims, and pursue these claims in divisional applications if possible. Note, however, that unless the Examiner requests the Applicant to file a divisional, the deadline for the Applicant to voluntarily file a divisional off a parent application or a child application is when the original parent application is still pending (neither abandoned nor granted).
- Making sure to work with local counsel
Due to the differences between U.S. and Chinese patent practices, especially in formality issues, it is advisable to allow the local counsel to review and amend the claims to comply with Chinese practice for formality issues, such as antecedent basis, at the time of filing the response.
Further, the Applicant’s local counsel is suggested to have a call discussion with the Examiner to clarify rejections and sound out proposed responses before filing the response to Office Actions.
Conclusion
In conclusion, by following the above nine strategies, the Applicant will be able to expedite prosecution and hopefully get an allowance. Further, the Applicant should consider taking advantage of the Patent Prosecution Highway (PPH) program to expedite examination as described here (see http://www.law360.com/articles/688967/china-s-patent-prosecution-highway-tips-for-us-applicants).
[1] Guidelines for Patent Examination 2010 is similar to US Manual of Patent Examining Procedure (MPEP), See Section 5.2.1.3, Chapter 8, Part 2 of Guidelines for Patent Examination 2010
[2] See Section 4.5.2, Chapter 10, Part 2 of Guidelines for Patent Examination 2010