Patent Reexamination Board under the State Intellectual Property Office of China recently, with respect to the Decision of Rejection to our client's invention patent application, issued the Decision in favor of our client, informing us the Rejection previously issued by the State Intellectual Property Office is reversed. Thus our client successfully retrieved this case and the examination procedure is continued by the previous Examination Department.
Brief information about the case:
In connection with our US client抯 invention patent application, the examiner raised in the First Office Action in May 2011 that 12 out of 49 claims of the application were not supported by the description, thus were not conformity with the provisions of Article 26(4) of the Chinese Patent Law. After further communication with the examiner and made a formal response and amendments to these claims, later in February 2012, the State Intellectual Property Office issued a Decision of Rejection, which informed us that there were still 3 claims have the non-support issue. We immediately reviewed the application documents and the text of the final rejection as well as consulted with our client, and requested the Patent Reexamination Board to make a reexamination in early June. Together with the request, we submitted a response to the Decision of Rejection, providing persuasive arguments, strong evidence and technical statements. The Patent Reexamination Board upon reexamination determined in September 2012, to declare the amended claims are supported by the description and asked the previous Examination Department to continue its procedure upon this application.
Attorney's comments:
In a patent reexamination case, the petitioner should prepare sufficient and solid evidence with strong grounds, and detailed statement for technical points when necessary, in order to assist the panel to understand the technical points and our grounds.
In this case, when responding to a Decision of Rejection raised by non-support issues, we recommend submitting a reexamination request and making the proper decision among the following options: 1) if the applicant believes that the claims are well supported by the description, it is suggested to make arguments with convincing grounds without making amendments; and 2) if the applicant prefers to make amendments to expedite the reexamination procedure, it is suggested to further explain and well-addressed the technical features of the invention, based strictly on the description. In addition, the client should keep in mind that it is usually the final opportunity for the current application to file divisional application (s), any further action regarding divisional application shall be taken within three months from the date of receiving the Decision of Rejection.
