Patents (China) [Q34]
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19. Q: When can amendments be made to the description, the claims and the drawings?
  A:

Amendments may be made to the application documents of the description, the claims and the drawings under the following circumstances:

(1) Amendments initiated by the applicant
According to the law, the applicant may make amendments to the application for an invention patent on his own initiative at the time of filing a request to the State Intellectual Property Office (SIPO) for substantive examination on the invention patent, or within three months from the date of receiving the Notification of Entering the Substantive Examination Stage of the Application issued by SIPO.

In respect of an application for utility model patent or for design patent, the applicant may make amendments to the application on his own initiative within two months from the date of filing the application.

According to the law, amendments to the application for an invention patent may not go beyond the scope of disclosure of the initial description and claims and the drawings, whereas the amendments to the application for a design patent may not go beyond the scope of disclosure of the initial drawings or photographs.

(2) Passive amendments
“Passive amendments” refer to the amendments made under a circumstance other than the above-mentioned circumstances in which the amendments are initiated by the applicant.

For example, during the substantive examination stage, the applicant is not allowed to make amendments to the application documents on his own initiative. Instead, amendments have to be made in response to the examination opinions provided by the examiner in the office actions with a view to overcome the defects in the description, the claims, or the drawings.

Similarly, passive amendments made by the applicant during the substantive examination stage in response to the office actions may not exceed the scope of disclosure of the description, the claims, or the drawings in the initial application.

(3) Amendments made in the reexamination procedure
The applicant may amend the description, the claims and the drawings at the time of submitting a request for reexamination to SIPO or when responding to a Notification of Reexamination issued by the Patent Reexamination Board.

However, the amendments made shall be limited to those with a view to overcome the defects indicated in the rejection decision or as pointed out in the Notification of Reexamination. That is, the amendments made in the reexamination procedure belong to passive amendments.

(4) Amendments made in the invalidation procedure 
In the process of examining the request for declaration of invalidation, the patentee of the invention or utility model may amend his claims. However, the amendments to the claims shall not extend the extent of protection of the original patent.

According to the law, in the process of examining the request for declaration of invalidation, the patentee of a patent for invention or for utility model may not amend the description or the drawings, and the patentee of a patent for design may not amend the drawings, photographs or the brief description.

(5) Amendments made to PCT applications
In respect of a PCT application which has undergone amendments to the description, the claims or the drawings during the international phase, where the amended description, the claims and the drawings are requested for serving as the basis of examination when the application enters the Chinese national phase, Chinese translations of the amendments should be filed within two months from the date when the application enters the Chinese national phase.

In respect of a PCT application claiming an invention patent in China, the applicant may make amendments to the description, the claims or the drawings of the application on his own initiative at the time of filing a request for substantive examination after the application has entered the Chinese national phase or within three months after the receipt of the Notification of Entering the Substantive Examination Stage of the Application issued by SIPO.

In respect of a PCT application claiming a utility model patent in China, the applicant may make amendments to the application on his own initiative within two months from the date when the application enters the Chinese national stage.

Where the applicant finds an error in the translation of the description, the claims or the drawings filed to SIPO, he may make correction to the translation before SIPO has finished the preparation for the announcement of the application or within three months after the receipt of the Notification of Entering the Substantive Examination Stage of the Application.

The applicant should note that regardless of which of the aforesaid circumstances, the amendments made to the description, the claims or the drawings shall not go beyond the scope of disclosure of the initial PCT application documents.

(6) Amendments made to divisional applications
As a divisional application is a patent application made on the basis of its parent application, the applicant may make amendments on his own initiative to the description, the claims and the drawings only at the time of filing a request for substantive examination for the divisional application for invention patent, or within three months from the date of receipt of the Notification of Entering the Substantive Examination Stage of the Application. Where the parent application is an application for a patent for utility model or for design, the applicant may make amendments to the application documents on his own initiative within two months from the date of filing the divisional application. In cases other than the above-mentioned, only passive amendments can be made to the application documents.

Similarly, amendments to the divisional application shall not go beyond the scope of disclosure of the initial application documents.

 

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