Newly Revised Guidelines for Patent Examination will come into force as of November 1, 2019
On September 25, 2019, the National Intellectual Property Administration of China (CNIPA) announced the latest revision of the Guidelines for Patent Examination (“Guidelines”), and the revised Guidelines will come into effect as of November 1, 2019.
To help patent applicants understand the impact of the revision of the Guidelines on patent protection, here we list some of the amendments which the applicants shall pay special attention to.
1) Timing of Filing:
The revised Guidelines specifies that if an applicant intends to file a further divisional application based on an earlier divisional application, first there shall be a lack of unity rejection raised by the Examiner against the earlier divisional application, and secondly the further divisional application shall be filed when the earlier divisional application is still pending, otherwise the further divisional application will be deemed not to have been filed. That is to say, the lack of unity rejection in an earlier divisional application will no longer enable the applicant to file a further divisional application at any time.
2) Applicant(s) and Inventor(s) of Divisional Application:
It is stipulated that the applicant of a divisional application shall be the same as that of its direct parent application, and the inventors of a divisional application shall be all or part of the inventors of its direct parent application.
For example, for three applications A (initial application), B (a divisional application of A), and C (a divisional application of B), the applicant of B shall be the same as that of A, and the applicant of C shall be the same as that of B; the inventors of B shall be the same as or part of the inventors of A, and the inventors of C shall be the same as or part of the inventors of B.
If an applicant needs to be added or deleted, or a new inventor needs to be added, such change of ownership or inventorship shall be achieved through making changes in bibliographic data after the application is filed.
Change of Ownership
The right to change ownership is one of the basic rights of applicants and patentees. To ensure that the change of ownership is a true intention of the parties concerned, the revised Guidelines sets more prudent and stringent requirements on the documents for change of ownership. Specifically, patent transfer or bestowal contracts must be signed or stamped by both/all parties concerned, and where the supporting documents have defect or conflict with each other, CNIPA will require the parties concerned to provide qualification certificates to verify their identities.
It shall be especially noted that to ensure a smooth transfer or bestowal of patents/patent applications, the names and addresses of the parties concerned shall be consistent with those recorded in official documents such as their business licenses, and during preparation of the transfer or bestowal contracts, the names and addresses of the parties concerned shall also be consistent with those indicated in their qualification certificates.
1) General Principle:
Patent applications are preliminarily examined in chronological order according to the dates when they are filed with CNIPA, and substantive examination on patent applications is also conducted in chronological order according to the dates when the requests for substantive examination are filed and the fees for substantive examination are paid.
2) Prioritized Examination:
Regarding patent applications which involve key industries prioritized by the state and local governments, which are significant for the national interests or public welfare of China, or for which there is certain need in the market, the applicants may file a request for prioritized examination; after such request is approved, priority will be given to the processing of such applications during the examination procedure.
3) Delayed Examination:
For invention patent applications – applicants may file a request for delayed examination at the time of requesting substantive examination;
design patent applications - applicants may file a request for delayed examination at the time of filing design patent applications.
The examination may be delayed for one year, two years or three years from the effective date of the request for delayed examination. After the period of delay has expired, the applications will be put in line for examination.
In addition to the above three points, the revised Guidelines also specially adds a separate section to include contents related to design of products involving graphic user interface, wherein more specific requirements are set for product names and the related drawings or photos, while the requirements for the views of design are simplified; the Examiners’ practice regarding examination of inventiveness is further specified with a view to improving examination quality and efficiency and increasing the number of high-quality patent applications; the Guidelines also further defines the procedures and strategies for patent search, the databases used in patent search and the condition for terminating patent search; the Guidelines expands the window for telephone communication between applicants and examiners, and in addition to telephone, other media may also be used for communication; the Guidelines further clarifies whether human embryonic stem cells are eligible for patent protection, and explicitly states the standard for examination on the combination of multiple evidence in an invalidation procedure.
The above amendments reflect that CNIPA wishes to improve the efficiency and quality of patent examination and meanwhile cooperate closely with patent applicants. It is hoped that through constant adjustments, China’s patent examination system will keep in line with international standards and meantime further meet the needs of China’s innovation market, to help speed up China’s pace in achieving the “Two Centenary Goals”.
For details of the amendments, please refer to CNIPA’s official announcement: