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Notable Points of the New Amendments to the Guidelines for Patent Examination in China

22

NOV

2019

The Chinese National Intellectual Property Administration (CNIPA) published amendments to the Guidelines for Patent Examination on September 23, 2019, and the amendments came into effect on November 1, 2019.

This article will introduce notable points of the amendments from an aspect of how they will potentially affect the applicant. The notable points mainly relate to divisional application, examination criteria on inventiveness, interview and telephone communication, order of examination, examination standard of human embryonic stem cells, and design involving Graphic User Interface (GUI).

  1. Divisional Application

The amendments for divisional application focus on the time limit for filing another divisional application based on a divisional application filed already, and the applicant and inventor of a divisional application.

1.1 Time limit for filing another divisional application based on a divisional application filed already

The Guidelines before the amendments stipulated that, where an applicant files another divisional application based on a divisional application filed already, the submission date of said another divisional application shall be examined according to the initial application with the exception that said another divisional application is filed due to a unity defect in the divisional application filed already. However, the Guidelines did not expressly stipulate the time limit for filing said another divisional application due to a unity defect in the divisional application filed already. Under this circumstance, it may be misunderstood that there is no time limit for filing such a divisional application. In practice, some applicants did try to take advantage of that by filing a divisional application even after all its related applications have been closed.

In order to clarify the time limit for filing such a divisional application, the amendments of the Guidelines stipulate that the submission time of said another divisional application shall be examined based on the divisional application field already with a unity defect, and if the submission time is not satisfied, said another divisional application will be deemed as having not been submitted. According to the amendments, when said another divisional application is filed due to a unity defect in the divisional application already filed, the divisional application filed already should be still pending. Otherwise, said another divisional application cannot be filed or will be deemed as having not been submitted.

1.2 Applicant and inventor of a divisional application

The Guidelines before the amendments stipulated that the applicant of a divisional application shall be the same as that of the initial application, otherwise a document certifying the change of the applicant shall be submitted. With the amendments, “otherwise a document certifying the change of the applicant shall be submitted” is deleted, and it is stipulated that the divisional application will be deemed as having not be submitted if the above requirement is not satisfied. Therefore, according to the amendments, a divisional application cannot be filed with a different applicant from that of its parent application. In practice, if an applicant hopes to file a divisional application with a different applicant, he may request changing the applicant of the divisional application after it is filed.

In addition, the amendments also clarify the requirements of applicants and inventors of another divisional application based on a divisional application filed already. Specifically, it is stipulated that the applicant of said another divisional application shall be the same as that of the divisional application filed already, and the inventors of said another divisional application shall be the inventors or part of the inventors of the divisional application filed already.

  1. Examination Criteria on Inventiveness

The amendments of examination criteria on inventiveness focus on determining the technical problem actually solved by the invention and burden of proof for common knowledge.

2.1 Technical problem actually solved by the invention

In China, the inventiveness of an invention is usually evaluated via a three-step method comprising (i) determining the closest prior art, (ii) determining the distinguishing features of the invention and the technical problem actually solved by the invention, and (iii) determining whether or not the claimed invention is obvious to a person skilled in the art. Determining the technical problem actually solved by the invention is an important part of the three-step method, and is important for determining whether or not the claimed invention is obvious to a person skilled in the art.

The Guidelines before the amendments stipulated that the technical problem that is actually solved by the invention is determined on the basis of the technical effect of the distinguishing features. However, the Guidelines did not define what kind of technical effects that can be used to determine the technical problem. The distinguishing features may have many different technical effects in different scenarios, some of which are not even related to the invention under examination, and thus those irrelevant technical effects are not appropriate to be used for determining the technical problem actually solved by the invention. Therefore, the amendments clarify that the technical problem that is actually solved by the invention shall be determined on the basis of the technical effect of the distinguishing features in the invention to be protected.

After the amendments, the examiner cannot determine the technical problem actually solved by the invention only based on a general technical effect of the distinguishing features or a technical effect of the distinguishing features in a reference. Before the amendments, from time to time, the examiner determines the technical problem based on a technical effect of the distinguishing features in a reference, which inappropriately underestimates the inventive steps of the invention since it becomes more likely to consider the invention and the reference are similar and the technical contribution of the invention may be overlooked under this circumstance. After the amendments, the evaluation of inventiveness of the invention becomes more rational since the technical effect of the distinguishing features in the invention can better represent the contribution of the invention.

In addition, the amendments further stipulate that, for those features which functionally support and interact with each other, they and their relationship should be considered as a whole when determining the technical effect of those features in the invention to be protected. Before the amendments, the examiner sometimes tend to isolate the features which are functionally related and determines the effects of the features independently, which may inappropriately underestimate the inventive steps of the invention since the combination effect of those features in the invention may be overlooked when considering them separately. After the amendments, the examiner is refrained from the inappropriate isolation of features when evaluating the inventiveness of the invention.

2.2 Burden of proof for common knowledge

In practice, the examiner uses common knowledge to evaluate inventiveness of the invention very frequently, and it is very common that the examiner raises common knowledge based objection without citing any evidence. Such manner actually leaves the applicant with burden to prove a feature is not common knowledge, which is usually very hard to be satisfied.

In view of that, the amendments of the Guidelines suggest that the examiner should first consider providing evidence rather than only stating the reasons when claiming common knowledge by amending “where the applicant has objections to the common knowledge cited by the examiner, the examiner shall state the reasons or provide corresponding evidence for proof” as “Where the applicant has objections to the common knowledge cited by the examiner, the examiner shall provide corresponding evidence for proof or state the reasons”. In addition, the amendments indicate a scenario where the examiner shall usually carry the burden of proof for common knowledge by adding the stipulation of “if the examiner determines a feature which contributes to the solving of the technical problem in the claims as common knowledge, usually the examiner should provide evidence to prove it.” According to this stipulation, usually the examiner shall not simply determine the feature of inventive points to be common knowledge without evidence.

With the amendments for the examination criteria on inventiveness, the inventiveness of the invention may be evaluated more reasonably and objectively.

  1. Interview and Telephone Communication

Generally, the amendments of this part encourage the examiner to communicate with the applicant through all kinds of ways, such as interview, telephone communication, video teleconference, email etc., to improve the examination efficiency.

3.1 Interview

The timing limit for interview is cancelled. The applicant can request an interview at any time during the substantial examination procedure, rather than only after receiving the first office action.

In addition, the amendments stipulate a general principle that the examiner shall approve a request for interview if the interview can reach a beneficial purpose, and if the interview can be beneficial to clarify issues, eliminate disputes, or promote understanding. With this principle, it will be more likely for an applicant to get a chance to interview with the examiner. There are still some circumstances where the examiner can reject the interview request anyway, for example, where both sides’ opinions have been sufficiently expressed and the related facts are clearly determined through a written method, telephone discussion, etc.

3.2 Telephone communication

The amendments to the part of telephone communication cancel the restrictions of the content that can be discussed through a telephone communication, and add more communication forms in addition to telephone communication, such as video teleconference and email.

In particular, the amendments delete the previous stipulation of “the communication by telephone shall apply only to minor issues and non-misleading issues concerning the formal defects”, and change “The examiner may discuss the problems in the application documents with the applicant by telephone” into “The examiner may discuss the understanding of the invention and the prior art, the problems in the application documents, etc. with the applicant by telephone.”

  1. Order of Examination

The amendments of the Guidelines adjust the regulation for the order of examination, which includes a general principle, prioritized examination, and delaying examination.

4.1 General principle

As a general principle, usually the preliminary examination of patent applications shall be started in the order of submission time of the applications, and the substantial examination of invention patent applications shall be started in the order of submission time of request and fee for substantial examination of the invention patent applications.

4.2 Prioritized examination

Prioritized examination can be applied to special applications such as those related to industries promoted by Chinese government, and the detailed rules are stipulated in another regulation document published by the CNIPA, which is called “Regulations for prioritized examination of patents” and came into effect before the amendments of the Guidelines.

It needs to be noted that the amendments especially stipulate a situation in which prioritized examination does not apply. That is, for the scenario where the same applicant files an invention application and a utility model for the same invention creation on the same date, the examination of the invention application will usually not be prioritized. The reason is that the same invention creation has been protected by the utility model which can be granted very quickly and thus it is not necessary to urge the examination of the invent application.

4.3 Delaying examination

Delaying examination is a procedure newly added in the Guidelines. According to this new procedure, the applicant may request delaying examination for invention applications or design applications. The delaying examination request for an invention application shall be submitted when submitting the substantial examination request for the invention application, and the delaying examination request for a design application shall be submitted when filing the design application. The delay period can be 1, 2 or 3 years from the validation date of the delaying examination request. During the delay period, the application will not be examined. When the delay period expires, the application will go into the queue to be examined according to the above-mentioned examination order.

Delaying examination allows more space for applicants to consider and implement their patent strategies.

  1. Examination Standard of Human Embryonic Stem Cells

The amendments of the Guidelines relax the examination standard in the field of human embryonic stem cells examination. Particularly, the amendments specify that human embryonic stem cells do not belong to the human body at various stages of development, and if the invention creation is to isolate or acquire stem cells by using human embryos that have not undergone in vivo development and are within 14 days from fertilization, the invention cannot be rejected on the grounds of “violating social morality”. In addition, the amendments delete the stipulation of “human embryonic stem cells and preparation methods thereof fall within the unpatentable scope as stipulated by Article 5, Paragraph 1 of Patent Law”.

After the amendment, human embryonic stem cells are excluded from the definition of the human body at various stages of development and human embryos that have not undergone in vivo development and are within 14 days from fertilization are excluded from the definition of human embryos, which gives more space to be granted with respect to the inventions on human embryonic stem cells and preparation methods thereof. According to the current patent practice, the tendency of patent examination is relaxed with the development of the technology of human embryonic stem cells. Therefore, life science-related company shall adjust patent application strategy in advance in order to early lay out for the market.

  1. Design Involving GUI

The amendments for design involving GUI include many specific requirements for the design name of the product, the pictures or photos of the design, the brief explanation, and the patentable scope for design involving GUI.

However, the most important point in the amendments is that a design application may only present an orthographic view of the display screen panel containing the GUI rather than present drawings of the whole products to be protected, and names of the products to be protected can be listed in the brief explanation. After the amendments, one design application can incorporate many kinds of products with the same GUI, and the designs of the parts other than the GUI part can be different. For example, in a design application, the filed drawing can merely show the orthographic view of the display screen panel containing GUI, and a brief explanation states that the GUI can be applied to mobile phones and computers. In such a way, this design application can be applied to both mobile phones and computers. In contrast, before the amendments, at least one drawing of the whole product to be protected shall be presented even if only the GUI is the design point, and thus usually only one kind of product can be incorporated in one design application.

The above change of the examination guidelines for design involving GUI will surely have important impacts on applicants’ application strategy for designs involving GUI. In addition, this change may relieve practical difficulties in protection of design involving GUI under the circumstance that part design is not patentable in China. In practice, a GUI design may be used in various kinds of products with different hardware designs. However, before the amendments, a design patent involving GUI shall define both designs of the GUI and the hardware part of a specific product. Therefore, the design patent cannot be effectively enforced since the GUI may be used in a different kind of product or a product with different hardware design, which usually does not infringe the design patent although the same GUI is used. In contrast, after the amendment, a design patent can only substantially define the GUI, and the applied products can be merely listed by names without defining their specific hardware designs. Under this circumstance, the protect scope of the design patent is substantially broadened, and it will be reasonably considered as infringing the patent if the same GUI is used in a product listed in the design patent regardless of the hardware design of the product.

The above is an introduction to the notable points of the new amendments to the Guidelines, which intent to solve important issues in practice, and potentially will put substantial impact on practice. Liu Shen will keep up-to-date and provide the client with well-informed advice.

Authors:

Jinlin Chen

Partner | Patent Attorney | Attorney at Law

Mr. Chen is an Attorney-at-Law and Patent Attorney with Liu Shen & Associates. He qualified as an attorney-atlaw in 2009 and as a patent attorney in 2011. Mr. Chen joined Liu, Shen & Associates in 2010. He specializes in patent prosecution, invalidation and infringement dispute resolutions before CNIPA and the courts, and counseling on patent issues in the fields of Optics, Electrics & Electronics, Telecommunication, Computer Science, Semiconductor technology among others.

Weihui Zhang

Partner | Attorney at Law | Patent Attorney

Mr. Zhang started his legal profession in 2002 with Liu, Shen & Associates and he has been representing domestic and international clients for many years. He focuses on all aspects of intellectual property matters, ranging from patent application preparation and prosecution, patent reexamination, patent invalidation and litigation, freedom-to-operate, legal opinion, to due diligence, patent portfolio management, technology transfers, licenses, and strategic alliances, copyrights, and trade secrets. In addition, Mr. Zhang also has a rich experience in the protection of Plant New Varieties.

About the Firm

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Address 10/F, Building 1, 10 Caihefang Road, Haidian District, Beijing 100080, China.
Tel 86-10-6268 1616
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