To adapt to the rapid development of new technology, appeal to the new requirements for the rules and modes of patent examination imposed by innovation subjects, and improve the quality and efficiency of patent examination, the CNIPA decided on a revision of the Guidelines for Patent Examination which has been released and would come into force as of November 1, 2019. We have just attended the official information session on the revision hosted by CNIPA.
Human’s ESC now deemed patent eligible
As the new Guidelines clarifies, the embryonic stem cells of human are not excluded as ineligible subject matter for patent protection.
New option of requesting deferred examination in invention and design applications
Upon the deferring request, the examination can be delayed by 1 year, two years, or three years. The deferring request shall be filed when requesting substantive examination for invention applications, and be filed upon filing design applications.
The applicant can opt in the deferred examination if the accompanying substantive examination request would be filed as of November 1, 2019.
For invention applications, this could allow more time for the applicant to customize claims features. For design applications, this means deferred publication of the design. Please be advised, however, that the request for deferred examination could not be withdrawn by the applicant once filed.
Possible enhanced protection for GUI
GUI protection might be enhanced by relaxing the requirements on illustrating the product carrier of the GUI. Per the new Guidelines, it seems that GUI patent can now protect a GUI on its display screen panel, and only the orthographic view of the display screen panel is required to be filed. In the past, the front view of the product carrying the GUI is required (e.g., the front view of a refrigerator, rather than the view of the GUI part on the refrigerator).
Possibly easier interviews with the examiner
In the past, CNIPA was very cautious in approving face-to-face interview with the examiner. However, per the new Guidelines, the added wording implies that both face-to-face interview and phone interview with the examiner are encouraged for the purpose of streamline prosecution. However, as in the past, the examiner may still change his mind after the interview as compared to what has been orally agreed on during the interview.
Less discretion when asserting the innovative claim feature as common knowledge
The new Guidelines adds that the examiner usually needs to provide evidence when he asserts the claim feature contributing to the technical problem solving is common knowledge. We have talked with a few examiners, who informed us that they are waiting for internal orders on how to comply with the wording change. We expect the examiner would be more cautious in the common knowledge allegations.
Explicit timing for filing the second-generation divisional applications
The new Guidelines now clarifies that, if the first-generation divisional receives a unity rejection, the second-generation divisional must be filed when the first-generation divisional is still pending.
For your easy reference, we also provide a literal translation of certain parts of the revision.
Amendment to Section 3.1.2 of Chapter 1, Part II
A new paragraph is added following the second paragraph of Section 3.1.2 of Chapter 1, Part II, which goes as below: However, where an invention-creation isolates or collects stem cells from human embryos within 14 days after fertilization and without development in vivo, it shall not be rejected on the grounds of being contrary to social morality.
Amendment to Section 9.1.1 of Chapter 10, Part II
Original Section 184.108.40.206 is amended as Section 220.127.116.11, with the following sentence added to the end of this section: Human embryonic stem cells do not pertain to human body at the various stages of its formation and development.
Request for Examination
The applicant may file a request for deferred examination for a patent application for invention or design. The request for deferred examination for a patent application for invention shall be filed at the same time with the request for substantive examination of the applicant and comes into effect as of the effective date of the request for substantive examination. The request for deferred examination for a patent application for design shall be filed along with the design application. The deferred period may be 1, 2, or 3 years since the effective date of the request for deferred examination. When the deferred period expires, the application will be examined according to the examination process. If necessary, the patent office may initiate the examination procedure at discretion and notify the applicant that the term of the deferred examination requested by the applicant terminates.