Sometimes, when the response deadline is approaching and cannot be extended again, but the Applicant still cannot confirm the amendment manner to the claims, they may try to introduce a limitation into Claim 1, and then later they may opine the limitation is not appropriate due to a variety of reasons such as commercial purposes, will the Applicant have the option of removing said limitation in response to a next office action?

Firs of all, if the Applicant introduces a limitation into Claim 1, and the State Intellectual Property Office (SIPO) issues a Notification to Grant Patent Right, then the Applicant definitely loses the oppurtunity to remove said limitation.

And what will happen if the SIPO issues a Decision of Rejection, Guidlines for Patent Examination, Part IV, Chapater 2, Section 4.2 prescribes as follows: “according to Rule 60. 1, amendments by the petitioner shall be limited only to overcome the defects indicated in the Decision of Rejection or by the Panel. Generally, the above requirement is not considered to be met in the following cases:

(1) where a claim amended extends the extent of protection as compared with the claim rejected in the Decision of Rejection;
(2) where a claim in the amendment is derived from the technical solution that lacks unity with the claims rejected in the Decision of Rejection;
(3) where the type of a claim is altered, or the number of claims is increased; or
(4) where the amendments are directed to the claims or the description that were not involved in the Decision of Rejection, unless they are intended merely to correct obvious clerical errors or to amend the defects of the same nature with that indicated in the Decision of Rejection.”

As can be seen from the above requirements, there is also a risk of being rejected if the Applicant directly deletes the limitation during the reexamination stage.

If the SIPO issue a next office action which is not a Notification to Grant Patent Right or a Decision of Rejection, what are the situations?

Rule 51.3 of Implementing Regulations of the Patent Law prescribes as follows: 

When replying the Office Action, the amendment, if there is, shall be made in answer to the defects as indicated in the Office Action.  

Further, according to Guidelines for Patent Examination, Part II, Chapter 8, Section 5.2.1.3, under the following circumstances, even though the contents of the amendment do not go beyond the scope of disclosure contained in the initial description and claims, the amendment shall not be deemed to be made in answer to the defects as indicated in the Office Action, therefore the amendment shall be unacceptable:

(1) The applicant has removed one or more of the technical features from the independent claim on his own initiative, which leads to the expanding of the extent of protection claimed in the claim.
(2) The applicant has changed one or more of the technical features of the independent claim on his own initiative, which leads to the expanding of the extent of protection claimed in the claim.
(3) The applicant has taken the technical content which is only described in the description and lacks unity with the initial claimed subject matter as the subject matter of the revised claim on his own initiative.
(4) The applicant has added a new independent claim on his own initiative, and the technical solution defined by it is not present in the initial claims.
(5) The applicant has added a new dependent claim on his own initiative, and the technical solution defined by it is not present in the initial claims.

It can be known from the above requirements, if the Applicant introduces a limitation into Claim 1 when responding to the last office action, and the Examiner opines such amendments overcome the issues in last office action, then removing said limitation when responding to a next office action which provides other examination opinions may belong to the above circumstance (1), which may be not accepted by the Examiner.  

According to our experiences, in the situation that the Examiner opines the newly added limitation cannot overcome the issues in the last office action and the next office actions is not a Decision of Rejection, it is possible for us to remove said limitation in response to a next office action.

Therefore, if the Applicant hopes to have more time to consider the response strategy, the Applicant may consider not responding to the office action by the due date of response, waiting for the Notification that Application Deemed to be Withdrawn, and then filing restoration request, the response documents as well as the restoration fee later. Generally, adopting the restoration strategy, we may get another 3~5 months to consider our response strategy.

In addition, please be noted that, the SIPO has no strict standard in evaluating the justified reasons for restoration request. In actual operation, when filing a request for restoration, we just need to simply select the option of the reasons for restoration as “justified reasons” in the request from for restoration, and state the Applicant has paid the restoration fee as well as has filed the related response documents to the office action in this form.