The Patent Reexamination System in China

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The patent reexamination system refers to a remedy provided to the applicant when the patent application is rejected. The patent reexamination system is an important system in patent applications, but there may be many applicants who do not know much about this system. This article aims to introduce the relevant knowledge and procedure of patent reexamination.
Firstly, let me introduce the basic procedures of the patent reexamination. Patent reexamination basically needs to go through the following procedures:
Patent application is rejected → File a reexamination request (within 3 months) → Formal examination → Interlocutory examination → Collegiate examination by the panel of the Patent Reexamination and Invalidation Department → Reexamination decision (maintenance rejection or withdrawal rejection) →Judicial remedy procedures for dissatisfaction with the Reexamination decision.
1. Request for reexamination

According to the provision of Article 41 Paragraph 1 of the Patent Law, a patent applicant may file a request with the Patent Reexamination and Invalidation Department of China National Intellectual Property Administration (CNIPA)  for a review of the rejection decision of his/her application issued by CNIPA, within three months of receipt of a notice of the rejection decision. When the reexamination request is submitted, the following points need to be noted:
1.1 Time limit

The patent applicant shall decide whether to file  a reexamination request within three months after receiving the Rejection Decision.

If the three-month statutory time limit has expired when submitting the reexamination request, the applicant can still submit the reexamination request and go through the restoration procedures at the same time within two months after the three-month statutory time limit. A restoration fee of 1000 CNY shall be paid.

1.2 Petitioner

Only patent applicants are eligible to file a reexamination request, and no other entity or individual has the right to initiate the reexamination procedure.

1.3 Form requirements for reexamination request documents

The petitioner shall submit a request form for reexamination, explain the reasons, and attach relevant evidence when necessary. The petitioner shall use the reexamination request form formulated by the Patent Administration Department of the State Council, and fill in strictly according to the notes on the back of the form.

1.4 Modifiability

When filing the reexamination request, the petitioner may modify the patent application documents, but the modification shall be limited to eliminating the defects indicated in the Rejection Decision.

1.5 Fees

The requester shall pay the reexamination fee within three months from the date of receiving the Rejection Decision: 1000 CNY for invention patent applications, 300 CNY for utility model patent applications, and 300 CNY for design patent applications.

1.6 Formalities Regarding Appointment of Representation

Regarding the appointment, dissolution or resignation of appointment in the reexamination procedure, formalities shall be settled before the Patent Office. However, if the petitioner appoints a patent agency in the reexamination procedure and indicates in the power of attorney that the scope of the power entrusted is limited to matters in the reexamination procedure, the formalities concerning the appointment, dissolution or resignation of appointment shall be settled before the Patent Reexamination and Invalidation Department, without the need to change the bibliographic data. Where the petitioner has appointed more than one patent agency at the same time, he shall designate in written form one of the agencies as the contact person.
2. Formal examination

After receiving the reexamination request, the Patent Reexamination and Invalidation Department shall conduct a formal examination. The content of the formal examination includes whether the reexamination request is a request for dissatisfaction with the Reject Decision of the Patent Office; whether the applicant for reexamination is eligible; whether the time limit for filing a reexamination request meets the requirements; whether the reexamination fee is paid or fully paid; whether the request form for reexamination conforms to the format specified in the standard form; whether the power of attorney has been submitted and the authorization authority is stated, if the reexamination petitioner entrusts a patent agency to request reexamination.
3. Interlocutory examination

The Patent Reexamination and Invalidation Department shall transfer the request for reexamination (including any proof document and the amended application document attached thereto) having passed the formal examination to the previous examination department, which made the Rejection Decision for interlocutory examination, together with the application dossier.

The previous examination department shall provide its opinion on interlocutory examination and make a Note of Interlocutory Examination Opinion. There are three types of interlocutory examination opinion:

(1) that the request for reexamination is allowable, and the Rejection Decision is agreed to be revoked;
(2) that the amended text of the application submitted by the petitioner has overcome the previous defects, and the Rejection Decision is agreed to be revoked on the basis of the amendments; and
(3) that the observations and the amendments submitted by the petitioner are not sufficient to revoke the Rejection Decision, and the Rejection Decision is maintained.
4. Collegiate examination     

In the reexamination procedure, the panel normally examines only the grounds and evidence on which the Rejection Decision is based. The panel may conduct examination in written form, by oral proceedings, or in both ways. In any of the following circumstances, the panel shall issue Notification of Reexamination (including Notification of Oral Proceedings for Request for Reexamination) or take oral proceedings:

(1) where the Rejection Decision is intended to be upheld;
(2) where the Rejection Decision can be revoked on the condition that the petitioner makes amendments to the application document in accordance with the relevant provisions of the Patent Law, its Implementing Regulations and Examination Guidelines;
(3) where further evidence or explanation is required to be submitted by the petitioner; or
(4) where new grounds or evidence that have not been provided in the Rejection Decision need to be introduced.
Where the panel issues Notification of Reexamination, the petitioner shall respond in written form with respect to the defects indicated in the notification within one month from the date of receipt. If the petitioner fails to respond in written form within the time limit, the request for reexamination shall be deemed withdrawn.
5. Reexamination decision

The panel shall issue a Reexamination Decision after reexamination. There are three types of reexamination decisions:

(1) a reexamination request is not allowed, and the Rejection Decision is upheld;
(2) a reexamination request is allowed, and the Rejection Decision is revoked; and
(3) where an application document has been amended, and the defects indicated in the Rejection Decision has been overcome, the Rejection Decision is revoked on the basis of the amended text.
The latter two types of decisions essentially revoke the original Rejection Decision, and the patent application will be returned to the previous examination department, and it will continue the examination procedure.
6. Judicial remedy

The patent applicant may file a lawsuit against the Reexamination Decision within three months of receipt of the decision. If the patent applicant fails to file a lawsuit within the prescribed time limit, the Reexamination Decision shall take effect. Where a patent applicant brings a lawsuit to the court, it shall be accepted by the Beijing First Intermediate People's Court.
Patent reexamination is the only remedy for a rejection of an application. It is a right owned by the patent applicant, and the applicant can continue to strive for the authorization of his application. The rejection of patent applications by patent office examiners is subjective, and the probability of revoking the Rejection Decisions is relatively high. For patent applicants, it is very useful and necessary to understand the basic information of the patent reexamination system.