İ
Home» Examination&service» Reexamination Application» Parties Notified
Parties Notified

Notes for the Party concerned (Reexamination)

Notes for the Party Concerned (Reexamination)

1. Request for Reexamination

As prescribed by Article 41 of the Chinese Patent Law, where an applicant for patent is not satisfied with the decision of the patent administration department under the State Council rejecting the application, the applicant may request the Patent Reexamination Board to make a reexamination.

The decision of rejection that a reexamination request may be filed includes the decision rejecting the application during the preliminary examination and substantive examination procedures. Where a petitioner does not file a reexamination request with respect to the decision of rejection made by the Patent Office, the reexamination request will not be accepted.

2. Fees for Requesting Reexamination

The petitioner shall pay the reexamination fee within three months from the date of receipt of the rejection decision. The reexamination fee is 1000 RMB for patent for invention, 300 RMB for patent for utility model and 300 RMB for patent for design. The reexamination fee may be reduced or postponed. The petitioner may pay 60% of the fee for a service invention, and 80% of a non-service invention.

When remitting, the petitioner shall indicate the application number and the reexamination fee.

3. Format of Documents

The petitioner shall submit request for reexamination and explain the causes therein, and attach the relevant evidence if necessary.

The petitioner shall use the form of Request for Reexamination prescribed by the patent administration department under the State Council, and fill the items in accordance with the notes.

The petitioner making the request may amend its or his patent application at the time when it or he requests reexamination or makes responses to the notification of reexamination of the Patent Reexamination Board. However, the amendments shall be limited only to remove the defects pointed out in the decision of rejection of the application or in the notification of reexamination.

4. Formalities Regarding Appointment of Representation

(1).As regards the appointment, rescission or decline 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, rescission or decline of appointment shall be settled before the Patent Reexamination Board, without the need to change the bibliographic data. 

(2).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.

(3).Where the petitioner is a foreigner, foreign enterprise or other foreign organization having no habitual residence or business office in China, it or he shall appoint a patent agency.

(4).For other matters not described in the above, Chapter 1, Section 6.1 of Part I of Guidelines for Patent Examination shall apply mutatis mutandis.

5. Notification of Formal Examination

5.1 Notification of Acceptance of Request for Reexamination

Where, after formal examination, the request for reexamination is considered in conformity with the relevant provisions of the Patent Law and its Implementing Regulations and these Guidelines, the Patent Reexamination Board shall issue Notification of Acceptance of Request for Reexamination to notify the petitioner.

5.2 Notification to Make Rectification

Where, after formal examination, the request for reexamination is considered not in conformity with the relevant provisions of the Patent Law or its Implementing Regulations or these Guidelines and needs to be rectified, the Patent Reexamination Board shall issue Notification to Make Rectification, and invite the petitioner to make rectification within the specified time limit from the date of receipt of the notification.

Where the petitioner makes a response to the Notification to Make Rectification, it or he shall submit the form of Rectification for Reexamination or Invalidation Procedure prescribed by the patent administration department under the State Council and the rectified documents.

Common problems that need to be rectified:

(1).the petitioner fails to use the Request for Reexamination prescribed by the patent administration department under the State Council;

(2).the name of the petitioner or the invention-creation in the Request for Reexamination is inconsistent with the contents when the application was filed or after the legal change;

(3).the petitioner has appointed a patent agency when filing an application but the name and code of the patent agency, and the attorney are not filled in the Request for Reexamination, or the name and code of the patent agency, and the attorney are inconsistent with the contents when the application was filed or after the legal change;

(4).the petitioner has appointed a patent agency during the reexamination produce, but fails to submit a power of attorney or the scope of the power entrusted is not indicated therein;

(5).the petitioner has appointed more than one patent agency at the same time, but fails to designate in written form one of the agencies as the contact person;

(6).the attachments of the Request for Reexamination are inconsistent with those in the attachment list;

(7).the petitioner is a foreigner, foreign enterprise or other foreign organization having no habitual residence or business office in China, but fails to appoint a patent agency; and

(8).the Request for Reexamination is not signed by the petitioner (including that not signed by all of the petitioners), or not signed by the patent agency when the petitioner has appointed a patent agency.

5.3 Notification that Request for Reexamination Deemed Not to Have Been Made

In any of the following circumstances, the Patent Reexamination Board shall issue a Notification that Request for Reexamination Deemed Not to Have Been Made to the petitioner:

(1).where the petitioner fails to make rectification within the time limit specified in the Notification to Make Rectification issued by the Patent Reexamination Board;

(2).where the petitioner has made two rectifications within the specified time limit but still have the same defect;

(3).where the petitioner submits the Request for Reexamination within three months from the date of receipt of the decision of rejection, but has not paid, or not paid in full, the reexamination fee within the time limit;

(4).the petitioner, under the above item (3), does not file a request for restoration of right or the request for restoration of right is not in conformity with the provisions of Rule 6 of the Implementing Regulations or Article 99(1) of the Patent Law; and

(5).where the petitioner is a foreigner, foreign enterprise or other foreign organization having no habitual residence or business office in China, but fails to appoint a patent agency and fails to make rectifications within the specified time limit.

5.4 Notification of Nonacceptance of Request for Reexamination

In any of the following circumstances, the Patent Reexamination Board shall issue a Notification of Nonacceptance of Request for Reexamination to the petitioner:

(1).where the person filling a request for reexamination is not the applicant of the rejected application;

(2).where the petitioner fails to file the request for reexamination with respect to the decision of rejection made by the Patent Office;

(3).where the petitioner fails to file the request for reexamination within three months from the date of receipt of the decision of rejection;

(4).where the petitioner, under the above item (3), does not file a request for restoration of right or the request for restoration of right is not in conformity with the provisions of Rule 6 of the Implementing Regulations or Article 99(1) of the Patent Law;

(5).where the petitioner is a foreigner, foreign enterprise or other foreign organization having no habitual residence or business office in China, but fails to appoint a patent agency and fails to make rectifications within the specified time limit; and

(6).where the application concerning the request for reexamination has not been rejected yet.

6.Abstain

In any of the following circumstances, a panel member shall abstain from taking part in the panel, and where the panel member fails to abstain; the party concerned may challenge him as of right:

(1).where the panel member is a near relative of the petitioner or the agent of the petitioner;

(2).where the panel member has an interest in the application for patent;

(3).where the panel member has any other kinds of relations with the petitioner or the agent of the petitioner that may influence impartial examination and hearing;

(4).where the panel member who has taken part in the examination of the same application.

Where the party concerned files a motion to challenge a member of the panel, he shall raise the challenge in written form and explain the causes therein, and attach relevant evidence if necessary.

7. Manners of Examination

For a request for reexamination, 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 decision of rejection is intended to be upheld;

(2).where the decision of rejection 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 these 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 decision of rejection need to be introduced.

In the reexamination procedure, the petitioner for reexamination may request for oral proceedings and explain the reasons therefore to the Patent Reexamination Board. The request shall be submitted in written form. The petitioner for reexamination may request for oral proceedings based on any of the following reasons:

(1).there is a need to explain the facts or causes to the panel; or

(2).there is a need to demonstrate a material object.

Where the petitioner for reexamination requests for oral proceedings, the panel shall decide whether to take oral proceedings in accordance with the needs of the case.

8. Request for Restoration of Right

8.1 Circumstances for request for restoration of right

(1).Where a time limit prescribed in the Patent Law or these Implementing Regulations or specified by the Patent Reexamination Board is not observed by a petitioner because of force majeure, resulting in that the request for reexamination is deemed to have not been submitted, is not accepted or is deemed to have been withdrawn, it or he may, within two months from the date on which the impediment is removed, at the latest within two years immediately following the expiration of that time limit state the reasons, attach the relevant certifying documents and request the Patent Reexamination Board to restore its or his rights.

(2).Where a time limit prescribed in the Patent Law or these Implementing Regulations or specified by the Patent Reexamination Board is not observed by a petitioner because of any other justified reason, resulting in that the request for reexamination is deemed to have not been submitted, is not accepted or is deemed to have been withdrawn, it or he may, within two months from the date on which the impediment is removed, state the reasons and request the Patent Reexamination Board to restore its or his rights.

8.2 Formalities

To request for restoration of right, the petitioner shall submit a request for restoration of right within the specified time limit, state the reason, and attach the relevant supporting documents if necessary.

The petitioner shall use the form of Request for Restoration of Right prescribed by the patent administration department under the State Council and fill in the items in accordance with the nodes.

Where the petitioner requests for restoration of right in the above Item (2), it or he may pay the fee for restoration of right, i.e., 1000 RMB, at the same time. The fee for restoration of right cannot be reduced and exempted.

At the time of requesting for restoration of right, the petitioner shall go through the corresponding formalities that shall have been completed before the loss of right, and eliminate the cause that leads to the loss of right.

9. Suspension of Reexamination Procedure

A request for suspension of the reexamination procedure shall be filed before the flow management department of the Patent Office.

With respect to patents in the reexamination procedure, the duration for suspension requested by the party concerned in a dispute over right ownership or asked by the People’s Court to assist in execution of property preservation shall not exceed one year. The Patent Office will resume the relevant procedures on its own initiative once the time limit of suspension expires.

With respect to the request for suspension of procedures approved by the Patent Office, the Patent Reexamination Board will issue a Notification of Suspension Status of Reexamination Procedure to notify the petitioner of the starting date and expiry date of the duration of the suspension of procedure.

10. Changes in Bibliographic Data

The change in the bibliographic data during the reexamination procedure shall be handled in accordance with the relevant provisions of Chapter 1, Part I of the Guidelines for Patent Examination before the corresponding department of the Patent Office. The change in the bibliographic data shall take effect from the date of issuance of Notification of Passing Examination on Formalities by the Patent Office.

11. Termination of the Reexamination Procedure

In any of the following circumstances, the reexamination procedure will be terminated:

(1).where the request for reexamination is deemed withdrawn from lack of response within the time limit;

(2).where the petitioner has withdrawn the request for reexamination before a reexamination decision is made;

(3).where the request for reexamination that has been accepted is rejected for inconformity with the requirements of acceptance; and

(4).where the petitioner is not satisfied with the reexamination decision but no legal proceedings are instituted before the People’s Court within the specified time limit or the reexamination decision is upheld by an effective judgment of the People’s Court.

12. Judicial Examination

Where a petitioner is not satisfied with the reexamination decision made by the Patent Reexamination Board, it or he may institute legal proceedings in the Beijing First Intermediate People’s Court within three months from the date of receipt of the notification.

Enclosures:

1.  Way of payment

(1).By post office

No.6, Xitucheng Road, Jimenqiao Haidian District, Beijing City 100088 China

Merchant No. 110000860

Name of payee: the Charges Departments of Patent Office of the State Intellectual Property Office

(2). By bank

Bank name: Citic Bank Beijing Zhichun Road Branch

Account No: 7111 7101 8260 0166 032

Account name: the Patent Office of the State Intellectual Property Office

Query: 010-62085566

2.  For the relevant laws and regulations as well as the forms prescribed by the patent administration department under the State Council, please refer to www.sipo.gov.cn and www.sipo-reexam.gov.cn.

3.  Address: the Patent Reexamination Board of the SIPO, No.6, Xitucheng Road, Jimenqiao Haidian District, Beijing City 100088 China; Telephone: 010-62801799; Fax: 010-62801800
 

  • File:Provisions on Foreign Applicant in the Guidelines for Patent Examination
  • File:Notes for Oral Proceedings
  • Form:Fee
  • Copyright©2017 REEXAM All Rights Reserved