China: How To Navigate Preliminary Examinations

Last Updated: 15 April 2014
Article by Freder J. Shen and Jenny J. Li

The latest developments to China Patent Examination Guidelines came into force on October 15th, 2013. To be specific, some amendments were made with respect to the provisions of the preliminary examination on the Chinese utility model and design patent applications. The main contents of the amendments, reasons for making such amendments, and the trends of the examination results are briefly introduced here, along with further advice on possible measures for an applicant(s) in relation to the amendments.

1. Contents of the Amendments

a. Regarding the Chinese utility model patent application

Back to the Guidelines for Patent Examination before the amendments, it was prescribed that "During the preliminary examination, the examiner generally does not determine on search whether a utility model is obviously lacking of novelty, but may determine on the information of related prior art or conflicting applications obtained not through search".

However, according to the new Guidelines for Patent Examination implemented from October 15, 2013, "generally does not determine on search" and "obtained not through search" in the above are deleted. Instead, it is prescribed that "during the preliminary examination, the examiner examines whether a utility model patent application is obviously lacking of novelty or not, and may determine such on the obtained information of related prior art or conflicting applications".

Furthermore, in the Guidelines for Patent Examination before the amendments, it was prescribed that "during the preliminary examination, whether a utility model patent application may obtain a patent right or not, according to Article 9, shall not be examined through search in general. However, if the examiner knows that there is an applicant who has filed a patent application for the identical invention-creation, he should conduct the examination".

However, according to the new Guidelines for Patent Examination implemented from October 15, 2013, "shall not be examined through search in general" in the above is deleted and in addition, it is prescribed that "during the preliminary examination, the examiner may examine the utility model patent application based on the obtained information of the patent application or patent of the identical invention- creation to determine whether or not a utility model patent application meet the requirement of Article 9 of the Chinese Patent Law".

b. Regarding Chinese design patent application

Back to the Guidelines for Patent Examination before the amendments, it was prescribed that "during the preliminary examination, the examiner usually does not conduct search and normally judges whether the design application obviously does not meet the requirements of Article 23.1 only on the basis of content of the application document and common sense of the normal consumer. The examiner, however, may judge whether the design obviously does not meet the requirements of Article 23.1 on the basis of the information, which is not resulted from search, concerning prior design or conflicting application".

However, according to the new Guidelines for Patent Examination implemented from October 15, 2013, "shall not be examined through search in general", "only on the basis of content of the application document and common sense of the normal consumer" and "which is not resulted from search" in the above are deleted and in addition, it is prescribed that "during the preliminary examination, the examiner examines whether the design application obviously does not meet the requirements of Article 23.1. The examiner may examine whether the design patent application obviously does not meet the requirements of Article 23.1 on the basis of the obtained information of relevant prior design or conflicting application".

In the Guidelines for Patent Examination before amendments, it was further prescribed that "during the preliminary examination of a design patent application, the examiner normally does not take the initiative to search and examine whether the application for design can be granted the patent right or not according to the provisions of Article 9. Nevertheless, where the examiner knows that one or more applicants have filed patent applications for the identical design, the examination shall be conducted".

However, according to the new Guidelines for Patent Examination implemented from October 15, 2013, "normally does not take the initiative to search" in the above is deleted and in addition, it is prescribed that "during the preliminary examination of a design application, the examiner may examine whether the design application meets the requirements of Article 9 based on the obtained same design application".

2. Reasons for the amendments and the trends of examination

According to the Guidelines for Examination before the amendments, generally speaking, there is no need to conduct a search for the Chinese utility model or design patent applications during the preliminary examination thereof. Under such circumstances, the examination on whether the Chinese utility model patent application is obviously lacking of novelty or the Chinese design patent application obviously does not meet the requirements of Article 23.1 is seriously limited which will cause some patent applications to fall into the scope of prior art or prior design abnormally granted for patent rights, and which even may result in double patenting issues for some patent applications. The granting for patent right on such patent applications degrades the quality of the patents obtained from the preliminary examination system. It sets up obstacles for the enforcement of the really valuable Chinese utility model and design patents, and may even cause undesired judicial proceedings or quasi-judicial proceedings, disordering the current judicial or quasi-judicial practice to some extent. Obviously, this is not in conformity with the desirable legislative purpose of the system of utility model and design patent established in China.

However, in the amended Guidelines for Patent Examination, the definitions such as "generally does not determine on search" and "obtained not through search" regarding the preliminary examination system on the Chinese utility model and design patent applications are deleted. According to the newly implemented Guidelines for Patent Examination, in the examination on whether the Chinese utility model patent application is obviously lacking of novelty or whether the Chinese design patent application obviously does not meet the requirements of Article 23.1, the examiners are encouraged to seek for the information about prior art or prior design and the possible conflicting application(s) in a variety of ways. At the same time, during the examination on whether there exists patent applications for identical invention- creation, the examiners are encouraged to seek identical creation-invention via various paths, so as to avoid more than one patent right which is granted for identical patent applications.

From the above, it is to be understood that after the amendments, advanced requirements are established for the preliminary examination system of the Chinese utility model and design patent applications. According to the newly implemented Guidelines for Patent Examination, during the preliminary examination of the Chinese utility model and design patent applications, besides the examination on whether the formality requirements for the filing documents are satisfied. The examiners are also encouraged to conduct search via various paths for seeking information about prior art or prior design, possible conflicting application(s) and possible identical creation-invention so they can conduct an examination on whether the application is obviously not in conformity with the regulations of the Chinese Patent Law. The amendment aims to enhance the standard of the preliminary examination on the Chinese utility model and design patent applications and to improve the quality of the granted patents.

In the current practice, we have noticed that the ratio of a search for prior art has dramatically increased for the Chinese utility model patent applications. Office actions have been issued with respect to obvious lacking of novelty and our office has seen that typically 1~ 3 references were cited.

It can be seen that, under the preliminary examination system regarding the examination on the Chinese utility model and design patent applications, the examiner would put an emphasis on the examination of "being obviously lack of novelty", "obviously belonging to prior design", or "there exists conflicting application or identical invention- creation". Therefore, they will enhance examination standard and the quality of granted patents.

3. Advice on an application before filing

Compared with the Chinese invention patent application, the Chinese utility model or design patent applications may be granted for patent right only through a preliminary examination without a substantive examination. Such preliminary examination system greatly shortens the examination period that the applicant may obtain a corresponding patent right and thus implements his patent right more quickly. Therefore, more and more foreign and/or domestic applicants have been paying much more attention on the filing of the Chinese utility model or design patent applications.

It is to be understood, from the above mentioned amendments on the Guidelines for Patent Examination, that the quality of the draft of the utility model patent application or that of the design of the design patent application needs to be enhanced.

It is suggested that when preparing a Chinese utility model or design patent application, the applicant may sufficiently learn the situation of prior art or prior design and even conduct a brief novelty search on the technical solution or design to be protected. Based on these, we could obtain a preliminarily judgment as to whether the technical solution or design to be protected is obviously allowable or not.

Especially for the Chinese utility model application, during the drafting of the claims, it is quite important to construct a proper layout for the claims and to define a reasonable protection scope there for. For the draft, the independent claim(s) shall be distinguished from the prior art at least based on the sufficient common knowledge on the latter, while an obviously unreasonably broader protection scope shall be avoided. The improvement on the technical solution defined by the independent claim(s) may be further defined in the dependent claims in a stepwise manner. The applicant may configure a number of possible alternatives or variants in the specification so as to sufficiently support the general definitions in the Claims.

4. Conclusion

The above amendments on the provisions of preliminary examination system on the Chinese utility model and design patent applications sufficiently reveals the determination of SIPO to further improve the quality of patent application and granted patents and enhance the protection of patents, which is in consistent with the spirit of Several Opinions of SIPO on Further Improving the Quality of Patent Applications issued by SIPO on December 18, 2013. Further, for an applicant, due to the increasing improvement of the Chinese patent examination system, the obtained patent rights would be more stable, and the cost for patent right protection would be reduced.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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