5.2. 1.3 Modification method when replying to the notice of review opinions
According to the third paragraph of Article 51 of the Detailed Rules for the Implementation of the Patent Law, if the application documents are amended according to the notice of examination opinions, it shall be amended according to the defects pointed out in the notice. Where the amendment method does not conform to the provisions of Paragraph 3 of Article 51 of the Detailed Rules for the Implementation of the Patent Law, the revised text shall generally not be adopted.
However, as long as the modified document eliminates the defects in the original application document and has the prospect of authorization, it can be regarded as a modification aimed at the defects pointed out in the notice, so the modified application document is acceptable. This treatment is conducive to saving the review process. However, when the following situations occur, even if the revised content is not beyond the scope recorded in the original specification and claims, it cannot be regarded as a modification for the defects pointed out in the notice, so it will not be accepted.
(1) actively deleted the technical features in the independent claim, and expanded the scope of protection requested by the claim.
For example, the applicant voluntarily deletes technical features from the independent claim, or deletes related technical terms, or actively deletes technical features that limit the specific application scope. Even if the content of the active modification is not beyond the scope recorded in the original specification and claims, the modification will not be accepted as long as it leads to the expansion of the scope protected by the claims.
(2) Actively changing the technical features in the independent claim, leading to the expansion of the protection scope.
For example, the applicant voluntarily changed the technical feature "spiral spring" in the original claim to "elastic component". Although the technical characteristics of the "elastic part" were recorded in the original specification, the modification was not accepted because it expanded the scope of protection.
For another example, in the caseNo. 1 to No.4 in section (1) of 5.2.3.2 in this chapter, even if these four modifications were recorded in the original specification, they would not be accepted, because such modifications expanded the scope of protection they requested.
(3) Take the initiative to take the technical content that is only recorded in the specification and lacks oneness with the subject of the original claim as the subject of the revised claim.
For example, in an invention patent application for a new handlebar of a bicycle, the applicant not only described the new handlebar, but also described other parts, such as the seat of a bicycle. After substantial examination, the new handle defined in the claim is not creative. In this case, the applicant took the initiative to modify and limited the claim to the bicycle seat. Due to the lack of unity between the revised theme and the original theme, this revision is not accepted.
(4) Actively add a new independent claim, and the technical scheme defined in this independent claim did not appear in the original claim.
(5) Actively add a new subordinate claim, and the technical scheme defined in the subordinate claim did not appear in the original claim.
If the revised text submitted by the applicant in reply to the notice of examination opinions is not aimed at the defects pointed out in the notice, but belongs to the above unacceptable situation, the examiner shall issue a notice of examination opinions, explain the reasons why the revised text cannot be accepted, and require the applicant to submit the revised text according to the provisions of paragraph 3 of Article 51 of the Detailed Rules for the Implementation of the Patent Law within a specified time limit. At the same time, it should be pointed out that if the revised text submitted by the applicant still does not conform to the provisions of paragraph 3 of Article 51 of the Detailed Rules for the Implementation of the Patent Law or there are other contents that do not conform to the provisions of paragraph 3 of Article 51 of the Detailed Rules for the Implementation of the Patent Law, the examiner will continue to review the revised text, such as making a decision on authorization or rejection.