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.
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