Is there room for remedy when the patent is rejected?

Technology is the primary productive force. For enterprises and companies, once a patent is successfully authorized, it will form the intangible assets of the enterprise and ensure the core competitiveness of the enterprise. Therefore, most enterprises hope that the technological achievements they have mastered will be transformed into intellectual property rights. However, it is not easy to successfully apply for a patent, and patent applications are often rejected during the application process, so is there no room for redress when a patent application is rejected, and what should inventors and applicants do?

First of all, it should be made clear that when a patent is rejected, it is not that there is no way out. According to Article 41 of the the People's Republic of China Patent Law, if a patent applicant is not satisfied with the decision of the patent administration department under the State Council to reject the application, he may request a reexamination from the patent administration department under the State Council within three months from the date of receipt of the notice. The patent administration department under the State Council shall, after reexamination, make a decision and notify the patent applicant.

In other words, when the patent is rejected, the applicant can submit a request for review, and the review board will review the patent application again. After review, the following two situations may occur:(1) Maintain the original rejection decision and reject the patent reexamination request. (2) Confirm that the reason for the request for patent reexamination is established, or confirm that after the applicant has modified it, the application documents have overcome the defects pointed out in the original rejection decision, decide to revoke the original rejection decision and return the application to the original examination department for re-examination.

So, whether a rejected patent application should submit a request for review or not, and what considerations should be made before submitting a request for review?

The Status Quo of Patent Reexamination in 1.

According to the State Intellectual Property OfficeThe 2021 Annual Report,In 2021, the State Intellectual Property Office accepted 76000 patent reexamination requests, up 39.2 percent year-on-year. Taking invention patents as an example, there are 1.266 million invention patents concluded in 2021, of which 696000 are authorized, 570000 are not authorized, and the number of requests for reexamination of invention patents is 73600, accounting for 12.9 percent of the unauthorized invention patents.

In the case of invention patent review concluded, the revocation of the rejection accounted.47.2, which shows that nearly half of the invention patents can be revoked and rejected through reexamination, and the relief function of patent reexamination is obvious. However, revocation rejection is only an intermediate state, which does not mean that the patent application will eventually be authorized, and further examination is needed to determine the final result.The average closing cycle of requests for review is16.4 months,Review cycleLonger.

2. the process of patent reexamination

Patent reexamination procedure refers to a remedy given to the applicant when the patent application is rejected. Only the patent applicant has the right to initiate patent review proceedings and must be notified of the rejection.3 months to the State Intellectual Property Office Patent Reexamination Board.Where a request for reexamination is made to the Patent Reexamination Board, a written request for reexamination shall be submitted, stating the reasons and, if necessary, relevant evidence shall be attached.The petitioner may amend the patent application documents when filing a request for reexamination or responding to the notice of reexamination issued by the Patent Reexamination Board; Where the Patent Reexamination Board conducts an examination and, at the request of the person requesting the reexamination, agrees to revoke the original decision, the Patent Reexamination Board shall make a reexamination decision accordingly and notify the person requesting the reexamination, but will not directly authorize it,Continuation of the review process by the original review department. If it considers that the request for review does not comply with the relevant provisions of the Patent Law and its Implementing Regulations, the applicant will be required to state his or her opinions within a specified time limit.Where, after stating its opinion or making amendments, the Patent Re-examination Board considers that it is still not in conformity with the relevant provisions of the Patent Law and its Implementing Regulations,WillReview decision upholding the original rejection decision.

The legal basis for the rejection of 3. patents.

The examiner will state the reasons for rejection in the notice of rejection decision. Article 53 of the Detailed Rules for the Implementation of the Patent Law: According to the provisions of Article 38 of the Patent Law, the circumstances under which an application for a patent for invention shall be rejected after substantial examination refer:

Where the (I) application falls under the circumstances provided for in Article 5 or Article 25 of the Patent Law, or where the patent right cannot be obtained in accordance with the provisions of Article 9 of the Patent Law;

(II) application does not comply with the provisions of Article 2, paragraph 2, Article 20, paragraph 1, Article 22, Article 26, paragraph 3, paragraph 4, paragraph 5, or Article 31, paragraph 1, of the Patent Law or Article 20, paragraph 2, of these Rules;

Where the amendment of the (III) application does not comply with the provisions of Article 33 of the Patent Law, or the divisive application does not comply with the provisions of Article 43, paragraph 1 of these Rules.

Article 5 of the Patent Law: No patent right shall be granted to inventions and creations that violate the law, social morality or hinder the public interest. No patent right shall be granted to an invention-creation that obtains or utilizes genetic resources in violation of the provisions of laws and administrative regulations and relies on such genetic resources.

Article 25 of the Patent Law: No patent right shall be granted for the following(I) Scientific discoveries;Rules and Methods of (II) Intellectual Activities;Diagnosis and treatment of (III) diseases;(IV) animal and plant species;(V) nuclear transformation method and substance obtained by nuclear transformation method;A design that (VI) primarily identifies the pattern, color, or combination of the two of a flat print.

Article 9 of the Patent Law: Only one patent right can be granted for the same invention-creation. However, if the same applicant applies for both a utility model patent and an invention patent for the same invention-creation on the same day, the utility model patent obtained first has not been terminated, and the applicant declares to waive the utility model patent right, the invention patent right may be granted.

Where two or more applicants respectively apply for a patent for the same invention-creation, the patent right shall be granted to the person who applied first.

Paragraph 2 of Article 2 of the Patent Law stipulates:Invention refers to a new technical solution proposed for a product, method or improvement thereof.

Paragraph 1 of Article 20 of the Patent Law: The principle of good faith shall be observed in the application for a patent and the exercise of a patent right. The patent right shall not be abused to damage the public interest or the legitimate rights and interests of others.

Article 22 of the Patent Law: Inventions and utility models for which a patent right is granted shall be novel, inventive and practical.

Article 26 of the Patent Law: Paragraph 3: The specification shall give a clear and complete description of the invention or utility model, subject to the realization of the invention by a person skilled in the technical field to which it belongs, and shall have drawings when necessary. The abstract shall give a brief description of the technical points of the invention or utility model. Paragraph 4: The claims shall be based on the specification and clearly and concisely define the scope of patent protection claimed. Article 5 For an invention-creation made on genetic resources, the applicant shall state in the patent application documents the direct source and original source of the genetic resources. If the applicant is unable to state the original source, it shall state the reasons.

Paragraph 1 of Article 31 of the Patent Law:

An application for a patent for invention or utility model shall be limited to one invention or utility model. Two or more inventions or utility models belonging to one general inventive concept may be filed as one application.

The second paragraph of Article 33 of the Patent Law: The applicant may amend its patent application documents, but the amendment to the invention and utility model patent application documents shall not exceed the scope of the original description and claims, and the design The modification of the patent application document shall not exceed the scope of the original picture or photograph.

Article 43 of the Regulations for the Implementation of the Patent Law: For a divisive application filed in accordance with Article 42 of these Rules, the original filing date may be retained, and if the right of priority is enjoyed, the priority date may be retained, but the original application shall not be published. Scope. The divisive application shall go through the relevant formalities in accordance with the provisions of the Patent Law and these Rules. The request for a divisive application shall state the application number and date of the original application. When submitting a divisive application, the applicant shall submit a copy of the original application documentsIf the original application enjoys the right of priority, a copy of the priority document of the original application shall be submitted.

4. makes recommendations for review

After the invention patent is rejected, whether to propose a reexamination depends on the applicant himself. After reading the reasons for rejection, if the applicant thinks that the reasons for rejection proposed by the examiner are unreasonable or that the reasons for rejection pointed out by the examiner can be overcome after modification, then the applicant can receive the notice of rejection decision.Submit a request for review to the Patent Reexamination Board within 3 months and pay the official fee for the review at the same time. In the review requestNeeds to be stated, the examiner's opinion in the dismissal decision was incorrect,At the same time, the application documents can also be modified to overcome the existing problems.

In the above-mentioned articles, if the reasons for rejection are the circumstances stipulated in Articles 5 and 25 of the Patent Law, or if the patent right cannot be obtained in accordance with Article 9 of the Patent Law, these articles are the provisions on the object of invention patent protection. If the reasons for rejection are these articles, it indicates that the content claimed by the invention patent does not belong to the provisions of the Patent Law. Therefore, once the above-mentioned reasons are rejected, it is not recommended to propose reexamination, even if a review is proposed, there is a greater probability that the original rejection decision will be upheld by the above-mentioned provisions.

If the reason for rejection is the circumstances stipulated in Article 22, Article 26 and Article 33, paragraph 2, of the Patent Law, this is the result of reviewing the contents of the application documents. On the surface, the application documents have various defects and are rejected. Take creativity as an example. If the examiner rejects the application documents on the grounds that they are not creative, he can comprehensively consider the contents of the application documents at this time. If the scope of protection of the claims is large, the corresponding specification has multiple invention points and sufficiently detailed embodiments, then this patent application document can be reviewed by further narrowing the scope of protection of rights.

The rejected solution is maintained after the 5. review.

After the reexamination is submitted, a complete and detailed statement of the request for reexamination indicates that the reason for rejection pointed out by the examiner is not valid, or if the reason for rejection can be overcome after amendment and correction is made, and there is complete evidence to prove it, if the Patent Reexamination Board maintains the result of rejection unchanged, the patent reexamination decision shall be notified to the patent applicant in writing. If the applicant of the invention patent application is not satisfied with the reexamination decision, it may receive the decision.3 months to the Beijing Municipal Intermediate People's Court.

6. Summary

After the invention patent is rejected, whether it is necessary to file a reexamination, or whether the applicant is required to do a good job of reexamination and evaluation,Patent reexamination can be evaluated in four dimensions:1) the importance of the patent; 2) whether the contents of the application documents are detailed; 3) whether there are deviations in the examination opinions; 4) whether the statement of opinions is reasonable. After the above four aspectsAssessment,It can have a more objective understanding of the actual situation of the rejected patent in the early stage, make the patent reexamination have objective basis and operability, and reduce and avoid the blindness and blindness of the patent reexamination decision-making. Therefore, it can become the process requirement for the applicant to implement the patent reexamination, and it can also be the pre-procedure for the patent agency to review the case.In addition, the applicant usually entrusts the patent application to the agency for patent review, which may require a different patent agency to undertake. This is to get rid of the limitations of the early reply thinking and find a new breakthrough point.