Practice Areas | China IP Practice | Q & A
14. For patent examination in China, what should be noticed for making a revision of claims when replying to the office action?
According to the current strict examination standard for revision in China, it is usually not allowed to make an inference from the description in the specification in summarized or implicated way as the supporting basis for revising claims.

The patent examiner usually asks the applicant to make a revision according to the original disclosure. That is, the revision should not fall out of the original disclosed scope. Based on experience, the patent examiner almost only agree that the description which complies with the original disclosure word by word can be used as the supporting basis for revision, unless the applicant can prove that the revision can be determined directly and unambiguously by people skilled in the art without different interpretations.
15. When can a request for division of application be submitted for a patent application in China?
According to the provisions of Articles 42 and 43 of the Rules for the Implementation of the Patent Law of the People's Republic of China, the applicant can submit a request for division of application at any time before a patent right is granted, and at latest within two months from receipt of the notification of granting.

It should be noted that if time exceeds two months after a patent right is granted for the original application, or the original application has been rejected and the rejection has entered into force, or the original application has been withdrawn initiatively or is deemed to have been withdrawn and is not reinstated, no request for division of application can be submitted.

After receiving the notification of rejection, the applicant can submit a request for division of application within three months from receipt of the notification, no matter whether the applicant submits a request for reexamination to the Patent Re-examination Board or not.
16. Is it possible for an applicant to make two applications for the same invention-creation in China?
According to the provision of Item 1 of Article 9 of the Patent Law of the People's Republic of China, when the same applicant files applications for both utility model and invention patents for the same invention-creation on the same day, the invention patent can be granted if the patent right of the utility model obtained prior to the invention right has not been terminated and the applicant declares to abandon the patent right of the utility model.

That is, according to the provision of Article 9 of the Patent Law of the People's Republic of China, it is conditionally allowed for an applicant to make two applications for the same invention-creation, but in order to make two applications for the same invention-creation, the applicant shall abide by the following provisions:
(1) the two applications shall be directed to one invention and one utility model;
(2) the two applications shall be filed by the same applicant on the same day;
(3) when the two applications are filed, each application shall indicate that the other patent application has been filed for the same invention-creation; and
(4) the utility model patent granted prior to the invention patent shall be effective before the granting of the invention patent.
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