During substantive examination in China, an examiner finds that claim 1, directed to a product, lacks an inventive step. May the applicant amend it to claim a process for manufacturing that product in order to overcome the objection?
Under the relevant provisions of Chinese patent law, an amendment from a product claim to a claim for a process of making that product may be accepted when made to overcome a novelty or inventive-step objection. However, the amended technical solution must remain within the scope of the original description and claims.
In re-examination proceedings, the position is different: when responding to a re-examination notification, the requester may not change the claim category. A product claim therefore cannot be changed to a process claim, or vice versa, at that stage.
