China’s State Intellectual Property Office (SIPO) recently released amendments to its Guidelines for Patent Examination (2010), which will take effect from 1 April 2017.
The revised sections make either important clarifications or confirm practice changes, especially with regard to the patentability of business methods and computer-implemented inventions. The revised Guidelines further confirm a change in examination practice of supplementary experimental data submissions after original filing in the field of chemistry.
The revision widens the opportunity to make allowable amendments in invalidation proceedings and broadens the contents of the patent files available through file inspection.
Finally, it introduces changes in the time lines for the suspension of patent office procedures in view of civil court proceedings.
The most important changes are outlined below:
- Business methods and computer programs
In recent years Government officials have shown a strong intention to broaden patentable subject matter that can be protected by patents in the area of business methods and computer-implemented inventions.
The revised Guidelines have confirmed this observed intention and changes have been made in the wording to ensure a broader examination approach by the patent office is consistently followed.
For business method-related inventions the Guidelines now state: “if a claim involving a business model contains not only matter of business rule or method but also technical features, the claim shall not be excluded from patentability” (Part II, Chapter 1, Section 4.2).
Even though a business method per se is still not an eligible subject matter for a patent, the addition of appropriate technical features (usually features of a physical nature) to the claims will overcome immediate rejections of non-statutory matter for such inventions.
For computer-implemented inventions, the Guidelines emphasise (Part II, Chapter 9, Section 2) that computer programs recorded on media are only strictly excluded from patentability if they relate to computer programs per se. Apparatus claims for computer-implemented inventions may contain computer programs as their components (Part II, Chapter 9, Section 5.2). Again, the effect is that certain claim formats that have been previously at risk to be rejected as non-statutory matter without further examination, must now be thoroughly examined and may be granted giving broader protection for software inventions. This will provide patentees with better enforcement opportunities.
- Supplementary data submitted during prosecution in chemical cases
Experimental data submitted after the date of filing for chemical inventions has also been a topic for many discussions with the SIPO in recent years, and such data has been widely refused to be acknowledged by Chinese examiners, especially in invalidation proceedings.
This very strict principle is now softened by allowing examiners to look at later submitted supplementary data (Part II, Chapter 10, Section 3.4) under specific conditions. Such data will be examined and be considered to judge the sufficient disclosure of a chemical invention, if the technical effects proven by the supplementary experimental data are those that can be “obtained from the disclosure of the application by one skilled in the art”.
This amendment provides opportunities for arguing against a potential rejection of cases for lack of sufficient disclosure by submitting data supporting the original disclosure. The mentioned examination standard may however still exclude many forms of supplementary data submissions to be considered by the examiner and applicants are better advised to not rely on such submissions. This change also does not resolve other open questions related to late submission of experimental data for other reasons, e.g. with regard to supporting an inventive step based on an effect merely mentioned but not supported by originally filed experimental data in the description.
- Amendments during invalidation
During invalidation the patentee has been limited in their ability to amend claims in the proceedings. Claims could only be amended by deletion of claims, combination of claims or deletion of a technical solution from a claim. This has led to severe difficulties defending an attacked patent by amending the claims.
Now, any narrowing technical feature from another claim can be included in a claim in an amendment and obvious errors can be corrected (Part IV, Chapter 3, Section 4.6.2).
It is noted that it is still not allowable to draft new narrowing claims as an amendment during invalidation, if not covered in the granted claims of the patent. In this regard it is important to note that it is preferential to have more claims granted during prosecution, also including narrow claims, as a reservoir for amendments in case the patent is later challenged in invalidation proceedings.
- File inspection before patent grant
In the past file inspections of Chinese patent applications, which have been published but not yet granted, were limited to documents of the preliminary examination.
Such limitations will now be removed and notifications, search reports and decisions issued to the patent applicant in the substantive examination proceedings will also be accessible (Part V, Chapter 4, 5.2).
This amendment will make file inspections of pending Chinese applications more meaningful by giving access to all office actions and allows interested parties to make better judgements in regard to freedom-to-operate analysis even though applicant’s responses are still not included to be open for file inspection.
- Suspensions of proceedings
The duration of suspension periods for patent office proceedings in view of parallel civil court proceedings will be handled more flexibly. Suspension periods will be adapted to the orders of the civil court.
The current revision of the Guidelines affects the patent prosecution practice of several technology areas and includes general improvements such as access to a more complete file wrapper for pending applications.
Patent applicants should carefully check whether the changes can be used in their filing and prosecution strategies to not miss out on the opportunities provided by the revision.