At the end of Oct. 2016, the State Intellectual Property Office of the People’s Republic of China released the Draft Amendment to the Guidelines for Patent Examination (Draft for Seeking for Opinions) to formally seek for opinions on the amendments to the Guidelines for Patent Examination from the public. This amendment covers a large extent. Here we brief the keys as follows:
1) The Business Method May Be Granted
The claims that relate to the business mode, if not only containing the business rules and methods, but also containing technical features, shall not be precluded their possibility to be granted the patent rights pursuant to Article 25 of the Patent Law.
2) Computer Software Patent
(1) The claims can be written by adopting such form of “media + computer program procedures”;
(2)The components of the device claims may contain procedures;
(3)The “functional module” is modified to the “program module”.
3) Conditionally Allowing to Supplement the Testing Data after the Application Date (Chemical)
The sentence “The embodiments and testing data supplemented after the application date will not be considered” is modified to be “As for the testing data supplemented after the application date, the examiners shall examine it, and the technical effects as proven by the testing data supplemented should be obtained by the persons skilled in the art from the contents as disclosed in the patent application.”
should be obtained by the persons skilled in the art from the contents as disclosed in the patent application.”
4) As for Invalidation Proceedings, Leaving Hold of the Mode of Modification of Patent Documents, as Appropriate
It is permitted to add one or more technical features as stated in other claims in the present claims, in order to narrow the protection scope, and it is permitted to correct those obvious errors in the claims.
In consideration of the said “leaving hold of the mode of modification of the patent documents, as appropriate”, it is required to be clear that, if the applicant adds the reasons for invalidation proceedings in connection with “the patentee modifies the claims in any form other than deletion”, it shall be directed against the “modifications”.
5) Substantial Examination Related Documents May Be Checked and Duplicated
The scope that the public can check and duplicate is expanded to the substantial examination stage, including the office actions, search reports and decision sent to the applicant. In Item (3), as for the volume of the patent application for which the patent rights have been granted by means of public announcement, the search reports issued by the patent office is included in the scope that can be checked and duplicated.
6) Assisting in Property Preservation to Execute Suspension Procedures
It is classified that if the people’s court requests the patent office to execute the suspension procedures by assisting in enforcing the property preservation, the patent office shall suspend the relevant procedures according to the property preservation period as stated in the Civil Judgment and the Notice of Assisting in Enforcement. After expiration of the suspension period, if the people’s court requests to continue taking the property preservation measures, it shall deliver the Notice of Assisting in Enforcement for continued preservation to the patent office before expiration of the suspension period, and if it is reviewed to be consistent with the applicable regulations, the suspension period can be extended.