A new draft amendment of Patent Examination Guidelines was published on April 4, 2019. The solicitation of public opinions will end on May 5, 2019. There are two significant proposed changes to Chinese practice in this draft. It is quite interesting that such big changes can simply be realized by changing the patent office's examination guideline.
Human Embryonic Stem Cell
The draft amendment allows patents to be granted to some inventions related to human embryonic stem cells. Under the current Chinese practice, such inventions will not be granted patent right due to violation of social ethics according to Article 5 of Chinese patent law. As per the draft amendment, if an invention is to separate or to obtain stem cell from a human embryo which is within 14 days of fertilization and has not gone through in vivo development, it should not be rejected on the basis of violation of social ethics.
Accordingly, human embryonic stem cells and preparation method thereof which is now clearly excluded from patent grant in the Patent Examination Guidelines, is to become patentable subject matter, as the relevant paragraph was proposed to be deleted from the Patent Examination Guidelines. In addition, Under current practice, "human body under various stages of formation and development", such as a germcell, an oosperm, an embryo or an entire human body, shall not be granted patent right. However, it was added in the draft that the human embryonic stem cell does not belong to "human body under various stages of formation and development".
In other words, the intention that some inventions related to human embryonic stem cell will be allowed as patentable subject matter is very clear.
Another interesting change is the newly added "deferred examination". Under the current practice, there is no formal mechanism for an application to defer the examination of a patent application and the subsequent publication of the examination, except to intentionally leaving defects in the application documents and trigger office actions. This sometimes creates problems, as examiners are given time limits to finalize their cases. This also incurs costs to the applicants.
In the draft amendment, it is proposed that an applicant can request for deferred examination for all three types of patent applications. For invention, such a request must be filed at the time of requesting substantive examination. For utility model or design, such a request must be filed at time of filing the application. The examination can be deferred by 1, 2 or 3 year.
If this change becomes firm, it is good news for certain industries where deferred publication of designs is desired, such as auto industry.
There are a good number of other changes included in the draft amendment. Some of the changes are simply clarification of ambiguity in the current guidelines, while others are new.
For example, it was made very clear in the draft that for an assignment of patent right or application right, assignment agreement with signatures or stamps from both assignor and assignee are required.
An interesting change was made to interviews with examiners. Procedurally, under the current practice, interviews are possible only after a first office action has been issued. However, in this draft, this limitation was removed. In other words, examiners may become more flexible to discuss cases with applicants or their attorneys and thus the prosecution of an application may be significantly streamlined if interviews are strategically used by attorneys.
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.