Newsletter
PRC (China) Post-Grant Patent Amendment Practice
According to the PRC Patent Law, there is no independent "post-grant amendment" mechanism. Instead, a patentee may apply for amendment of a granted patent only during the procedure of an invalidation action filed against the patent. The patentee shall not request invalidation of all claims of the patent. Under the current practice, an application for post-grant amendment of a patent in response to an invalidation action can be made only with respect to a claim(s), not the specification or drawings. According to No. 74 Order issued by the State Intellectual Property Office for amendments to the Patent Examination Guidelines, which is effective as of 1 April 2017, amendment to a claim(s) in an invalidation action must meet the following requirements:
A. The subject matter of claims shall not be changed;
B. The amendment shall not lead to broadening the scope of claims originally granted;
C. The amendment shall not exceed the scope of disclosure of the patent specification and claims;
D. Through the amendment, technical features that are not disclosed in the claims originally granted shall not be added; and
The specific manners of amending claims are generally limited to: (a) cancellation of a claim(s), (b) cancellation of a technical solution from a claim, (c) further limitation of a claim by incorporating one or more technical features disclosed in another claim(s) into this claim, and (d) correction of obvious errors.
In view of the above item (c), to leave adequate leeway to a potential post-grant amendment, it is advisable to include a sufficient number of claims in a patent application.