Examination According to Article 33 of the Patent Law
According to Article 33 of the Patent Law, an applicant may amend their utility model patent application documents, but the amendments should not exceed the scope of the original specification and claims.
If the applicant’s amendments include content that could not be directly and unambiguously determined by a person skilled in the art from the original specification and claims, such amendments are considered to exceed the scope of the original documents.
The deletion of certain features from the application by the applicant may also lead to exceeding the original scope.
Supplementing technical features in the specification that were recorded in the original claims but not described in the original specification, and expanding their description, is considered to exceed the original scope.
Supplementing technical features in the specification that were not recorded in the original specification and claims and whose content, represented in the original figures, cannot be unambiguously determined, is also considered to exceed the original scope.
It should be noted that:
(1) Corrections of obvious errors are not considered to exceed the original scope. An obvious error is something whose incorrect content can be clearly judged from the context of the original specification and claims, without other possible interpretations or modifications.
(2) Structures that are clearly visible and have only one interpretation in the figures are allowed to be supplemented in the specification and included in the claims.
According to Article 57 of the Implementing Regulations of the
Patent Law, the applicant may voluntarily amend the utility model patent application documents within two months from the application date. Furthermore, after receiving a notice of examination opinion or a notice of correction from the Patent Office, the applicant should make amendments in response to the defects pointed out in the notice.
1 Applicant’s Voluntary Amendments
For the applicant’s voluntary amendments, the examiner should first verify whether the amendment was submitted within two months from the application date. For amendments submitted after two months, if the amended documents eliminate the defects in the original application documents and have prospects of being granted, such amendments may be accepted. For amendments that are not accepted, the examiner should issue a notice considering them as not submitted.
For amendments submitted within two months, the examiner should review whether the amendment exceeds the scope of the original specification and claims. If the amendment does exceed the scope, the examiner should issue a notice of examination opinion, informing the applicant that the amendment does not comply with Article 33 of the Patent Law. If the applicant’s statement of opinion or correction still does not comply with the regulations, the examiner may make a rejection decision according to Article 33 of the Patent Law and Article 50 of the Implementing Regulations of the Patent Law.
2 Amendments in Response to the Notification of Defects
For amendments made by the applicant in response to the notification, the examiner should review whether the amendment exceeds the scope of the original specification and claims and whether it addresses the defects pointed out in the notification. If the applicant submits amendments that are not specifically addressing the defects indicated in the notification, but the amendments comply with Article 33 of the Patent Law, eliminate the defects in the original application documents, and have prospects for authorization, such amendments can be considered as addressing the defects indicated in the notification. The amended application documents should be accepted in this case. For amendments that do not comply with Article 57, Paragraph 3 of the Implementing Regulations of the Patent Law, the examiner may issue a notification stating that the amendment text is not accepted and provide reasons, requesting the applicant to submit a compliant amendment text within a specified period. The examiner should also indicate that if the applicant’s resubmitted amendment text still does not comply with Article 57, Paragraph 3 of the Implementing Regulations, the examination will continue based on the text before the amendment, such as making a grant or rejection decision.
If the applicant’s amendment text exceeds the scope of the original specification and claims, the examiner should issue a notice of examination opinion, informing the applicant that the amendment does not comply with Article 33 of the Patent Law. If the applicant’s statement of opinion or correction still does not comply, the examiner may make a rejection decision according to Article 33 of the Patent Law and Article 50 of the Implementing Regulations.
3 Ex Officio Amendments
Before issuing a notification granting the utility model patent right, the examiner may make ex officio amendments to obvious errors in the text and symbols of the application documents. The content of ex officio amendments includes:
(1) Request form: Correcting missing, miswritten, or duplicate information in the applicant’s address or contact address, such as province (autonomous region, municipality), city, postal code, etc.
(2) Specification: Correcting inappropriate utility model name and/or technical field; correcting typos, erroneous symbols, markings; modifying obviously non-standard expressions; adding missing titles in various parts of the specification; removing unnecessary textual explanations in figures, etc.
(3) Claims: Correcting typos, punctuation errors, erroneous figure markings, and adding parentheses to figure markings. However, amendments that may lead to a change in the scope of protection are not within the scope of ex officio amendments.
(4) Abstract: Modifying inappropriate content and obvious errors in the abstract, specifying the abstract figure.
The content of the examiner’s ex officio amendments should be recorded in the documents and notified to the applicant.
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