Patent Reexamination in China VS Patent Appeal in the USA

After receiving a “final” office action which rejects their patent application, an applicant has options for recourse depending on their jurisdiction. In China, the applicant may file a request for patent reexamination to Patent Reexamination Board (PRB), while in the US, the applicant may file patent appeal for the rejection to the Patent Trial and Appeal Board (PTAB).

The general process of patent reexamination in China and patent appeal in the USA is as follows:

If you’re interested and want to learn more, keep reading!

Patent Reexamination for Chinese applications

What is Chinese patent reexamination?

According to the Article 41 of the Chinese Patent Law, where a patent applicant refuses to accept the decision of the patent administration department under the State Council on rejecting the application, the applicant may, within three months from the date of receipt of the notification, request the patent administration department under the State Council to make a reexamination. The patent administration department under the State Council shall, after reexamination, make a decision and notify the patent applicant. 

What will be examined when the request for reexamination is filed?

After the PRB received a request for reexamination, it shall carry out formal examination. It will examine the object of a request for reexamination, eligibility as a petitioner for reexamination, time limit, format of documents, fees, formalities regarding appointment of representation.

For example, if a rejected application has two or more applicants but the petitioner for reexamination does not include all the applicants, the PRB will notify the petitioner to make rectification within a specified time limit.

The petitioner shall submit request for reexamination and explain the causes therein, and attach the relevant evidence if necessary. If the request is not in the prescribed format, the PRB will notify the petition to make rectification within a specified time limit. 

If the petitioner files 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 (1,000 RMB for invention patent, 300 RMB for utility model patent and 300 RMB for design patent) within the time limit, the request shall be deemed not to have made.

In summary, if after formal examination, the request for reexamination is considered in conformity with the relevant provisions, the applicant will receive Notification of Acceptance of Request for Reexamination. However, if the request for reexamination is deemed not to have made or is not accepted, the applicant will respectively receive Notification that Request for Reexamination Deemed Not to Have Been Made or Notification of Nonacceptance of Request for Reexamination. 

What is interlocutory examination?

According to Rule 62, the PRB shall transfer the request for reexamination (including any proof document and the amended application document attached thereto) having passed formal examination to the previous examination department which made the decision of rejection for interlocutory examination, together with the application dossier. Except in special situations, interlocutory examination shall be completed within one month after receipt of the dossier.

If the petitioner has submitted amended text of the application, it will be examined first whether the amendment goes beyond the scope of disclosure contained in the original description and claims according to Article 33 of Patent Law. In addition, it will also be examined whether the amendment is limited only to overcome the defects indicated in the decision of rejection according to Rule 60.1.

If the amendment conforms with the relevant provisions, interlocutory examination will be performed on the basis of the amended text. Otherwise, the decision of rejection will be maintained and the explanation in detail why the amendment is not acceptable will be provided.

What is collegiate examination?

In the reexamination procedure, the panel normally examines only the grounds and evidence on which the decision of rejection is based.

In addition to the grounds and evidence on which the decision of rejection is based, where the panel finds the text of the application being examined has one of the following defects, it may examine the grounds and evidence related to the defect, and if the panel confirms the existence of the defect after examination, it shall make a decision of upholding the rejection decision on the basis of said grounds and evidence:

• the defects for which it is sufficient to reject the application on the basis of other grounds and evidences of which the applicant has been notified before rejection; or

(2) the defects which are not indicated in the decision of rejection but are obvious and substantive or of the same nature with those indicated in the decision of rejection.

Besides, during the collegiate examination, the panel may introduce common knowledge of the skilled art into the examination, or supplement the evidence by providing common knowledge such as those in a technical dictionary, a technical manual, or a text book.

What should the applicant do if the rejection is still upheld?

After one or two rounds of “communication” between the applicant and the panel, there come two kinds of result finally: a request for reexamination is allowed and the decision of rejection is revoked based on the applicant’s observations and/or amendments, or, a request for reexamination is not allowed and the decision of rejection is upheld.

Where the patent applicant refuses to accept the decision of the reexamination of the patent administration department under the State Council, the applicant may, within three months from the date of receipt of the notification, file a lawsuit in the people’s court. 

Patent Appeal for US applications

If the applicant is unable to overcome the US patent examiner’s objections, a final rejection may be issued (usually after at least two rounds of objections). In this case, the applicant can appeal from the decision of the primary examiner to the PTAB.

What is Notice of Appeal?

The appeal process for US patent applications begins with the filing of Notice of Appeal. The applicant has the option to file the Notice of Appeal within three months of receiving the Final Rejection, without requesting for extensions, or alternatively, up to six months from the final rejection with payment of extension fees.

It’s worth noting that the official fee $840 for a large entity should be paid upon the filing of the Notice of Appeal.

The Notice of Appeal will be examined by the Patent Appeal Center. If the document has deficits, the applicant will receive the notification from the Patent Appeal Center.

What is Pre-Appeal Brief?

The request for pre-appeal brief review must be filed with the filing of the Notice of Appeal and before the filing of an appeal brief. The request must be accompanied by arguments which may not exceed five total pages and should specify clear errors in the rejections.

A pre-appeal has the best chance at success when:

• there are examiner’s omissions of one or more essential elements needed for a prima facie rejection; or

• there are clear errors in the examiner’s rejection.

If the outcome of the request for pre-appeal brief is favorable, such as the application is allowed or the prosecution is reopened, the advantages of the “pre-appeal” include potential savings in time and money as the applicant avoids the expensive appeal brief.

What is Appeal Brief?

If the request for pre-appeal brief is not filed or dismissed, or the outcome of the request is that an actual issue for appeal exists, an appeal brief is the next step. The filing of the Notice of Appeal triggers a two-month deadline thereafter to file the Appeal Brief.

If the applicant files the appeal brief within prescribed time limit but without filing the Notice of Appeal before, it will be deemed as filing the Notice of Appeal and the appeal brief at the same time.

After filing the appeal brief, the appeal conference will be held, unless examiner gives a clear response that there is no need for appeal and his supervisor agrees with the response.

Generally speaking, drafting an Appeal Brief is more complicated than drafting a response to Office Action. The two key sections of the Appeal Brief comprise the Summary of claimed subject matter and the Argument section. Meanwhile, the attorney fee of drafting an Appeal Brief is largely determined by the number and complexity of issues on appeal. Besides, the official fee for filing an Appeal Brief is $2,100 for a large entity. Hence, it is typically the costliest task of a patent appeal.

What is Examiner’s Answer and Forwarding Fee?

Once the Appeal Brief is filed, the Examiner will discuss the rejection, the appeal brief, and whether to send the case to the Board. At this stage, the examiners can either withdraw the rejection, which would end the appeal process, or move forward with the appeal.

If the examiners decide to move forward with the appeal, an Examiner’s Answer will be filed. Normally, the applicant is not required to file a reply brief to respond to the examiner’s answer, and if the applicant does not file a reply brief within the two-month period of time, the application will be forwarded to the Board for decision on the appeal.

Meanwhile, the applicant needs to pay the forwarding fee within two months of the Examiner’s Answer to send the case to the Board. The official fee is $2,360 for a large entity. In view of this high cost, it is suggested that the applicant reevaluate the commercial merits and grant possibility of the application before proceeding with the appeal.

What is Oral Hearing?

The applicant may choose to request an oral hearing if desired. If the applicant wants an oral hearing, applicant must file, as a separate paper captioned “REQUEST FOR ORAL HEARING”, a written request for such hearing accompanied by the official fee $1,360 for a large entity within two months from the date of the examiner’s answer or on the date of filing of a reply brief, whichever is earlier.

If no request or fee for oral hearing has been timely filed by the applicant, the appeal will be assigned for consideration and decision on the briefs without an oral hearing.

Once the applicant has met all necessary requirements, a date for the oral hearing will be scheduled and the applicant will be notified accordingly. If the applicant has any special requests, such as a specific date, day of the week, or preference regarding the session timing (i.e. afternoon vs. morning), these will be considered in scheduling the hearing, provided that the Board is informed in advance. However, the requests should not unduly delay a decision in the case and does not place an undue administrative burden on the Board.

The applicant may also file a request, in a separate paper addressed to the Clerk of the Board, to present their arguments via telephone or an audio-video connection.

What is the Decision by Board?

The PTAB will issue a decision typically around 30 months from the start of the appeal. There are two common decisions:

• reversal of the Examiner’s rejection or affirmance of the rejection. The Board, in its decision, may affirm or reverse the decision of the examiner in whole or in part on the grounds and on the claims specified by the examiner.

• new grounds of rejection by the Board. When the Board enters such a non-final decision, the applicant should, within two months from the date of the decision, exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims:
• Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. Should the examiner reject the claims, the applicant may again appeal to the Board pursuant to this subpart.
• Request rehearing. The applicant may file a request for rehearing within two months of the date of the original decision of the Board.

If the appeal is determined in the Examiner’s favor and the applicant is dissatisfied with the final decision, the applicant may appeal the Board’s decision to the United States Court of Appeals for the Federal Circuit or have remedy by civil action against the Director within two months from the date of the decision.

Conclusion

Patent reexamination in China and appeal for US patent applications are complicated and pricey. In view of this, it is suggested that the applicant weigh the cost and investment of time against the likelihood of success when deciding whether to request reexamination or appeal an examiner’s adverse decision.