The State Intellectual Property Office (SIPO) of China officially released the Announcement of Amendments to the Guidelines for Patent Examination (No. 2), the Amendments) on November 27, 2008. The Amendments took effect on January 1, 2009.
The Amendments amend two provisions of the Guidelines for Patent Examination. The first is Article 4.1.4 of Part 1, Chapter 1, entitled “Contact Person.” The revised Article 4.1.4 requires that the contact person for an organizational patent applicant (an Applicant) be a staff member of the organization. The patent examiner (the Examiner) may ask the Applicant to provide proof of the contact person’s employment when necessary. The purpose of this amendment is to prevent organizations and individuals from calling themselves a “contact person” and serving as a patent agent without the approval of the SIPO.
The second amendment occurs in Article 5.2.1 of Part 2, Chapter 8, entitled “Requirement of Amendments,” which applies when an Applicant adds an independent claim to a pending application and the technical solution defined by this claim was not present in the original claim set. According to the Guidelines before the Amendments, the Examiner would have deemed such patent application withdrawn since it failed to meet the requirements of Article 51.3 of the Implementing Regulations of the Patent Law. In other words, if an Applicant failed to amend its application in accordance with the notification of the examination opinion (the Notification) from the State Council’s Patent Administration Department, its application would be deemed withdrawn. This tended to cause excessive delays in the patent examination process. Under the Amendments, however, the Examiner views the Applicant’s failure to properly amend its petition as its forfeiture of the opportunity to do so. The Examiner ignores the Applicant’s newly added claim and either allows or rejects the claim set pending prior to the Applicant’s attempted amendment by reviewing only those documents that comply with Article 51.3 of the Implementing Regulations.