China: Brighter Prospects For Patent Protection In China

Last Updated: 27 April 2017
Article by Rachel Lu and Ilan Cohn
Most Popular Article in China, April 2017

The State Intellectual Property Office of China (SIPO) has officially approved the proposed draft revisions to its current Examination Guidelines, which are set to come into effect on April 1, 2017. Of particular importance are guidelines relating to examination of patent applications for business method, software-related and chemical inventions. The new guidelines will make it easier to obtain patent protection in these important technological disciplines and should be very welcomed by hi-tech, chemical and pharmaceutical innovators.

In a continuous effort to meet increasing demands of technological innovations and to enhance patent protection thereof, on October 27, 2016, SIPO published proposed draft revisions to its Examination Guidelines, to solicit public opinion. An introduction to some of the draft revisions was included in our previous newsletter1. On February 28, 2017, SIPO announced that the draft revisions have been officially approved and will come into effect on April 1, 2017.

The revisions to the Guidelines deal with a number of aspects. The important ones are those concerning patent applications for business method, software-related and chemical inventions that will be discussed below. The new guidelines may have a profound effect on the ability of innovators in the field of hi-tech, pharmaceuticals and chemistry to obtain a business-wise meaningful patent protection in China.

Guidelines Relating to Patent Applications for Inventions related to Business methods

With regard to business methods, which were formerly classified as a type of "mental activity" and, thus excluded from patent protection under Article 25 of the Chinese Patent Law2, the revised Guidelines3 note that "[i]f a claim related to a business model involves not only content of business rules and methods but also technical characteristics, it shall not be excluded from the possibility of being granted a patent right according to Article 25 of the patent law". Thus, under the new Guidelines, as long as the business method or business model invention comprises certain technical features, it may be patent eligible subject matter.

Guidelines Relating to Patent Applications for Software-related Inventions

According to the revised Guidelines, claims directed to data carriers, i.e., a computer readable storage medium, which embodies computer program or computer code executable by a computer for performing the functionality of a software product, now falls within the category of patent eligible subject matter4.

Apparatus that embodies a software element is another aspect of software-related inventions. The new Guidelines provide that the apparatus "may comprise not only hardware but also computer programs"5. Accordingly, claims directed to an apparatus with a software element do not have to be, necessarily, limited to define a function (namely be in the form of "means plus function") which are usually construed in a more limited manner, but other forms such as "processor plus memory storing computer programs" also become patent eligible.

The bottom line is that the revised Guidelines provide a better regime and improved prospects for obtaining patent protection on software-related inventions in China.

Guidelines Relating to Patent Applications in the Field of Chemistry

In contrast to the current guidelines which stipulate that "examples and experimental data submitted after the filing date shall not be considered"6, the revisions set forth that the examiner shall examine experimental data submitted by the applicant during prosecution. The technical effect to be proved by the post-filing experimental data should be derivable by one skilled in the art from the original disclosure of the patent application. The submission of such post-filing experimental data in responding to objections is common practice in many patent offices but was problematic in China. This revision aims to clarify the long-existing misunderstanding of how post-filing experimental data should be considered during examination.

These revisions are, thus, welcome news to innovators in the field of chemistry and pharmaceuticals, who must, often, rely on such post-filing data to support broad patents.

Conclusion

The above revisions to the Guidelines are positive indications of SIPO's favorable patent protection of business method and software related inventions. It is believed that upon becoming binding guidelines, these revisions may pave the way for better enforceable patent rights in China, and place China as a leading jurisdiction insofar as patents for such inventions are granted.

The above-discussed revisions to the Guidelines and some others, that were not reviewed here7, show the positive attitude of SIPO to patent rights and the ongoing efforts to be in line with, and at times in the forefront of international patent practice. They demonstrate the efforts to keep up with the ever advancing technological innovations, improve the prospects of innovators to obtain and benefit from patent protection in China. Although it remains to be seen how the revised Guidelines will be adopted by Chinese examiners in future practice, innovators should take these positive developments as strong indications for the importance of patent rights in China and the ability to exercise such rights to advance innovative businesses in China. This appears to be one more step in turning China into a center of innovation.

Footnotes

[1] http://www.rcip.co.il/en/article/china-may-become-more-liberal-towards-business-method-and-software-related-patents/

[2] Article 25 of the Chinese Patent Law reads: "Patent rights shall not be granted for any of the following: ... (2) rules and methods for metal activities...".

[3] Revision to Chapter 1 , Part II of the Guidelines

[4] Revision to Chapter 9 , Part II of the Guidelines

[5] Revision to Chapter 9 , Part II of the Guidelines

[6] Revision to Chapter 10, Part II of the Guidelines.

[7] These include increased flexibility of amendments made during invalidation proceeding and increased public access to the prosecution history.

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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