On April 4 2019, the China National Intellectual Property Administration (“CNIPA”) publishes the draft amendments to the Guidelines for Patent Examination (“Guidelines”) and requests for public feedbacks of any suggestions on amendments to be sent to the CNIPA. Substantive changes relate to the patentability of certain hESCs, examination of prior art combinations in an invalidation proceeding, and a new late review proceeding for a patent application. The draft amendments also include clarifications on the timing and formality requirements on the applicant for filing a divisional application, examination of GUI patents, substantive examination regarding inventiveness, Examiner’s burden of proof for common knowledge etc., and encourage tele-communication between the examiner and the applicant by removing certain limitations.
The amendments to the Guidelines was initiated in 2017, with purposes to improve the efficiency of the examination system, develop the examination practice to suit the rapid growth of economy and technology as well as public demands, and clarify and optimise the examination procedures.
Main contents of the draft amendments to the Guidelines
1. Amendments with regard to patentability of hESCs
The proposed amendments add an exclusionary rule to the “use of Embryo for industrial or commercial purposes” in Section 3.1.2 Chapter 1 of Part II, clarifying that if a stem cell is isolated or obtained from a human embryo within 14 days of fertilization that has not undergone in vivo development, an invention made by using such a stem cell will be excluded from being an unpatentable subject matter which can be rejected on the grounds of “violating social morality.” Correspondingly, the draft amendments also delete Section 184.108.40.206 of Chapter 10 Part II in the current Guidelines, and clarify that human embryonic stem cells (hESCs) do not belong to human bodies at various stages of formation and development.
2. Amendments with regard to an invalidation proceeding
This part of proposed amendments requires that in the invalidation procedure, if the requester submits multiple prior art documents and indicates two or more ways of prior art combination, one major combination shall be indicated for examination by the panel. If such a major combination is not indicated, the first combination of prior art will be considered as the main combination.
3. Late review of a patent application
The proposed amendments introduce a late review proceeding for examination of a patent application. For an invention patent application, a late review can be requested at the time of requesting the substantive examination and will take effect from the effective date of the substantive examination request. For utility models and designs, late review shall be requested at the time of filing the application. The period of late review can be 1 year, 2 years or 3 years depending on the applicant’s request.
4. Amendments with regard to filing a divisional application
The proposed amendments clarifies that the timing for filing a divisional application based on a divisional application objected for lacking unity shall be reviewed according to the divisional application lacking unity and the applicants of the secondary divisional application shall remain the same to the divisional application lacking unity. Failure to conform to the above requirements will cause the secondary divisional application to be unacceptable or deemed as not being filed.
5. Amendments with regard to design patents for GUIs
In March 2014, the CNIPA revised the Guidelines by issuing the No. 68 Order to include products that display Graphical User Interfaces (GUI) after power-on as a subject matter of design patents. The draft amendments merge the relevant rules in the No. 68 Order and provide further clarification on specific requirements for product names, design images, or photographs.
6. Amendments with regard to substantive examination regarding inventiveness
The proposed amended Guidelines further clarify the practice regarding substantive examination regarding the inventiveness of an invention. The draft amendments clarify that “…For technical features that functionally support each other and have an interactive relationship, the technical effects achieved by the technical features and the relationship between them in the claimed invention should be considered as a whole…” and “…the technical features in the claims that do not contribute to the resolution of technical problems do not affect the evaluation of the inventiveness of the technical solutions defined by the claims.” The proposed amendments also clarify that if the Examiner considers that a technical feature contributing to solve the technical problem is common knowledge in an Office Action, he or she will have an obligation to provide the relevant evidence to prove it.
7. Amendments with regard to tele-communications between the examiner and the applicant
The proposed amendments encourage the examiner and the applicant to conduct a telephone discussion for technical matters or defects in the application whenever needed during substantive examination in order to improve the quality and efficiency of patent examination. It is also clarified that for any amendments agreed by the examiner during a telephone discussion, the applicant shall submit a formal written document reflecting the agreed amendments.
The deadline for submitting feedbacks to the CNIPA is May 5, 2019. Please contact us if you need our assistance in submitting any suggestions. We will continue to monitor developments and provide insight as needed. Please contact our China team for any additional information or for assistance with you IP needs in China.