On April 4th, 2019, the China National Intellectual Property Administration (CNIPA) released on its website the "Draft Amendment to the Patent Examination Guide (Draft for Opinions)" (hereinafter called "Draft for Opinions"), on which public opinions are solicited. The draft was open for public feedback until May 5th, 2019. It has been more than two months since the deadline for feedback, but CNIPA has not released the officially revised content yet.
At the first sight, many revisions are involved in this amendment. However, actually most of the revisions are in fact to standardize practices of the current patent examination and application. The following is a brief introduction to the revisions that have more impacts on practice and the highlights among the revisions.
1. Deferred examination on patent applications
The "Draft for Opinions" introduces a brand new rule about deferred examination in Part V, Chapter 7, Section 8.3, namely: the applicant may request the deferring for the examination of its/his/her patent application. The deferred examination should be applied on the same time when the applicant requests for substantive examination, and the request for deferred examination of the invention patent application shall take effect from the effective date of the substantive examination request. Requests for deferred examination of utility models and designs, on the other hand, shall be submitted by the applicant at the same time as the application for utility models and designs is submitted. The period of deferred examination may be 1 year, 2 years or 3 years from the effective date of applicant's request. After the deferral date is due, the said application shall be sent for examination in order. When necessary, CNIPA may initiate the examination process on its own, and the request for deferred examination by the applicant is deemed not to have been filed.
In the current patent law and related laws/regulations, there is no provision for deferred examination at all. Instead, there are onlymechanisms for accelerated examination, such as PPH and prioritized examination. That is, applicants are only allowed to request accelerated examination of patent applications, but not deferred examination. In practice, some applicants may want their patent applications to be published or granted later. Accordingly, the "Draft for Opinions" adds the aforesaid deferred examination mechanism, in order to meet the needs of those applicants and to implement the requirements of "Improving the Review Cycle Management and Meeting the Diversified Needs of Innovative Entities" in the "13th Five-Year Plan for National Intellectual Property Protection and Operation Planning Key Tasks."
2. Further clarification on submission requirements on design patent application for Graphical user interface (GUI)
In March 2014, the CNIPA revised the "Patent Examination Guidelines" (No. 68 Order) to include products that display graphical user interfaces after power-on into the protection scope of design patent starting from May 1st, 2014. This said amendment has been warmly welcomed by many applicants ever since. Over the past five years, both Chinese and foreign applicants have submitted a large number of GUI-related design applications to the CNIPA, some of which, after their being granted, involve infringement litigations or invalidation procedures. However, as the current Patent Examination Guidelines are not clear and specific enough for the GUI design applications, ambiguities actually do exist in the process of GUI patent application examination and invalidation, causing many confusions among the applicants and examiners.
In order to make the current examination rules conform to the development trend of the product design of the graphical user interface, and to make the current rules more operable and easy for the examiners and applicants to follow, the "Draft for Opinions" further clarifies and specifies the stipulations on the requirements for product name (i.e., title of the application), view submissions and brief descriptions in the design patent application for GUI, most of which have already been implemented in current practice, and the newly added contents mainly include the followingtwo points:
(1)For GUIs with dynamic patterns, the product name of the application should contain "dynamic" in wording; the views submitted should uniquely determine the complete changing trend of animation in the dynamic patterns; when entitling the status changing drawings/photos,the applicant should entitle them according to the order of the dynamic changing process; the applicant shall state the changing states/changing trend in the brief description; and
(2) For the GUI design patent applications of projection device type products, the applicant should submit clear views of both the projection device and its GUI.
3. The invention patent applications in "two-tier filing" are not subject to prioritized examination
The same day applications (i.e., two-tier filing) means that the same applicant applies for both the utility model and the invention patents for the same invention on the same day (which refersto the filing date only). At present, it usually takes around 6-10 months fromthe filing date to allowancefor the utility model patent applications , which is shorter than the period required for the invention patent application under prioritized examination track. Therefore, in the "two-tier filing" cases, the utility model application can be granted a patent right in a fast manner. In this case, if the CNIPA examines the invention patent application under the prioritized examination track according to the Measures for the Administration of the Prioritized Examination of Patents took effect on 1 August 2017, it will cause a waste of administrative resources. Therefore, the "Draft for Opinions" clearly provides in Part V, Chapter 7, Section 8.2 that in the "two-tier filing" cases, the application for invention patentgenerally cannot be subject to prioritized examination. Actually, it has been operated by the CNIPA in the current practice, but many applicants are not aware of it.
4. Eligibility of stem cells from human embryo
The "Draft for Opinions" no longer rejects the patent application(s) for "separation or acquisition technologies of stem cells from human embryos within 14 days of fertilization without in vivo development" for being unpatentable in accordance with Article 5 of the Patent Law. Specifically, the "Draft for Opinions" adds exclusive provisions to "the industrial or commercial use of human embryos" in Part II, Chapter 1, Section 3.1.2. According to the new regulation, if an invention-creation isolates or obtains stem cells from human embryos within 14 days without in vivo fertilization, the CNIPA should not refuse to grant it patent rights on the grounds of "violation of social morality."