How to modify patent documents in American patent reexamination procedure?

When you applied for the American patent, did you encounter the patent reexamination procedures of both parties? American patent reexamination procedure is a procedure of American patent application, which is different from that of China. Let's take a look at the US patent reexamination procedure. The bilateral examination procedure (IPR) is a new patent invalidation procedure introduced in the American Invention Act (AIA) promulgated in September of 201/kloc-0. The invalidation procedure is conducted in the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office. Applicants for intellectual property rights can only make invalid requests for patents that are not novel or creative based on patents and printed publications. Compared with the invalid litigation in the federal district court, the intellectual property procedure has the advantages of rapidity, low cost, high success rate of patent invalidation, and is conducive to reconciliation, and has been widely used in recent years. The intellectual property procedure in the United States is very similar to the patent invalidation procedure in China in terms of system design, so the requirements for amending patent documents in the intellectual property procedure in the United States have certain reference significance for China. Legal provisions and practice The provisions of American AIA Act on the modification of claims in intellectual property procedures are embodied in item (d) of Article 3 16: (d) Modification of claims. 1. To sum up, in the review procedures of both parties in this chapter, the patentee may propose a motion to amend the claim in one or more of the following ways: a. Delete any questioned claim; For each questioned claim, replace each questioned claim with a reasonable number of claims. 2. Other motions: When the claimant and the patentee jointly make a request to substantially promote the procedural settlement under 3 17 or are allowed by the regulations stipulated by the director, other motions to amend the claim may be allowed. 3. Scope of the claims: The modification in this part cannot expand the protection scope of the claims or introduce new themes. The federal administrative regulation "Patent Amendment" further stipulates the item (d) of article AIA: 1 3 16. It is clear that the patentee has the right to put forward an amendment only once, unless the PTAB stipulates a specific time limit, it shall not be later than the time when he submits his defense, that is, the time limit is within 3 months after the director decides to start the review procedure between the two parties. 2. This modification does not answer the basis of non-patentability involved; May not expand the scope of protection of the claims or introduce new themes. 3. A reasonable number of substitute claims, the premise of which is that each questioned claim only needs to be replaced by one claim, and the patentee can refute it by explaining the necessity of substitution. 4. For each modified or replaced claim, the patentee shall declare that it can be supported by the original specification. It is worth noting that recently, the US Patent and Trademark Office has revised some provisions of the existing intellectual property procedures, involving font and page requirements and evidence requirements, and also made some adjustments to the collection of additional evidence. Regarding the submission of alternative claims, the United States Patent and Trademark Office particularly emphasizes that the patentee must prove that the alternative claim is effective relative to the existing technology, and the scope of the alternative claim is narrower than the original claim. These new regulations came into effect on May 2, 20 16. The following two cases are helpful to understand the modification requirements in intellectual property procedures. Generally speaking, American intellectual property procedures actually put forward higher requirements for the revision of patent documents, including not only procedural requirements, but also substantive requirements. In the revision of invalid procedures in China's Patent Examination Guide, one of the original intentions of the revision is to moderately liberalize the way the patentee modifies patent documents, that is, to allow one or more technical features recorded in other claims to be added to the claims, so as to narrow the scope of protection and allow obvious errors in the claims to be corrected. Compared with the United States, the space or possibility for patentees to modify patent documents in invalid procedures will be significantly increased. Because different countries are at different stages of development, it is absolutely necessary to have different considerations on the revision requirements of patent documents in invalid procedures. China's gradual relaxation of the restrictions on the revision method in the invalid stage is in line with China's current development stage of strengthening the protection of rights, and also matches the types of evidence that American intellectual property procedures allow requesters to submit relative to China's invalid procedures.