Discourse about the examination according to the authority in the reexamination procedure
Section 1, Chapter 2, Part IV of the GUIDELINES FOR PATENT EXAMINATION stipulates: "The reexamination procedure is a relief procedure initiated by the applicant who is dissatisfied with the decision of rejection of theapplication by the Patent Office; meanwhile, it is a continuation of the examination procedure for a patent application. Therefore, on one hand, the Patent Reexamination Board normally restricts its examination to the grounds and evidence on which the decision of rejection is based, and is not obliged to undertake a comprehensive examination on thepatent application; on the other hand, the Patent Reexamination Board may conduct examination ex officio on other obvious substantive defects than those mentioned in the decision of rejection, so as to improve the quality of thepatentgranted and avoid unreasonable prolongation of the examination and granting procedure."
Section 4.1, Chapter 2, Part IV of the GUIDELINES FOR PATENT EXAMINATION stipulates: "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: (1)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. .... 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.”
According to the regulations in Chapter 2 of Part IV of the GUIDELINES FOR PATENT EXAMINATION, the panel can examine the defects that meet the regulations ex officio during the reexamination procedure, in order to prevent an unreasonable prolongation of the examination and granting procedure. Here, "prevent unreasonable prolongation of the examination and granting procedure" is not equivalent to the principle of economical procedures applied during the substantive examination process. The reexamination procedure must take into account both "remedy" and "continuation of the procedure", thus it has been granted the power to "conduct examination ex officio".
When preparing the amendments and statements in a request for reexamination, the reexamination petitioner shall, in addition to the reasons and evidence on which the rejection decision is based, also consider the above provisions and possible expanded interpretations in actual implementation.
(1) Changing the evidence upon which the rejection decision is based
For the evidence upon which the rejection decision is based, the panel may change the closest prior art in the reexamination procedure. For example, if reference document 1 is used in combination with reference document 2 to evaluate the inventive step in the rejection decision, with reference document 1 listed as the closest prior art, in practice, the panel could opt to use reference document 2 as the closest prior art instead in combination with reference document 1.
If a combination of multiple reference documents is used in the rejection decision to evaluate the inventive step of claims, such as reference documents 1-3, the it is possible for the panel to reduce the number of reference documents cited, for example, only use reference document 1 combined with reference document 3, and omit reference document 2.
In addition, the relevant paragraphs cited in the evidence are not limited to those specified in the rejection decision, but the panel is generally allowed to expand them to other paragraphs of the same technical solution in the evidence. However, introducing other technical solutions with certain differences (such as parallel technical solutions with certain variations) should generally be not allowed.
Therefore, the reexamination petitioner should consider that these evidences may possibly be adjusted and used respectively during the reexamination procedure, so as to avoid making useless defenses.
(2) Introducing new common knowledge evidence
According to the above provisions, the panel may introduce new evidence of common knowledge. For example, if there are the features of omission or a wrong evaluation in the rejection decision, the panel can introduce new common knowledge evidence and use it in combination with the evidence on which the rejection decision is based. These new common knowledge evidences should meet the requirements of common knowledge evidence, that is, coming from textbooks or reference books.
Therefore, if there is omission or a wrong evaluation in the rejection decision, in addition to the evidence on which the rejection decision is based, the reexamination petitioner should also consider whether new evidence of common knowledge may be introduced.
In practice, however, the panel maintains relatively strict standards for common knowledge evidence. If the common knowledge evidence that obviously does not meet the requirements arises in the notice of reexamination, the reexamination petitioner can lodge an objection.
(3) Introducing other reasons and evidences that have been notified to the applicant before the rejection decision is made
It should be understood that the purpose of these provisions are to avoid unreasonable situations in the continued examination procedure after the reexamination procedure. For example, after revocation of the rejection decision, the application goes through the continued examination after reexamination, during which the examiner could potentially reject the application again by using other evidence and reasons notified to the applicant in the previous substantive examination procedure.
In practice, unless the above-mentioned circumstances may potentially arise, the panel will generally not introduce such evidence, even if such evidence has been used in the Office Action during the substantive examination procedure.
For other reasons, it is important to note that there may be a causal defect. For example, the reason for the rejection is that the amendment goes beyond the original scope, but the amendment is caused by the applicant in order to overcome the unsupported defect during the substantive examination procedure. Under such circumstances, the panel may also take into account the unsupported defects while examining the amendment beyond the original scope.
Therefore, for other reasons and evidences that have been notified to the applicant before the rejection decision is made, the reexamination petitioner should confirm whether the corresponding defects have already been overcome through amendments or statements.
(4) Pointing out the obvious substantive defects not pointed out in the rejection decision or the defects of the same nature as the defects pointed out in the rejection decision
For obvious substantive defects, the GUIDELINES FOR PATENT EXAMINATION provides an example of perpetual motion machines that are not practical. Even if no issue of practicality has been raised before the rejection decision, as long as the reexamination procedure determines that the application is related to a perpetual motion machine, it has an obvious substantive defect, which can be pointed out in the notice of reexamination. In addition, obvious substantive defects also include obvious insufficient disclosure and amendments beyond the original scope during substantive examination.
For defects of the same nature, the same provisions are made to avoid unreasonable prolongation of the examination and granting procedure.
These defects may be caused either by the misunderstanding of the examiner during the substantive examination procedure, or by that the statement of the reexamination petitioner has changed the facts.
To sum up, the reexamination petitioner should understand the relevant regulations on ex officio examination in the reexamination procedure, and think about the relevant issues objectively. The author provides the following suggestions for the reexamination petitioner's reference in order to facilitate the reexamination:
(1) For the inventive step, the evidence on which the rejection decision is based should be considered objectively in accordance with Chinese patent laws and regulations, rather than limited to the citations and combinations specified by the examiner.
(2) For defects having a causal relationship therebetween, while overcoming the rejected defect, the defect that has a causal relationship with it should also be dealt with.
(3) Check whether there are defects of the same nature missed by the examiner. For example, the dependent claims of similar technical solutions that have not been pointed out during the substantive examination may also have defects about inventive step, support, clarity, etc.
(4) Check whether there are obvious substantive defects. For those that can be checked and overcome in advance, such as amendments beyond the original scope during the substantive examination procedure, they can be amended in advance in a request for reexamination.
The above is the author's experience in combination with practice, in the hope of offering some assistance and reference to reexamination petitioners.