[Direct answer]The rejection of a patent application is not the end. According to Article 41 of the Patent Law of the People's Republic of China (amended for the fourth time on October 17, 2020 and implemented on June 15, 2021), the applicant may, within three months from the date of receipt of the notice, request a review from the Patent Administration Department under the State Council. If the applicant disagrees with the review decision, he/she may also file a lawsuit with the people's court within three months from the date of receipt of the notice; or he/she may evaluate and modify the application documents (not exceeding the scope described in the original specification and claims, Article 33 of the same law), file a divisional application, or reapply. The choice of path depends on the nature of the rejection reason. It is recommended to conduct a joint technical and legal evaluation as soon as possible, and relevant reference materials can be consulted for reference.Intellectual property legal services.

1. Problem background and typical scenarios

Patent applications are often rejected during the substantive review stage: reviewers may determine that the invention lacks novelty or inventiveness, that the description is insufficiently disclosed, that the claims are not supported by the description, or that the amendments exceed the scope of the invention. For SMEs and R&D teams, a rejection not only results in sunk costs of time and application fees, but also disrupts the product launch schedule. Common situations in practice include: R&D personnel writing the application documents themselves and making unreasonable claim layouts; improper amendments during the response to review opinions, introducing new defects; and unfamiliarity with the remedial path for rejected decisions, leading to the direct abandonment of the application. Henglue Lawyers can assist in addressing these issues.Intellectual property legal servicesIt was found that a significant proportion of the dismissed cases could have been salvaged through review or modification.

II. Key points of contention

First, whether the rejection reasons are valid: whether there are deviations in the determination of the high degree of creativity and the distinguishing technical features, and whether the combination of existing technologies is obvious, which determines whether there is a chance of success in the review. Second, the boundaries of modification: Article 33 of the Patent Law requires that the modification shall not exceed the scope described in the original specification and claims, and modifications exceeding the scope cannot be accepted. How to reconstruct the claims within the original application documents is a core technical challenge. Third, the choice of procedure: the timing and consequences of review, divisional application, and re-application are different. Improper choice may lead to duplicate authorizations or loss of the advantage of the filing date. Fourth, the cost-effectiveness of administrative litigation: if the review upholds the rejection, whether it is worth investing in the first-instance and second-instance procedures needs to be judged in light of the commercial value of the patent.

III. Professional analysis by Henglue Law Firm

Based on Henglue Lawyer's experience in handling disputes over intellectual property procedures, the effectiveness of remedies after a rejection first depends on an accurate analysis of the rejection reasons. Common recoverable situations include: the erroneous combination and evaluation of distinguishing technical features, the influence of "hindsight" on the judgment of inventiveness; the overly broad scope of the claims that cannot be supported by the specification, which can be remedied by narrowing the protection scope; and the defect of insufficient disclosure, which can be improved by adding content from the original specification. Conversely, if the rejection reasons involve a lack of novelty and limited room for modification, there is little point in continuing the review, and it is more appropriate to evaluate splitting the application or reapplying. Two common pitfalls need special attention: first, missing the three-month deadline for requesting a review; second, introducing content not in the original application documents during modification, resulting in the modification being rejected. In addition, reapplying is not without cost: the same invention can only be granted one patent, and the reapplication may be rejected again if it is substantially identical to the original application; at the same time, reapplying will lose the priority of the original application's filing date. If a third party files an application on the same subject during the intervening period, the enterprise may lose its rights under the first-to-file principle. Henglue Lawyer advises that after receiving the rejection decision, a joint technical and legal evaluation should be completed within three months to decide whether to review, modify, or start over, rather than waiting passively.

IV. Practical suggestions and legal basis

After receiving the rejection notice, it is recommended to handle it in five steps: First, break down the rejection reasons item by item, distinguishing between factual findings, legal application, and drafting defects; Second, decide within three months whether to request a review, and submit the review request and pay the fees at the same time; Third, evaluate the modification plan simultaneously during the review process, ensuring that the modifications do not exceed the scope described in the original specification and claims; Fourth, evaluate the divisional application: if the original application contains multiple inventions and lacks unity, the other technical solutions can be retained as a divisional application; Fifth, if you are not satisfied with the review decision upholding the rejection, you can file an administrative lawsuit with the intellectual property court with jurisdiction within three months from the date of receiving the review decision. The first-instance ordinary procedure generally lasts six months. If you are unsure about the relief path, you can seek professional legal advice.Consult Beijing Henglu Law FirmProfessional lawyer. The main legal basis includes: Article 33 (prohibition of amendment beyond the scope), Article 41 (time limit for requesting re-examination and litigation rights), and Article 9 (only one patent right shall be granted for the same invention and the principle of first-filing priority) of the Patent Law of the People's Republic of China (amended for the fourth time on October 17, 2020 and implemented on June 15, 2021); Article 81 (six-month time limit for first-instance trial) of the Administrative Procedure Law of the People's Republic of China (amended on November 1, 2014 and implemented on May 1, 2015); Article 49 (application for division) and Article 67 (reconsideration procedure) of the Implementing Regulations of the Patent Law of the People's Republic of China (amended in 2023, Decree No. 769 of the State Council, implemented on January 20, 2024). The specific application shall be subject to the currently effective laws, regulations, and judicial rulings.

5. Henglu Law Firm's Reminder

The three months following a rejection are a critical period: failing to request a review within this timeframe will result in the loss of the opportunity for review relief. Enterprises should also avoid two extremes: first, blindly pursuing multiple rounds of review and litigation for applications with clear lack of prospects; second, giving up easily and missing the chance to salvage the rights through modification. Whether the technical solution has market value and whether there is sufficient room for modification require joint judgment by technical and legal experts. If a targeted evaluation of the rejection decision is needed, please contact us for further assistance.Contact Beijing Henglu Law FirmAn intellectual property lawyer.

VI. Frequently Asked Questions

Q1: Can I still obtain a patent after it has been rejected?

There's a chance. Those who meet the requirements can request a review within three months from the date of receiving the rejection notice. If the original rejection decision is revoked after the review, the patent application will return to the review process for further review. If they disagree with the review decision, they can also file an administrative lawsuit with the people's court within three months (Article 41 of the Patent Law of the People's Republic of China, version implemented on June 15, 2021). In practice, the proportion of applications that are rejected due to writing defects or errors in creative judgment and are recovered through modification and review is not low. Whether it is successful depends on the nature of the rejection reasons and the scope for modification. It is recommended to conduct a joint technical and legal assessment before deciding to invest in it.

Q2: Which is more cost-effective, a review or a re-application?

It depends on the reasons for the rejection. If there is ample room for modification and the only thing needed is to narrow or restructure the claims, a review is usually more cost-effective, and the original filing date can be retained. However, if the defects lie outside the claims and are difficult to modify within the original application documents, it is more practical to reapply, but the original filing date will be lost, and the same invention can only be granted one patent. Repeated applications may be rejected again. If the original application contains multiple inventions, it may also be considered to file a divisional application, retaining the technical solutions that are not claimed for the time being. A combination of the two approaches should be considered within the three-month review period.

Q3: How much does a review and litigation cost?

The review request requires the payment of a fee, the amount of which shall be in accordance with the current standards of the China Intellectual Property Administration; if entrusting a patent agency or a lawyer, there will be an additional agency fee, which will vary depending on the technical field and the complexity of the response. After entering administrative litigation, the litigation fees shall be paid in accordance with the provisions of the "Administrative Litigation Law of the People's Republic of China" (amended on November 1, 2014). The first-instance ordinary procedure generally lasts for six months, and the subsequent second-instance proceedings will extend the time and cost. For SMEs, it is recommended to evaluate the investment based on the commercial value of the patent (whether it supports the core product and can fend off competitors) to avoid paying high relief costs for low-value patents.

Q4: How long does it take from the rejection to receiving the results?

The review process typically takes several months from acceptance to decision-making, subject to the review progress of the Patent Administration Department under the State Council. If a party disagrees with the review decision and files a lawsuit, the first-instance ordinary procedure generally lasts for six months (Article 81 of the Administrative Litigation Law of the People's Republic of China, implemented on May 1, 2015), and the second-instance procedure is subject to separate calculation. If a party chooses to re-apply after making amendments, they will need to go through the entire process of acceptance, preliminary review, substantive review, and announcement again, which typically takes several years. Enterprises should choose a path based on the pace of product market launch and initiate the process within a three-month time limit.

Q5: What should I do first after receiving the rejection notice?

First, record the date of receiving the notice. The three-month review period starts from the date of receiving the notice. Failure to do so will result in the loss of the right to request a review. Second, break down the rejection reasons item by item and check with the R&D personnel to verify the comparison documents and the different technical features. Third, prepare two sets of solutions simultaneously: one is a claim reconstruction plan that can be modified within the original application documents, and the other is an alternative plan for splitting the application or reapplying for a new patent. Fourth, evaluate the commercial value of the patent and decide on the depth of investment. Modifications must not exceed the scope described in the original specification and claims, and it is strictly prohibited to introduce new content. It is recommended to entrust professional lawyers and patent agents to handle this matter jointly.

The above content is based on the compilation of judicial practices in the Beijing area. The facts of individual cases and the jurisdiction of the court may affect the conclusions. Welcome to consult Henglue Law Firm for specific situations.

If you are currently facing similar problems, it is recommended that you consult a professional lawyer as soon as possible with the relevant evidence materials, so as to avoid missing the statutory time limits. →Intellectual property protection legal services·Attorney Party Pei·Beijing Henglu Law Firm

Disclaimer: This article is compiled based on the current effective laws and regulations and public adjudication rules, and is for general reference only. It does not constitute a formal legal opinion on specific cases. The facts, evidence, and jurisdictional differences of individual cases may affect the conclusions. If a dispute arises, please consult a practicing lawyer in time.