Foreign applicants may know that there are voluntary amendments during patent filing and examination in China, but how to select timing for voluntary amendments? Q&A below may show a few key points.
Is it possible to amend the set of claims when fling the request for substantive examination?
The answer is Yes. For patent applications entering Chinese national phase, voluntary amendments to the claims can be made (1) at the time of entering China; (2) at the time of requesting substantive examination; and (3) within three months after receiving the notification of entering substantive examination.
Would you better recommend amending the claims upon entry into the national phase?
It depends. It is generally recommended to amend the claims at a later stage after entering Chinese national phase.
Invention application entering China via PCT route: In our experience, we would normally recommend to amend the claims after filing the Chinese national application (i.e. when requesting substantive examination or after receiving the notification of entering substantive examination). Main reasons include: (1) the official fee regarding claim number is charged based on the claim number of the published PCT application, that is, deleting claims WILL NOT reduce the filing cost; (2) amending claims in a later stage gives the client adequate time to consider what amendments are necessary for their application and attorney fee of voluntary amendment will only be charged once.
Application entering China via Paris convention route: In our experience, we would normally recommend our clients to amend the claims post-filing for reason (2) listed above.
However, different from PCT applications, amending claim number affects the official fee. A common strategy used is converting claims into multiple dependent claims before entering China to reduce official fee. In this case, a post-filing rectification notice will be issued and replying such would incur attorney fees.
In addition, sometimes pre-filing amendments are necessary to avoid receiving rectification notice and to reduce attorney fees.
In view of the above, whether amending claims upon entering Chinese national phase should be discussed in a case-by-case scenario. In any event, we will review the application and then provide professional advice considering both cost and patent application quality.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
