China: The Main Changes In The Revised Implementing Regulations And The Examination Guidelines

The China National Intellectual Property Administration (CNIPA) released the revised Implementing Regulations of the Patent Law as well as the Patent Examination Guidelines on December 21, 2023. Both the Implementing Regulations and the Examination Guidelines will become effective as of January 20, 2024.

There are significant changes in the Implementing Regulations and Examination Guidelines as compared to the previous version. This version includes important revisions in procedures (such as restoration of priority, incorporation of reference and PTA), designs, pharmaceutical patents, remuneration for inventors/designers of service inventions, etc.

For your easy reference, below we will briefly list the main changes in the revised Implementing Regulations and the Examination Guidelines.

General Procedures

- The 15 days Mailing grace period is cancelled for official communications issued electronically on or after Jan. 20, 2024.
- Incorporation by reference: Within two months from the Chinese filing date of patent application, the applicant may request incorporation by reference all or part of the description or claims recorded in a priority application.
- Restoration of priority: If a Chinese invention or utility model patent application is filed within 12~14 months from the priority date, the applicant can request restoration of the priority within 14 months from the priority date. For PCT applications, if a priority was not restored in the international phase, the applicant can request restoration of the priority within 2 months from the national entry date.
- Addition or correction of priority claim: Provided that a priority has been claimed when filing, the applicant can file a request for addition or correction of a priority claim within 16 months from the earliest priority date.
- Change of inventorship: To add or remove inventor(s), a request shall be submitted to the CNIPA within one month from receipt of Official Filing Receipt.
- Grace period without loss of novelty: The conference in which the invention was disclosed without loss of novelty now includes conferences held by international organizations and recognized by relevant authorities of the State Council. (Note: It is possible that conferences organized by standard setting organizations (SSOs), such as ETSI or ITU, may fall in the scope.)
- Patent term adjustment (PTA) is applicable to a patent that is granted after four years from the filing date and after three years from the date of requesting substantive examination.

Substantive Examination and Re-examination

- The drawings can be in color (also for utility model applications).
- Interlocutory examination on the re-examination request will be conducted by another examiner different from the examiner who made the Rejection Decision. (Note: A department specializing in interlocutory examination may be established in the CNIPA.)

Principle of Good Faith

- The compliance of the principle of good faith in patent prosecution will be examined in the preliminary examination, in the substantive examination if the examiner has evidence or sufficient reasons, and in the reexamination or invalidation proceedings at the request of petitioner or by the Collegiate Panel ex officio. Violation of the principle of good faith is a reason for rejection and invalidation.

Reward and remuneration for inventors/designers of employment inventions (service inventions)

- Reward to inventor/designer of a patent
The minimum money reward for a patent for invention is increased from RMB 3,000 to RMB 4,000, and the minimum money reward for a patent for utility model or design is increased from RMB 1,000 to RMB 1,500, provided that no agreement regarding reward was previously made between the employer and the inventor/designer.
- Remuneration to inventor/designer of a patent
Where the patentee has not provided the remuneration in its internal regulations nor entered into a contract with the inventor/designer of a patent, it shall award a reasonable remuneration to the inventor/designer in accordance with the Law of Promoting the Transformation of Scientific and Technological Achievements. (Note: The remuneration according to this Law may be much higher than the current Implementing Regulations of the Patent Law.)

Computer Implemented Inventions

- Computer program product becomes eligible, which can cover software distributed online since a tangible medium is not required.
- Method involving diagnosis with all steps performed by computer is eligible.

Pharmaceutical Patents

- Patent Term Extension (PTE) is available to product patents, preparation method patents and medical use patents of the active pharmaceutical ingredient (API) contained in a "new drug". PTE = (China marketing approval date – the filing date of the Chinese patent) – 5 years. The maximum PTE is 5 years and the resulting total effective patent term after drug approval for marketing shall not exceed 14 years.
- Special provisions on examination of patent linkage-related invalidation cases are provided.

Utility Models

- The examiner will assess whether a utility model application apparently lacks inventiveness.
- An alleged infringer is permitted to request Patent Evaluation Report for utility model patent.

Designs

a) Partial designs

- Partial design is not patentable if it does not form a relatively independent portion of a product or constitute a relatively complete design unit.
- Partial design is not patentable if it is only a design of pattern, or combination of pattern and color, on the surface of a product.
- Two or more partial designs without inter-connection of the same product may be filed as one design if they are associated in function or in design and create specific visual effect.
- Partial design cannot be included in a design application for products in set.
- Where the initial application is a partial design application, it is not allowed to file a divisional application for the whole product or the other parts of the product.

b) GUI designs

- Applicant may file GUI design application as whole design application or partial design application.
- When GUI design is filed as whole design application, the drawings shall show the whole hardware product with at least one front view showing the GUI.
- When GUI design is filed as partial design application, applicant shall submit a front view of GUI design with the hardware product shown or not shown; if the hardware product is not shown, the title of design shall contain the key words such as "Electronic Device".
- When a part of GUI is to be protected as partial GUI design, the title of design shall indicate the part to be protected, for example: Search Bar in Graphical User Interface for Online Payment of an Electronic Device.
- For animated GUI design application, if necessary, CNIPA may require applicant to submit video file demonstrating the animation of the GUI.

c) International design application through Hague Agreement. As China accedes to the Hague Agreement in 2022, a new part (Part VI) is added in the Examination Guidelines to provide detailed provisions in this regard.

d) An alleged infringer is permitted to request Patent Evaluation Report for design patent.

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.