Global Patent Prosecution - June 2020: Considerations When Appealing a Patent Application at the CNIPA

Sterne, Kessler, Goldstein & Fox P.L.L.C.

This article discusses aspects of ex parte appeals of patent applications before the China National Intellectual Property Administration (CNIPA). A patent applicant may appeal (submit a re-examination request) an examiner’s decision refusing to grant a patent application to the Re-examination and Invalidation Department of the Patent Office (PRB). Four points of consideration related to the CNIPA appeal process are discussed below.

First, similar to the USPTO appeal process, patent applicants may consider the tradeoffs in pursing the appeal process. In circumstances where an examiner is firmly entrenched in its positions, the appeal process provides patent applicants an opportunity to address the examiner’s positions before a panel of the PRB. The panel closely reviews the records—including briefing submitted by patent applicants—to determine the reasonableness of the examiner’s arguments. Moreover, in circumstances where claim amendments may lead to an allowance, the appeal process provides patent applicants an opportunity to amend the claims at various stages before the panel issues a final decision. The examiner or the panel closely reviews the proposed amendments at each stage to determine if the amendments will lead to an allowance.

Patent applicants may also consider whether other options besides appeal are more appropriate for their goals. For example, unlike the USPTO or EPO where an appeal is often the only way to remove a patent application from a particular examiner, a patent applicant may consider filing a divisional application in China to have a different examiner examine the application. Moreover, unlike the USPTO or EPO where oral hearings are a matter of right, a patent applicant is rarely allowed an oral hearing during the CNIPA appeal process. Accordingly, for arguments that may be nuanced or challenging to express in writing, patent applicants may find the lack of an oral hearing a disadvantage of the CNIPA appeal process.

Second, patent applicants may consider filing a divisional application during the appeal process. Patent applicants can file a divisional application (1) within 3 months from the date of receiving a decision of rejection from the Chinese examiner, (2) after the request for re-examination is filed, or (3) during initiation of an administrative litigation against the re-examination decision. Patent applicants may consider filing a divisional application after receiving a preliminary assessment of the likelihood of success of their appeal. For example, patent applicants may wait to file a divisional application until after they receive the patent examiner’s opinion in the interlocutory examination phase of the appeal. If an examiner’s opinion indicates an allowance is unlikely, a patent applicant may consider terminating the appeal process and proceed with filing a divisional application. When filing the divisional application, patent applicants can take into account the PRB’s findings.

Third, patent applicants may consider filing claim amendments with their appeal. Submission of substantive claim amendments during the PRB appeal process can be an advantage compared to the USPTO appeal process, which does not permit such claim amendments. Moreover, unlike the EPO appeal process, patent applicants can generally submit amendments after filing their appeal. For example, patent applicants can submit amendments just before the PRB issues a Notification of Re-Examination indicating its disposition intent. This gives patent applicants at least one further opportunity to present observations and amendments. However, patent applicants may need to carefully consider the scope of their initial claim amendments because of the risk of surrendering patentable subject matter. Accordingly, during the appeal process, patent applicants may consider presenting their main amendments and arguments in the initial appeal filing and reserving their backup amendments and arguments until after receiving a Notification of Re-examination.

Fourth, patent applicants may need to carefully plan for the possibility of a Notification of Re-Examination from the PRB indicating the decision of rejection is intended to be upheld. Patent applicants have a shortened period of 1 month from the date of receipt of the Notification of Re-Examination to present additional arguments and amendments to persuade the PRB to revoke the decision of rejection. Because the next communication from the PRB can be a decision upholding the decision of rejection, patent applicants may consider telephoning one of the panel members of PRB to assess whether the panel member would be amenable to discuss how to overcome any objections raised. In addition, patent applicants may find that opening such discussion may encourage the PRB to issue another Notification of Re-Examinations, thereby providing patent applicants an additional opportunity to address any objections.

If the decision of rejection is upheld, patent applicants can still file a divisional application. While patent applicants can initiate administrative litigation against a negative appeal decision within 3 months of the date of the notification upholding the decision of rejection, patent applicants may consider forgoing such administrative litigation because the chance of success can be low.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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