China's (mostly) improved guidelines launched

The Chinese Patent Examination Guidelines have been revised with yet another set of major amendments in two years. The China National Intellectual Property Administration (CNIPA) has made many welcome changes, including on the examination of inventiveness (practitioners will especially appreciate guidance not to jump to – uninformed – conclusions on what is the technical problem to be solved or what is common general knowledge), interviews with examiner, and permitting delayed examination. The revisions came into force on 1 November 2019. Toby Mak (Overseas Member), our regular contributor on what is happening in China discusses all the changes made by the CNIPA.

Revisions to China's patent examination guidelines

On 4 April 2019, CNIPA published various proposed revisions to the Chinese patent examination guidelines (the "guidelines") to solicit public opinion.  The final version of the guidelines was published on 23 September 2019, and became effective on 1 November 2019.  e revisions are:

  1. Clarifying the requirements on timing of filing a further divisional from an already filed divisional.
  2. Requirements on changing the applicant and/or the inventor when filing a divisional application.
  3. Requirements in relation to assignments submitted to CNIPA.
  4. Stipulations on the figures and brief description submitted in respect of design patent application for a graphical user interface (GUI).
  5. Changes to allow inventions involving technologies for separating or obtaining stem cells from human embryo fertilized within 14 days without any in vivo development.
  6. Examination of inventiveness.
  7. Stipulations on patent searches.
  8. Provisions on holding an interview with examiner.
  9. Setting default rules regarding the presentation of a combination of references in respect of inventiveness in an invalidation petition.
  10. Changes in the sequencing of examination, and including delayed examination.

(a) Clarifying the requirements on timing of fi ling a further divisional from an already filed divisional  The revisions are as below:

  1. the time of  ling the further divisional will be examined based on the already  led divisional (changed from "the  ling date of the further divisional application shall be examined according to the divisional application having the unity defect" in April 2019); and
  2. deleting the requirement to submit a copy of the office action with unity objection or a divisional notice to effect the filing of the further divisional.

Comments: For readers not aware, there is a restriction on  ling a further divisional from an already  led divisional in China, that the further divisional from the already  led divisional may only be  led when a unity objection is raised in the already  led divisional, not unlike the now abandoned practice in the EPO.

On the other hand, it should be noted that as long as the parent application is still pending at CNIPA, any number of divisionals, as desired, may be  led from the pending parent application (while the above restriction on a divisional from an already  led divisional still applies).

It is unclear in the wordings of the current guidelines whether the unity objection is from the parent application or from the already filed divisional application. Revision (1) clarifies that the unity objection is from the already filed divisional application, which is a welcome change. While it should be understood that the deadline of  ling the further divisional should be during the pendency of the already  led divisional, there are opinions suggesting that the time limit of  ling the further divisional to mimic that of the parent patent application, i.e. by the deadline of paying the grant fees, or as long as the already  led divisional is pending, including during appeal of a rejection at the Beijing IP Court. 

The proposed revision (2) is another welcome change such that it is no longer necessary to submit a copy of the office action with unity objection or a divisional notice to effect the filing of the further divisional. At present, failure to submit these would result in the rejection of the filing of the further divisional.

(b) Stipulations on changing the applicant and/ or inventor when fi ling a divisional application 

The revisions are as below:

  1. For any divisional (including a further divisional from an already filed divisional), the applicant must be the same as that of the parent application. Otherwise, the divisional will be deemed not to have been filed. (In April 2019, the above revision was applicable only to a further divisional from an already filed divisional.)
  2. e inventors of a further divisional from an already filed divisional can be some of the inventors named in the parent application. Naming other person(s) as inventors would result in the issuance of a correction notice.

The following two revisions in the April 2019 proposal were deleted in the final version:

  • If the applicant of the parent application is to be changed, the divisional application should be filed after recordal of the assignment of the parent application is completed.
  • If the applicant of the divisional needs to assigns its rights, the assignment must be recorded at the time of or after filing of the divisional.

Comments: At present, when the applicant of the divisional is different from that of the parent application, the guidelines require that the examiner issues a notice requesting submission of proper documents, for example an assignment.

It is not clear what the purpose of (1) is, other than discouraging the filing of divisionals. In particular, (1) is damaging as the divisional would be deemed not to have been filed because different applicants were named. However, this is not difficult to get around – just change the applicant after the divisional is filed. (2) is a welcome change to parallel the same requirements for a divisional filed based on a parent application.

(c) Stipulations on assignment submitted to CNIPA 

The proposed changes are as below:

  1. It is now specified that the assignment shall be signed or stamped by the assignor(s) and the assignee(s)
  2. If necessary, the examiner shall examine the qualification of the assignor(s) and the assignee(s). Exemplary circumstances include:
    1. the assignor(s) and/or the assignee(s) has an objection to the assignment;
    2. there have been multiple  filings of documents that contradict each other;
    3. the signature or stamp of the applicant or patentee in the assignment is inconsistent with that recorded in the application/patent.

Comments: US practitioners particularly dislike (1), as this would prevent an US assignment, which only needs the assignor's signature, to be directly used in China. However, although (1) was not specified in the current guidelines, the law in China requires anyway that an assignment can only become effective with the signatures or stamps of both the assignor(s) and assignee(s), and CNIPA does not accept US assignments singed only by the assignor. Therefore, like it or not, this is a done deal.

(2) has raised a lot of concerns. It appears that the examples of (i) to (iii) have happened before, leading to suspicions from CNIPA. While (ii) makes sense, it is not clear how (i) can operate, as CNIPA at present does not notify the assignor when an assignment is  led by the assignee, or vice versa, and therefore, the parties would not necessarily inform CNIPA before the registration of the assignment is finished at CNIPA. (iii) is also problematic, as different authorized signatories may well execute the documents as time goes by, for example due to changes in staff/management. Therefore, it was suggested removing (2) such that CNIPA accept contracts of assignment or gift at face value with the applicant being allowed to correct mistakes, allowing courts to resolve disputes over title or to punish any fraudulent activity, which was not adopted by CNIPA.

(d) Stipulations on figures submitted in a GUI design patent application

The proposed changes are as below:

  1. It will no longer be required to submit at least one view of with the GUI on a "complete product" (for example on a computer monitor or on a smartphone).
  2. e title of the design has to indicate the main use of the GUI and the product to which the GUI is applied, and whether the GUI is dynamic
  3. Various stipulations on how the changes of a dynamic GUI should be shown, for example including key frames that uniquely show the changing animation.
  4. e brief description of the GUI design should indicate the product on which the GUI is used. If necessary, the area of the GUI on the product, the manner of human-machine interaction, the variation states for dynamic GUI, and so on could be included.

Comments: (1) would be welcomed by the design applicants/ patentees, as this could avoid the GUI from being put on a specific "complete product", which would narrow the resulting protection scope.  ere have been cases that noninfringements were found because of this, which may have triggered this change.

(2)-(4) appear to be introduced to deal with practical issues which have arisen when examining GUI design applications in the past five years since the allowance of protection of GUI design in 2014.

(e) Changes to allow inventions involving technologies for separating or obtaining stem cells from human embryo fertilized within 14 days without any in vivo development 

The changes are self-explanatory.

Comments: It should be noted that the following would still be non-patentable subject matter in China:

  • stem cells obtained from human embryo fertilized within 14 days with any in vivo development; and
  • stem cells obtained from human embryo fertilized 15 days or above, even without any in vivo development.

While these changes will be welcomed by stem cell researchers, this may create the issue of artificially creating human embryos for stem cell extraction – just do it quickly would be fine, according to the above proposal. I would not be surprised, sadly, that there would be lines of people selling sperms and eggs in China to achieve that. Whether this is ethically acceptable could be a big debate.

(f) Examination of inventiveness 

The proposed changes are:

  1. e determination of technical problem to be solved by a distinguishing feature should be based on technical effect of the distinguishing feature in the claimed invention.
  2. For technical features that functionally support and interact with each other, the technical effect of these technical features and their relationship in the claimed invention shall be considered as a whole.
  3. When the applicant challenges an assertion that a feature belongs to common general knowledge, the examiner should provide evidence to support the assertion. If a feature that contributes to solve a technical problem is alleged by the examiner to be common general knowledge, the examiner is required to provide evidence.
  4. When studying an invention by reading the current specification, the following should be done:
    1. fully understand the overall situation of the background art;
    2. emphasis should be put on understanding the technical effect produced by the technical solution; and
    3. further figuring out the improvement to the invention as compared with the background art.

The following that was proposed in April 2019 has not been added to the final revisions in September 2019:

  1. Technical features in a claim that do not contribute to the solution of the technical problem do not influence the determination of inventiveness of that claim.

Comments: Before I provide my comments, let me share my general view of how Chinese examiners do their work at present. In general, I picture them as people wearing red underpants on the outside with a big "P" on their chests, believing that they are the last line of defence against evil patent applicants to protect the public interest. In short, they intend to do whatever is convenient to object to a patent application. In practice, Chinese examiners consider everything not disclosed by the prior art is either equivalent to another thing in a reference (sometimes even twisting the words in the reference to match those in a claim, i.e. the examiner says the wordings are from the reference, but in fact the wordings are from the claim the examiner objects to), or is conventional (without any evidence, of course).

Under the current practice of CNIPA examiners on determination of the technical problem to be solved by the claimed invention and regarding determining whether a technical feature of a claim contributes to the solution of the technical problem, they do whatever they like and feel convenient. Specifically, it is typical for a Chinese examiner to arbitrarily assert a technical problem to be solved by a distinguishing feature, apparently to object to the inventiveness of a claim more easily, totally ignoring the technical problem recited in the specification. For example, in one case I handled, the examiner identified that the operation parameters were not disclosed by the cited reference.  e examiner then asserted that the technical problem to be solved is "how to adjust the method of producing the relevant products", ignoring that the specification recites the technical problems solved by these changes in parameters including higher purity and less pollution.  at is why I consider the above revisions (1), (2), and (3) are huge improvements.

However, regarding (1), my view is that this is still not enough. To prevent the examiner from arbitrarily asserting a technical problem to be solved by a distinguishing feature, I suggest further specifying in the guidelines:

"... with priority given to the technical problem solved by the invention recited in the specification, and/or pointed out by the applicant in a response to an examination report, unless otherwise proven."

I proposed this to CNIPA in April 2019, but unfortunately it was not adopted.

Regarding (3), it is to be welcomed that examiners must provide evidence if they assert that a feature that contributes to solve the technical problem, i.e. a distinguishing feature of the claim from the prior art, is common general knowledge.

Regarding (4), it is interesting to note that "the background art" was specifically referred to. It is not clear whether this is intentional, such that the analysis should be based on the background of the invention recited in the specification, or this refers generally to the prior art. If it is the former, this would make the background of the invention section in the specification much more important than before. In any event, the background of the invention should always be drafted with care.

Regarding the removed revision (a), the following example was provided in the draft in April 2019:

"An invention of a camera is directed to improvement to the shutter of the camera, for example relating to the structure of the shutter or timing control of exposure to light. Even if other inherent parts of the camera such as lens, viewfinder, and the like were incorporated into the claims, these inherent parts have no relevance to the technical problem on the improvement to the shutter of the camera, and thus belong to the technical features which do not make any contribution to the solution of the technical problem of the improvement to the shutter of the camera."

While the above appears to make sense, at the same time this could contradict with (2) above. Specifically, the above already presumes that "other inherent parts of the camera such as lens, viewfinder, and the like" has no relevance on the improvement to the shutter of the camera. I am glad that (a) has been removed.

Further, during examination, when considering inventiveness, a person skilled in the art is a genius, but when switching to the topic of support/sufficiency/clarity in the exact same application, the same person skilled in the art suddenly becomes an idiot.  is issue of double standards was not addressed in the current proposed amendments. My view is that the current guidelines already have clear definition on who is a person skilled in the art, which is in line with the international norm.  e problem is that this standard is not complied with properly by many examiners.]

(g) Stipulations on patent searches

There are many changes, for example specifying the databases to be used, including China Patent Abstract Database (CNABS), World Patent Abstract Database (SIPOABS), Derwent World Patent Index Database (DWPI) for patent literature, as well as the Internet.

Comments:  ese changes appear to be introduced to deal with practical issues that have arisen during patent searches.  The requirements are very lengthy, and are a manual on how the examiner should devise keywords, what databases should be covered, how a search strategy should be revised, and so on, in a step-by-step manner.  The requirements try to ensure the search is as comprehensive as possible, for example covering standard and industry protocol databases, and using the Internet.

(h) Stipulations on interviews with examiners

In short, the proposed changes allow Chinese examiners to conduct personal interviews to discuss substantive matters related to the understanding of an invention and the prior art during the examination of an invention patent application. Further, in addition to telephone interviews, discussions through video conferences, emails and other means is allowed. However, the revisions also allows examiners to refuse interview requests from applicants.

Comments: At present, during substantive examination of an invention patent application, an examiner is allowed to conduct only telephone interviews, and only on minor issues and non-misleading issues concerning formal defects.  There is no point calling an examiner to try to discuss substantive matters, as the examiner is not allowed to.

It is encouraging to see that I am finally officially allowed to talk to an examiner about substantive matters of an application, or even make demonstrations. On the other hand, I would not be surprised if an examiner refuses to do so, as this would increase their workload.

(i) Setting of default regarding presentation of combination of reference against inventiveness in an invalidation petition

The changes specify that in an invalidation petition, the most important manner of combining references (for inventiveness attack) specified in the petition would be compared and analyzed first. If most important manner of combination is not specified in the petition, the first combination in the petition will be considered as the most important manner of combination by default.

Comments: I believe these changes were introduced due to invalidation petitioners changing their mind on the above issue during hearing.  e above changes are sensible, as a after all the Re-examination and Invalidation Department of the Patent Office (RID, formerly known as the Patent Re-examination Board) has to find a starting point for inventiveness attack with multiple combinations of references.  e message is: if you do not give us one, we are going to use the default.

(j) Changes on order of examination 

The major changes are as below:

  1. The order of preliminary examination for invention patent, utility model and design patent is generally in accordance with the order of the filing of the application.
  2. The order of substantive examination for invention patent application is in accordance with the order of the filing of the request for examination.
  3. For applications having great significance to the interest of the State or the public, it is possible to prioritize the examination of these applications upon request of the applicant or the competent authorities concerned. However, for applications in which both invention patent and utility model application have been filed (on the same day to avoid double-patenting), no priority on examination will be given.
  4. Delay of examination of an invention patent application or design patent application from between one and three years may be requested by the applicant. For an invention patent application, the request for delay of examination shall be filed at the filing of the request for examination. For a design patent application, the request for delay of examination shall be filed at the filing of the design patent application. While CNIPA could remove the delay on its own initiative, the revised guidelines do not specify whether the applicant is allowed to lift the delay.

Comments: At present, the only way to accelerate examination of a Chinese invention patent application filed by a foreign applicant is by PPH. Although (3) would be a welcomed change, this is less attractive than PPH as it is subject to CNIPA's determination on whether the application has great significance to the interest of the State or the public.

(4) is another welcome change. At present there is no formal mechanism to delay the examination of an invention patent application. As the readers may be aware, there are numerous reasons to delay examination, for example maintaining pendency of a parent application as long as possible to retain the chance to file divisionals voluntarily to cover various important commercial aspects of an invention.

Conclusion

It could be noted that many of the above proposed changes are practical and should be welcomed by applicants and practitioners. In particular, the following changes are encouraging, at least to me:

  • Changes to allow inventions involving technologies for separating or obtaining stem cells from human embryo fertilized within 14 days without any in vivo development.
  • Examination of inventiveness.
  • Stipulations on interview with examiner.
  • Changes on order of examination,  and permitting delay to examination.

The implementation of these changes is expected to bring the practice at CNIPA closer to the international norm.

On the other hand, measures on divisionals, particularly further divisional from an already filed divisional, and on assignments are worrying.  e message I got is the filing of divisional is not welcomed.

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.