Before allowance, applicant may amend their application document under different circumstances. Such amendments fall into two categories: voluntary amendments and amendments made to respond to Office Action. While voluntary amendments give the applicant great flexibility in deleting, adding or re-organizing the claims, strict limitations are posed to amendments made to respond to Office Action. Within the limitations, such amendments may only be made to address the defect(s) raised by the examiner; amendments cannot be made in the way to enlarge the scope of claim; new dependent claim or independent claim covering the technical solution that has not been available in the original claim set is not allowed. Considering the limitations of amendments made to respond to Office Action, applicant should take advantage of the opportunity of voluntary amendment and consider amending the claims in conjunction with business plan, competitor's product and other factors.
1. Timing of voluntary amendment - For direct filing under Paris convention, there are two opportunities of voluntary amendment: namely
1) amendments filed together with substantive examination and
2) amendments filed within 3 months after receiving Notice of Entering Substantive Examination Phase
[1]. For PCT Chinese National Phase, there would be three opportunities of voluntary amendments:
1) amendments filed when entering Chinese National Phase
2) amendments filed together with substantive examination and
3) amendments filed within 3 months after receiving Notice of Entering Substantive Examination Phase.
2. Requirement of voluntary amendment -
(a) The requirement for voluntary amendment is that such amendment should not go beyond theoriginal specification and claims.
(b) The original specification and claims include the content recorded in the original specification andthe claims, and the content that can be directly and unambiguously determined based on the content recorded in the original specification and the claims and the drawings in the specification. The abovementioned directly and unambiguously determined content should be certain to those skilled in the art, and does not include the technical content inferred from the original specification and claims. That is to say, after a patent application document is amended, if a person skilled in the relevant technical field believes that there is content in the amended specification and/or claims that cannot be directly and unambiguously determined from the original application, the amendment is considered to be beyond the original specification and claims.
(c) There is no limitation on the scope of claims or way of amendments. That is to say, the applicantmay delete claims or add new claims. He/she/it may also amend the claims in the way to enlarge or narrow the scope of the claims as long as the amendments meet the requirement above.
3. Tips for voluntary amendments
(1) Suggested amendment
a) Evolved product If the applicant's product or solution has evolved as compared to the product or solution of the International Application Date and such evolution has been disclosed in the international application text, the applicant may consider amending the claim to cove the evolved product or solution.
b) Competitor's production or Infringement On the other hand, if the applicant detects competitor's product / solution or infringement in the Chinese market and such product or solution has been disclosed in the specification, the applicant may consider amending the claim to cover the product or solution.
c) PPH Some applicants may wish to take advantage of examination result of other jurisdictions to expedite the examination of patent application in China through Patent Prosecution Highway (PPH). Applicant may amend the claims in correspondence to the claims allowed in other jurisdiction with voluntary amendment.
d) Obvious error For obvious errors, such as wrong figure numberings, it is suggested to amend it when entering Chinese National Phase.
(2) Not suggested amendments -
a) Amendment addressing International Search Report When entering Chinese National Phase, if the International Search Report has cited relevant documents, it is suggested not to file amendment addressing the issue. Chinese examiner will perform search in the substantive examination and may likely cite different documents. Applicant may amend the claims based on the matters raised in Office Action.
b) Amendment to reduce the excessive claim fee The additional fee for number of claims above 10 is calculated based on the number of claims in the International Publication. Therefore, even if the applicant reduces the number of claims when entering Chinese National Phase, it does not lead to reduction of the excessive claim fee.
c) Amendment to remove multiple dependency In China, multiple dependent claims are allowed but multiple dependent claim serving as the basis for another multiple dependent claim is not allowable. Applicant may remove any multiple dependent claim as the basis for another multiple dependent claim when entering Chinese National Phase or after the examiner points out the issue in Office Action.
d) Other formality issue Amendment of Patent Examination Guideline is constantly in process and different examiners may have different flexibility in examination. Therefore, for formality issues, it is suggested that the applicant enter Chinese National Phase without amendment and amend it addressing the matters raised by the examiner in Office Action.
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