On March 1, 2017, the State Intellectual Property Office of China ("SIPO") of China announced formal amendments to its Patent Examination Guidelines.
The formal amendments are almost the same as the version SIPO previously published for public comments last year. The amendments will take effective as of April 1, 2017 (and it remains to be clarified whether and how the amendments will be retrospectively applied to existing patent applications and patents).
Overall, the amendments are pro-patent owners. The most
important amendments include (1) a rule allowing the patent owner
to add to a claim one or more individual features from the other
granted claims during an invalidity action, and (2) rules to allow
more leeway to draft claims for software patents.
Below is a summary of the major amendments and our comments.
1. Narrowing a claim during an invalidity action
Amendments: During an invalidity action, the
patentee can add to a claim one or more features from other claims
as granted. If the patent owner does such an addition, the
invalidity challenger should be given a chance to add new grounds
of invalidation toward the amended claims, but the challenger
cannot cite new evidence to support the added grounds and can only
rely on evidence previously submitted.
Comments: This amendment will give patent owners
more flexibilities to amend the claims during invalidity actions,
beyond the current option of combining two or more full claims into
one or cancelling an alternative option from a claim. The
patent owner still needs to ensure that the amendment does not
introduce new matter. On the other hand, the amendment does
not go as far as allowing the patent owner to add a feature from
the specification to a claim.
2. More options to draft claims for software patents
Amendments: It is made clearer that while
"computer programs per se" are not patentable, inventions
related to computer programs can be patentable. Various
specific amendments further allow applicants to draft claims in the
following manners:
(1) medium plus computer programs; and
(2) apparatus claims defined by both hard ware components and
computer programs.
Comments: Currently applicants can only present
the following 3 types of claims: (1) method claims, (2) apparatus
claims defined with means-plus-function features that strictly
correspond to the steps of the method claims, and (3) a system
comprising memory and a processor configured to perform certain
functions according to computer instructions stored in the memory
(some examiners could object to this type of claims). The
amendments provide 2 more options and are certainly welcome.
3. Eligibility of business methods
Amendments: If a claim recites both features about
business methods and technical features, the examiner shall not
reject the claim on the grounds that the claim relates to
"rules and methods for mental activities" under Article
25 of the PRC Patent Law.
Comments: This amendment does not carry much
practical effect. Currently, examiners already seldom invoke
Article 25 to reject such claims, but would perform a prior art
search, compare the claim with the prior art and then reject the
claim on the grounds that the distinguishing features are merely
about business methods with no technical contribution and thus the
claim is not inventive. This amendment likely will lead
examiners to issue such an inventiveness rejection more
consistently.
4. Supplement experimental data for chemistry inventions
Amendments: Examiners should consider and examine
supplemental experimental data submitted during examination, and
the technical effect to be proven by the data should be derivable
by persons in the art from disclosures of the subject application
under examination.
Comments: This amendment is also a positive
development, and it is in response to some judgments and rules made
by the Beijing Higher People's Court and the PRC Supreme
People's Court. Some examiners actually have started to
admit and consider such supplemental data, and this amendment
likely will help unify the practice among examiners. The
amendment again highlights the need for applicants to disclose in
the specification possible effect, result and benefits the subject
invention may bring.
Also, officially the amendment relates only to the examination of
disclosure sufficiency by the specification. It is not clear
how the examiner should treat such data if an applicant submits the
data to prove that his invention is superior over the prior art and
thus is inventive (some examiners currently are willing to consider
such data under the guidance from the Beijing Higher People's
Court and the PRC Supreme People's Court).
5. Time limit for a property preservation
Amendments: When the People's Court issues a
property preservation order to the Patent Office to suspend and
preserve the status of a patent or a pending application, the
Patent Office should follow the time limit set by the court's
order.
Comments: This refers to the scenario where SIPO "freezes" its proceedings on a patent application or a patent when there is an ownership dispute before the court. Currently the freeze will last a fixed 6-month period, which may not match the time period needed by the court. The amendment will now peg the freeze to the time period specified by the court, which is more reasonable and operable.
2017-03-06
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