The newly amended Guidelines for Patent Examination (“Guidelines”) of the China National Intellectual Property Administration (“CNIPA”) took effect as of 1 November 2019.
Compared with the draft amendments published on April 4 2019, most of the proposed amendments in the draft remain the same or substantially the same, but there are some substantive changes of note such as those regarding GUI designs and deferred examination as outlined below
Update on key content in the Amendments to the Guidelines
1. Amendments in regards to patentability of hESCs (the same as the draft amendments)
An exclusionary rule to the “use of Embryo for industrial or commercial purposes” is added into 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 amended Section 18.104.22.168 of Chapter 10 Part II clarifies that human embryonic stem cells (hESCs) do not belong to human bodies at various stages of formation and development.
2. Amendments regarding an invalidation proceeding (substantially the same as the draft amendments)
The amendments require 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. Deferred examination of a patent application
In the draft amendments, a deferred examination proceeding is introduced for all types of patent applications, but the final amendment excludes utility model patent applications from deferred examination.
For an invention patent application, a deferred examination 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 designs, deferred examination shall be requested at the time of filing the application. The period of deferred examination can be 1, 2 or 3 years depending on the applicant’s request. Where necessary, the CNIPA may terminate on its initiative the deferred examination and notify the applicant.
4. Amendments to filing a divisional application (substantially the same as the draft amendments)
The amendments clarify that the timing for filing a sub-divisional application based on a divisional application objected to for lack of unity shall be examined according to the divisional application lacking unity. The applicants of the sub-divisional application shall remain the same as the divisional application that lacked unity. Failure to conform to the above requirements will cause the sub-divisional application to be deemed as not being filed.
5. Amendments 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 amendments merge the relevant rules in the No. 68 Order and provide further clarification on specific requirements for product names, design images, or photographs.
As compared to the draft amendments, the final amendments provide clearer and more specific requirements for design images and brief descriptions. An applicant-friendly amendment has been made in that in case the essential feature of a design application lies only in GUI, then only the front view showing the GUI is necessary; but if only a front view of a display showing the GUI is submitted, then all the products to which the GUI will be applied shall be listed in the brief description.
6. Amendments to inventiveness evaluation
This section remains the same except that the content regarding “the technical features in the claims that do not contribute to the resolution of technical problems” proposed in the draft amendments has been deleted.
The amendments specifically stipulate that the objective technical problem(s) to be solved should be determined based on the technical effect(s) achievable by the distinguishing technical feature(s) in the invention as claimed. Further, the amendments specify 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.”
The amendments also require that the Examiner shall provide evidence to justify that a technical feature contributing to the solution of a technical problem belongs to common knowledge.
These amendments are expected to help Examiners formulate a correct technical problem to be solved and not reject applications by referring to common knowledge without proof.
7. Amendments regarding to tele-communications between the examiner and the applicant (substantially the same as the draft amendments)
The amendments encourage the examiner and applicant to conduct communication via telephone, email, video conference and/or face-to-face meetings whenever needed during substantive examination.
There are other amendments directed to the requirements of an Examiner’s searching strategy and report formality, etc., which are not shown here.
Should you need any assistance or further clarity regarding the latest amendments to the guidelines for substantive examination, please contact our China team.