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The ins and outs of reconsideration

Sep 14, 2017 By Xiaojun Guo

In patent prosecution, reexamination or invalidation proceedings, the State Intellectual Property Office of China (SIPO) or the Patent Reexamination Board (PRB) undertakes examinations and informs the applicant, petitioner or patentee of its decisions (in essence “specific administrative acts”) by various notifications in different phases.

Against those decisions, unless otherwise specified by the laws or regulations, the applicant may either initiate legal proceedings before the Beijing Intellectual Property Court or file a request for administrative reconsideration with SIPO.

Some decisions, such as rejection decisions of SIPO, reexamination decisions and invalidation decisions of the PRB, are not subject to administrative reconsideration. If an applicant is not satisfied with a rejection decision, it can only file a request for reexamination with the PRB. If an applicant is not satisfied with a reexamination decision or a party is not satisfied with an invalidation decision, it can only appeal against the decision to the court.

Although various decisions in relation to patent applications or patents can be subject to administrative reconsideration, such proceedings were not prevalent in the past. Only in recent years has there been a rapid growth of the cases. In 2016, SIPO received 165 administration reconsideration cases, an increase of 129% over 2015.

Most of the administrative reconsideration cases concern procedural matters, although they may involve substantive matters, such as rejection of a priority claim because the later and the prior applications relate to different subject matter.

Case studies

In an administrative reconsideration case, two consecutive numerals of the priority number were wrongly transposed. SIPO rejected the priory claim and the decision was affirmed in the administrative reconsideration proceedings.

Another administrative reconsideration case involved the priority claim of a Chinese design application to a prior US design application, which was denied because part of the broken lines in the prior application were amended into solid lines to show an entire product. The decision of the design division was affirmed during the administrative reconsideration proceedings and SIPO held that the subject matter in the two applications was different.

In another administrative reconsideration case, the applicant requested SIPO to cancel the previous decision of an examination division that its divisional application was deemed not to have been filed. The applicant said the opinions of the examiner on the unity of the claims were raised in the rejection decision and did constitute effective opinions for filing a divisional application. SIPO refused the request and made a decision of administrative reconsideration affirming its previous decision.

The administrative reconsideration proceedings are conducted within SIPO, but by the division of legal affairs—a separate division from the examination divisions. In spite of this, the examiners handling reconsideration matters and the examiners in charge of examinations are normally trained in the same system, they share information within SIPO, and some examiners of the division of legal affairs are from the PRB or the examination divisions.

It is not surprising therefore that the examiners of the division of legal affairs are inclined to sustain decisions made by the examination divisions or the PRB in administrative reconsideration proceedings.

The time to file

When should someone consider filing a request for administrative reconsideration instead of initiating legal proceedings right away?

A decision issued by examination divisions is normally made by one examiner. In administrative reconsideration proceedings, however, the applicant can normally rely on a panel of three experienced examiners and can even ask for a face-to-face meeting with them. The applicant may sometimes get constructive input from those experienced examiners, although the examiners are obliged to follow the provisions of the Patent Examination Guidelines strictly.

A request for administrative reconsideration shall be filed within 60 days of a decision of the examination divisions; this time limit is the same as that for initiating legal proceedings. However, the administrative reconsideration proceedings are much more flexible and easier than legal proceedings. For example, the power of attorney doesn’t need to be notarised and legalised, and the evidence doesn’t need to be prepared as strictly as in legal proceedings.

The administrative reconsideration proceedings are free of official fees. SIPO shall normally make a decision of administrative reconsideration within 60 days. Upon receiving the decision, the applicant may initiate legal proceedings within 15 days. Counting from the previous decision of the examination divisions, it offers the applicant an additional 75 days to get ready for a possible administrative litigation.

Alternatively, the applicant may appeal against a decision of administrative reconsideration with the State Council to obtain a final decision. However, this hardly occurs in practice. (Published on WIPR )