Introduction
Many applicants treat a patent rejection as the end of the application.
That conclusion may be premature.
This article focuses primarily on invention patent applications rejected during substantive examination for lack of novelty or inventive step.
A rejection decision is not merely a notice stating that the application has failed. It normally records the examination history, identifies the relevant claims and prior-art references, and explains why the examiner considers the current application unacceptable.
Under Chinese patent law, an invention application is generally rejected only after the applicant has been given an opportunity to present observations or amend the application and the examiner still considers that the legal defects remain. A rejection decision must explain the facts, reasons and evidence supporting the conclusion.
The decision should therefore be read as a detailed problem statement rather than only as a negative result.
1. What a Rejection Decision Tells You
When an application is rejected for lack of novelty or inventive step, the decision usually addresses two important questions.
Where Is the Current Claim Scope Vulnerable?
If the examiner concludes that a claim lacks novelty, the examiner considers that one prior-art reference discloses all the required technical features of that claim, either expressly or in a manner recognised under the applicable examination standards.
The applicant should then examine:
Whether the cited reference qualifies as prior art;
Whether it actually discloses every claimed feature;
Whether the disclosure is direct and unambiguous;
Whether the priority date has been assessed correctly; and
Whether the original application contains additional features that could distinguish the invention.
If the examiner concludes that a claim lacks inventive step, the examiner accepts that differences may exist but considers those differences obvious to a person skilled in the art.
The applicant should then examine:
How the closest prior art was selected;
Which distinguishing features were identified;
What technical problem was considered to be solved;
Whether the cited references provide a reason to combine their teachings;
Whether the proposed combination would encounter technical difficulties; and
Whether the claimed solution produces an unexpected or improved technical effect.
Inventive step should be assessed on the basis of the claimed technical solution as a whole, rather than by treating each distinguishing feature in isolation.
Which Direction May Still Be Available?
The rejection decision also provides a map for the next stage.
By studying the examiner’s prior-art references and reasoning, the applicant may identify:
A weakness in the examiner’s interpretation;
A missing technical feature;
A lack of motivation to combine the cited references;
A technical prejudice or implementation difficulty;
A technical effect that was not adequately considered; or
Additional features in the original application that may support a narrower claim.
The rejection decision does not establish that the examiner’s reasoning is necessarily correct. It establishes the reasoning that must be addressed.
2. Do Not Read Only the First Page
Applicants sometimes focus only on the sentence stating that the application has been rejected.
The most useful information is usually contained in the reasoning that follows.
A proper review should identify:
Which claims were rejected;
The legal ground applied to each claim;
The prior-art documents relied upon;
The examiner’s claim-to-reference comparison;
The distinguishing features recognised by the examiner;
The technical problem adopted in the inventive-step analysis; and
The applicant’s previous arguments and why they were not accepted.
Technical personnel should also participate in this review.
Patent counsel can analyse the legal standards, claim language and procedural options, but the inventors and engineers may be better placed to explain why two structures operate differently or why a proposed combination would not work in practice.
An effective response often depends on combining legal analysis with technical evidence.
3. The Reexamination Deadline
An applicant who disagrees with a rejection decision may request reexamination within three months from the date of receipt of the decision.
The reexamination procedure is both a remedy against the rejection and a continuation of the patent examination process. The applicant must state the reasons for requesting reexamination and may submit supporting documents where appropriate.
The three-month period should be treated as a firm case-management deadline.
A decision on whether to request reexamination should not be delayed until the final days, because sufficient time may be needed to:
Review the cited prior art;
Reconstruct the examination history;
Discuss technical differences with the inventors;
Prepare claim amendments;
Develop inventive-step arguments; and
Collect test data or other supporting materials.
4. A Practical Four-Step Response
After receiving a rejection decision, applicants can follow four practical steps.
Step 1: Review the Decision Objectively
A rejection can be commercially disappointing, but an immediate emotional response does not improve the application.
The first task is to understand exactly what has been rejected and why.
The applicant should separate three questions:
Is the examiner’s factual comparison correct?
Is the examiner’s legal reasoning correct?
Can the original application support a better claim position?
These questions should be answered before deciding whether to request reexamination.
Step 2: Verify the Prior Art
Each cited document should be reviewed independently rather than relying only on the examiner’s summary.
For novelty, determine whether one reference discloses all the claimed technical features.
For inventive step, determine whether the references actually provide a technical reason to arrive at the claimed solution.
Relevant questions may include:
Does the reference disclose the feature in the same technical context?
Would the proposed combination change the operating principle of the reference?
Are the references directed to incompatible objectives?
Would a skilled person have a reason to make the proposed modification?
Does the claimed invention achieve an effect not suggested by the references?
A strong reexamination request should respond to the actual rejection logic rather than merely repeat the arguments submitted during substantive examination.
Step 3: Review the Original Disclosure
Applicants should determine whether the original description, claims and drawings contain additional technical features that could be introduced into the claims.
Any amendment must remain within the scope of the original disclosure. During reexamination, amendments should also be directed to removing the defects identified in the rejection decision or the reexamination notice.
Possible amendment strategies may include:
Adding an essential structural relationship;
Defining a particular operating sequence;
Introducing a technical parameter supported by the original application;
Limiting the claim to a specific technical scenario;
Combining related dependent-claim features; or
Clarifying the relationship between components.
The objective should not be to narrow the claim without direction. Each amendment should create a legally meaningful distinction while preserving commercially useful protection.
Step 4: Assess the Business Value
Even where legal arguments are available, the company should consider whether reexamination is commercially justified.
Relevant considerations include:
The importance of the product;
The remaining commercial life of the technology;
The scope likely to be obtained after amendment;
The possibility of competitor design-arounds;
The cost of reexamination and later prosecution;
The availability of other related applications; and
Whether newer improvements deserve separate protection.
A technically defensible argument may still have limited business value if the resulting claim would be too narrow to protect the company’s actual product.
5. When a Rejection May Be Challenged
Reexamination may be worth pursuing where:
The cited reference does not disclose all features of the claim;
The examiner has interpreted a technical term too broadly;
The prior-art documents address different technical problems;
There is no clear motivation to combine the references;
The proposed combination would require substantial reconstruction;
The claimed technical effect has not been properly considered;
The examiner’s reasoning relies heavily on hindsight; or
The original application supports a commercially meaningful amendment.
For example, an examiner may argue that reference D1 can be combined with reference D2 to obtain the claimed invention.
The applicant should not respond only by stating that the invention is different. The response should explain why a skilled person would not have made that combination, why the combination would not produce the claimed structure or effect, or why the claimed technical contribution goes beyond an ordinary modification.
6. When a Rejection Is More Difficult to Overcome
Some rejection decisions identify fundamental problems.
A particularly difficult situation arises where one valid prior-art reference directly and unambiguously discloses every technical feature of the core claim.
If:
The document was publicly available before the relevant filing or priority date;
Its prior-art status is not disputed;
It discloses all claimed features; and
The original application contains no further distinguishing technical content,
the available reexamination space may be limited.
Even in this situation, the applicant should still verify:
The publication date;
The relevant priority date;
Whether the disclosure is complete;
Whether the cited embodiment actually contains the claimed relationships;
Whether the reference is enabled;
Whether any statutory novelty exception applies; and
Whether the original application contains another independently protectable solution.
The existence of a prior-art document should not automatically end the analysis, but the applicant should also avoid pursuing reexamination without a credible legal or technical basis.
7. The Risk of an Applicant’s Own Disclosure
An applicant’s own publication may sometimes become prior art against a later patent application.
For example, a research team may publish a paper describing the core technology and file a patent application only afterwards.
If the publication occurred before the filing date and does not fall within an applicable statutory exception, it may affect novelty or inventive step.
Where the paper discloses all the technical features of a claim, the problem may be difficult to cure through argument alone.
This is why patent filing should generally be coordinated with:
Academic publications;
Product launches;
Exhibitions;
Sales activity;
Customer demonstrations;
Marketing materials; and
Online disclosure.
Patent review should take place before technical information is made publicly available.
8. What Happens During Reexamination?
Reexamination generally focuses on the reasons and evidence relied upon in the rejection decision.
However, the reviewing panel may also consider certain other defects, including obvious substantive defects or defects of the same nature as those identified in the rejection, where necessary to resolve the case correctly.
Possible outcomes include:
The rejection decision is maintained;
The rejection decision is revoked because its reasoning is not legally sustainable; or
The rejection decision is revoked because an amended application has removed the identified defects.
Where the rejection is revoked, the application generally returns to the original examination department for further examination. Revocation does not necessarily mean that a patent will be granted immediately.
Applicants should therefore prepare a reexamination request that not only attacks the rejection but also supports a workable path toward continued prosecution.
9. Reexamination or a New Application?
Reexamination and a new patent application serve different purposes.
Reexamination asks whether the rejection of the existing application should be maintained.
A new application may be appropriate where later research has produced a genuinely new technical solution that:
Was not disclosed in the rejected application;
Has not yet been publicly disclosed;
Solves the problem through a different technical approach; and
Independently satisfies the requirements for patent protection.
New technical content cannot simply be added to the rejected application if it exceeds the original disclosure.
Accordingly, a company should distinguish between:
Defending the original invention through reexamination;
Narrowing the existing claims using originally disclosed content; and
Filing a separate application for a later improvement.
These options may sometimes be used in parallel, subject to the relevant legal and procedural requirements.
10. A Practical Rejection Review Checklist
After receiving a rejection decision, applicants should ask:
What is the three-month reexamination deadline?
Which claims were rejected?
Was the rejection based on novelty, inventive step or another ground?
Which prior-art references were relied upon?
Does one reference disclose every feature of the claim?
Is there a genuine reason to combine multiple references?
Were the claimed technical effects properly considered?
Does the original application support a useful amendment?
Would the amended scope still protect the commercial product?
Are there later improvements that should be filed separately?
Does the commercial value justify further prosecution?
What technical evidence is available to support the response?
Conclusion
Patent grant is a positive result, but a rejection decision can also provide valuable information.
It identifies:
The prior art considered relevant;
The examiner’s interpretation of the claims;
The weaknesses in the current claim scope;
The reasoning that must be addressed; and
The possible direction for amendment or reexamination.
The correct response is not to assume that the application is hopeless, nor to request reexamination automatically.
The applicant should read the decision carefully, verify the prior art, review the original disclosure and assess the commercial value of the available options.
A rejection is not always the end of the patent strategy. It is a formal decision that makes the current problems visible and allows the applicant to decide, with greater clarity, whether the application should be defended, amended or replaced by a better filing strategy.
For assistance with Chinese patent rejection analysis, reexamination proceedings or claim-amendment strategy, contact the Reehor IP team.
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