Did you encounter the patent reexamination procedures of both parties when applying for a US patent? The U.S. patent reexamination procedure is a procedure for U.S. patent application, which is different from the patent application procedure in my country. Let us first understand what the U.S. patent reexamination procedure is. Inter partes review procedure (IPR) is a new patent invalidation procedure introduced in the United States in the America Invents Act (AIA) promulgated in September 2011. The invalidation procedure is conducted at the Patent Trial and Appeal Board (PTAB) of the USPTO. IPR applicants can only request invalidation of patent rights based on patents and printed publications that do not involve novelty or inventive step. Compared with invalidity litigation in federal district courts, IPR procedures have the advantages of speed, lower cost, high success rate of patent invalidation, and convenience for settlement, and have been widely used in recent years. The system design of the U.S. IPR procedure is very similar to my country's patent invalidation procedure. Therefore, the modification requirements for patent documents in the U.S. IPR procedure have certain reference significance for my country. Legal Provisions and Practice The provisions on the modification of claims in IPR proceedings in the US AIA Act are reflected in Article 316(d): (d) Modification of claims. 1. In summary: During the inter partes reexamination proceedings in this chapter, the patentee may file a motion to amend the claims in one or more of the following ways: A. Delete any challenged claim; B. For each challenged claim challenge the claims and replace each challenged claim with a reasonable number of claims. 2. Other motions: Other motions to amend the claims may be allowed when the petitioner and the patentee make a joint request to substantially advance the settlement of proceedings under Section 317 or when permitted by regulations prescribed by the Director. 3. Scope of claims: Amendments to this section cannot expand the scope of protection of patent claims or introduce new subject matter. The Federal Administrative Regulations Amendment of the patent further stipulates Article 316(d) of the AIA: 1. It is clear that the patentee has only one right to propose amendments, and unless the PTAB stipulates a specific deadline, it shall not be later than the time when the patentee submits a reply. , that is, the deadline is within 3 months after the Director decides to initiate the review process between the parties. 2. This amendment does not respond to the involved basis of non-patentability; it may not expand the scope of claim protection or introduce new subject matter. 3. A reasonable number of alternative claims. It is assumed here that each challenged claim only needs to be replaced with one claim. The patentee can rebut by explaining the necessity of substitution. 4. For each modified or substituted claim, the patentee shall state that it can be supported by the original description. It is worth noting that the USPTO has recently revised some provisions of the existing IPR procedures, involving font and page number requirements, evidence requirements, and also made some adjustments to additional evidence collection. When submitting alternative claims, the USPTO particularly emphasizes that the patentee must prove that the alternative claims are valid relative to the prior art, and that the scope of the alternative claims is narrower than the original claims. These new regulations came into effect on May 2, 2016. The following two cases are helpful in understanding the modification requirements in the IPR procedure. Taken together, the U.S. IPR procedure actually imposes higher requirements on the modification of patent documents. These requirements include not only procedural requirements, but also substantive requirements. In the revision of my country's "Patent Examination Guidelines" involving invalidation procedures, one of the original intentions of the revision is to moderately liberalize the way patentees can modify patent documents, that is, to allow the addition of one or more items recorded in other claims to the claims. technical features to narrow the scope of protection and allow obvious errors in the claims to be corrected. Compared with the United States, the patentee's space or possibility to modify the patent document during the invalidation procedure will be significantly greater.

Since different countries are at different stages of development, it is absolutely necessary to have different considerations for the modification requirements of patent documents during the invalidation procedure. my country's direction of gradually relaxing restrictions on modification methods during the invalidation stage is consistent with my country's current development stage of strengthening rights protection. , and also matches the fact that my country’s invalidation procedure allows the petitioner to submit more types of evidence than the U.S. IPR procedure.