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Linda Liu & Partners

 
China’s substantive examination procedure is typically conducted in the written form. However, if the patent examiner requires a deeper understanding of the patent application in order to advance the prosecution, a personal or telephone interview is allowed. The State Intellectual Property Office of the P.R.C. (“SIPO”) Guidelines for Examination (“Guidelines”) outlines relevant issues governing such personal and/or telephone interviews. According to the SIPO Guidelines, telephone interviews “shall apply only to minor issues and non-misleading issues concerning the formal defects.”[1] Yet, in practice, the examiner usually does not refuse discussion of “substantive issues.” On the other hand, the SIPO Guidelines regarding personal interviews are much stricter. This article discusses the complexities in how to obtain a personal interview.

While other countries may allow personal interviews between the applicant and the patent examiners, the requirements in China make it very difficult to hold such a meeting. With this reality in mind, this article introduces provisions regarding the personal interview under the SIPO Guidelines, and discusses some possible situations that may be encountered in practice. Ideally, this article will serve as a reference for intellectual property practice conducted in the Chinese market.

The following table contrasts provisions regarding the personal interview in China with those of the Japanese law to illustrate differences in the processes (mainly shown from the highlighted parts).
 

With regard to some of the above issues, the following paragraphs briefly discuss some possible situations that may be encountered in practice.
 
*1 Interview Timing

According to the SIPO Guidelines, the interview shall be held after the examiner has issued the first Office Action. If the patent application has entered the substantive examination procedure upon the applicant’s request without receipt of the first Office Action from the examiner, the applicant cannot request an interview. However, in Japan, the applicant can request an interview as long as a request was filed for substantive examination.

In practice, the best time for the applicant to request an interview is after receiving the Office Action and before making a response to the Office Action, or after making a response to the Office Action so as to explain relevant issues to the examiner. To increase the likeliness of the examiner’s approval of the interview request, the applicant may attempt to speak with the examiner on the phone in advance.
 
*2 Interview Request

In general, China has very strict requirements on the interview procedure. According to the SIPO Guidelines, when the applicant requests an interview, the determination of whether to allow an interview is at the discretion of the examiner. If the examiner believes the interview will be useful, the applicant’s request will be approved; otherwise, the request may be refused.

In practice, for a foreign applicant, the applicant’s patent attorney files the request for an interview. If a foreign applicant applies for an interview, the Director of the Examination Division or Director-General of the Examination Department determines whether to grant the request. Therefore, a foreign applicant shall file a request in advance to avoid timing issues. Leaders from the Examination Department usually will approve the request if it is necessary. Unlike China, in Japan, staff members of the Intellectual Property Department may also request an interview.
 
*4. Interview Content

The SIPO Guidelines do not explicitly restrict the interview content. However, in practice, the interview covers technical or legal matters. These matters typically include questions of: novelty, inventive step, and whether the amendment introduces new contents. Due to the specificity of interview content, the information is usually extremely detailed and dense.

Additionally, in practice, the examiner or applicant shall mention new documents during the interview only if the new documents were provided to the other party beforehand. Otherwise, the examiner may discontinue the interview. Thus, to avoid disadvantageous results, the applicant must be diligent about providing the required documents to the appropriate parties. Unlike China, under the Japanese law, the interview content shall only include issues related to the content of the application.
 
*6. Interview Participants

According to the SIPO Guidelines, which are followed in practice, when a patent agency is appointed by the applicant, the patent attorney shall participate in the interview. If the applicant changes the patent attorney, the applicant shall go through the formality of changing the bibliographic data. Subsequently, the new patent attorney shall then participate in the interview. Once the patent attorney is appointed or selected, no other patent attorney shall participate in the interview.

Moreover, the SIPO Guidelines also limit the number of people present at the interview on behalf of the applying party. Usually, each party shall have no more than two additional people present at the interview. To be effective, those people selected to participate in the interview must be knowledgeable and useful to the party’s position. Unlike China, Japan does not have such strict provisions on qualified interview participants or the number of interview participants.
 
*9. Interviews for Related Applications

The SIPO has no provision on interviews for related applications. Since only one examiner is designated for examination of one application, it is suggested to avoid requesting an interview for related applications. However, unlike China, Japan allows the interview for related applications.
 
The above is a brief discussion of the personal interview under China’s substantive examination procedure. Face-to-face communication is very beneficial for the applicant for purposes of accurately explaining the integral technical solutions, details, and effects of the invention to the examiner. Additionally, as China adopts the “first to file” principle, during the interview with the examiner, the applicant can only make an argument or statement to the examiner based on the scope of the disclosure contained in the description and claims of the original application document. Contents outside the scope of the original disclosure will not be heard by the examiner. Therefore, accuracy, comprehensiveness and clarity of the original application document are the most important factors for obtaining the scope of protection desired by the applicant. This is particularly important because the scope of the initial disclosure dictates what content can be used during the subsequent examination, a reexamination, and/or an invalidation or litigation procedure after the application is filed. Moreover, such clarity allows the examiner to more accurately, comprehensively and specifically comprehend the content of the invention. This in turn advances the prosecution more efficiently in the direction desired by the applicant.

To be clear, unlike Japan and other countries, even if the applicant in China requests an interview at the appropriate time, the examiner has the discretion to accept the request. There is a large probability for the examiner to refuse the request. Therefore, the applicant, especially the foreign applicant, should be very meticulous regarding the interview request.

Despite the uncertainty associated with obtaining an interview, it still may be more advantageous for an applicant to interview in person as opposed to in writing. The face-to-face interview provides the applicant with a second layer of protection that is not embedded in the written form. For many, the ability to articulate the technical aspects of the patent application determines whether the application will successfully advance through the examination process.
 

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