On March 1 2017 the State Intellectual Property Office (SIPO) issued its amended Patent Examination Guidelines, which will take effect on April 1 2017. A draft was released on October 28 2016 for public comment and some changes have been made to the final text.

Amendments

Protection of business models One notable amendment is the introduction of a provision concerning the protection of business models. A new paragraph concerning unpatentable inventions has been added to Chapter 1, Part II, which stipulates that a claim involving business models will not be excluded from patent protection if technical features are included elsewhere (ie, other than in the description of the business rule or method). This provision makes it possible to protect a business method under the Patent Law.

Patent applications for computer programs Several amendments have been introduced in Chapter 9, Part II concerning invention patent applications for computer programs. They intend to clarify that a computer program per se is different from an invention relating to a computer program and that, as such, a claim can be made in relation to a media plus computer program flow. The amendments also clarify that a claim made in relation to an apparatus may include a program as a component part. Further, the expression 'function module' has been replaced by 'program module', in order to reflect the technical nature better and distinguish clearly from the expression 'functional definition'. These amendments reflect the SIPO's growing leniency in protecting computer programs under the Patent Law.

Post-filing data The post-filing data provisions (Chapter 10, Part II) have also been amended. The existing provisions that embodiments and experimental data submitted after the filing date will not be considered have been deleted. Instead, a new section on post-filing data has been introduced to specify that the examiner must examine experimental data submitted after the filing date, but that the technical effect shown by the experimental data must – from the viewpoint of a person skilled in the art – be obtainable based on the disclosure contained in the initial description and claims. This amendment seems to indicate that the SIPO has become more lenient towards applicants.

Invalidation requests As regards invalidation requests, Chapter 3, Part IV makes it easier to amend a patent document, specifying that an amendment can:

  • incorporate one or more technical features listed in other claims in order to limit the amended claims' protection scope; and
  • correct obvious errors in the claims.

New invalidation grounds and evidence The provisions regarding the introduction of new invalidation grounds and evidence have also been amended to specify that new grounds concerning claims that have been amended by incorporating technical features listed in other claims or by correcting obvious errors must be limited to responding to such amendments. The provisions specifying that a petitioner can present additional evidence within a specified time limit in response to amended claims by way of a combination have been deleted. As a result of such amendments, patentees will be in a more advantageous position in patent invalidation procedures.

Accessibility to patent application documents As regards accessibility to patent application documents, the scope of the contents accessible to the public provided for by Chapter 4, Part V has been expanded. Anyone may consult and photocopy notifications, search reports and decisions issued during the substantive examination procedure for a patent application under examination, as well as a patent's priority documents.

Suspension of procedures Chapter 7, Part V brings the Patent Examination Guidelines in line with the new Civil Procedure Law, specifying that the SIPO will suspend relevant procedures for the period indicated by a civil order or notification for assistance in execution issued by a people's court in relation to property preservation.

Comment

The amendments reflect the SIPO's increasingly applicant and patentee-friendly attitude and its desire to provide a better service to the public.

For further information on this topic please contact Guangyu Zhang at WAN HUI DA - PEKSUNG IP Group by telephone (+86 10 8231 1199) or email (zguangyu@peksung.com). The WAN HUI DA - PEKSUNG IP Group website can be accessed at www.wanhuida.com and www.peksung.com.

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