System Of Rejection On New Ground By Patent Reexamination Board Based On Examination Ex Officio

Patent Reexamination Board(PRB) in China has authority to review the result of preliminary examination or substantive examination, if the applicant refuses to accept the decision during the process of patent application and authorization.Under the current system, in principle PRB reviews the refusal on basis of its reason and evidence concerning the public expectation interest. Nonetheless, Patent Examination Guidelines(2010 Revision) have exceptions, that is PRB shall conduct examination ex officio under two particular circumstances, after which PRB has the right to sustain the decision of refusal on new ground with its solid evidence. It draws attention that for the two particular situations, the guidelines have not set up clearer rules, and a series of problems arise. PRB applies rules of the two particular situations based on their own standard and understanding instead of referring to the guidelines owing to its lack of unambiguous interpretation. It is detrimental to applicants when the judgment of examination ex officio solely depends on PRB. In order to help applicants out of this predicament, it is essential to justify the system by seeking whether PRB has the authority to conduct reexamination ex officio and reject the complaint on new ground. If the system is reasonable, some concepts related to this system need to be clarified; if it is not, reformation and improvement of the system are necessary. This is the gist of this article.Specifically, background and scope of the research are first introduced. Question involved in this article is then brought up through two classic cases. Nature of patent reexamination procedure is analyzed from multiple perspectives and the quasi-judicial system is proved to be rational. Rules about examination ex officio and rejection on new ground are also studied, in which the former is significant while the latter demands amelioration. At last, ways to reform the patent reexamination on its quasi-judicial nature are raised and advice to this reformation is offered after the observation of the practices of the US, which can be used as a reference.