Revised Draft of Patent Examination Guidelines for Public Review
On October 27, 2016, State Intellectual Property Office of the PRC (“SIPO”) issued the Revised Draft of Patent Examination Guidelines for public review (“Revised Draft”). Most of the proposed amendments are of material significance, which cover the following six aspects.
I. Patent eligibility of business methods combined with technical features
Business methods used to be considered as “rules and methods of mental activities,”thus were categorically excluded from eligible subject matter under the PRC Patent Law.
SIPO points out that fueled by the development of internet technology, new business models emerge and bring social benefits thus should be encouraged and protected. Under the Revised Draft, a claim related to business model, if it includes both business methods and technical features, should not be excluded from eligible subject matter.
We understand the above mentioned “technical features” generally relate to cyber technology. This amendment will directly influence such fields as banking, insurance, securities, lease, auction, investment, marketing, advertising and business management, etc.
II. Inventions relating to computer programs
In terms of inventions relating to computer program, the standard of eligibility of subject matter in the Revised Draft remains the same, i.e., computer programs per se are not eligible, while the "inventions involving computer program" may be. Nevertheless, the Revised Draft has included the following trivial changes.
(i) The claims can be written in the form of “storage medium plus program flow.”
(ii) The Revised Draft further makes clear that computer programs can serve as a component of apparatus claim.
The so-called“inventions involving computer program" can be a process claim or aproduct claim. The latter is usually in the form of “an apparatus adapted to perform… function,” which is composed of a set of components. Under the current Patent Examination Guidelines (“Guidelines”), program flow would easily be misunderstood as process or function defining hardware by present claim drafting. The Revised Draft adds “the component is not only a hardware, but also can be a program” to expressively as certain that “program”can be a component of an apparatus claim.
(iii) The wording “function module” is revised as “program module.”
Under the current Guidelines, the wording “function module” does not clearly reflect technical nature of program, leading to highly possible confusion with the wording “functional feature.”
III. The examination on the experimental data supplemented after application date for chemistry inventions
Under the current Guidelines, the experimental data supplemented after application date used to be rejected when the application is faced with enablement objection.
The policy is now amended in the Revised Draft. This sort of experimental data should be examined as long as the technical effects proven by the experimental data are deducible from the published description by those skilled in the art.
IV. The change in amendment on claims in invalidation procedure and the rules for presenting new reasons and supplemental evidence
(i) A new way to amend claims
The claims used to be amendedby the way of (1) deletion of claim(s), (2) combination of claims and, (3)deletion of technical solutions.
Now the policy is more flexible in the Revised Draft. The amendment can further include (4) addition of one or more technical feature(s) from other claim(s) for purpose of limiting the protection scope. Besides, obvious errors in the claim(s) can be corrected.
(ii) Subsequent change on providing new evidence and expounding the relevant reason when the claims are amended during invalidation
Generally, providing new reasons and supplemental evidence should be done within one month after the filing of invalidation request. However, there is exception when claims are amended by the way of combining claims, under the current Guidelines; new reasons and supplemental evidence can be provided within officially designated period of time.
Corresponding to the above mentioned amendment ways, the rule S for the exception are accordingly amended. Under the Revised Draft when claims are amended by ways (2) or (4),the petitioners are permitted to present new reasons which should be directed to the amendment on the claims.
There is a significant change in presenting supplemental evidence; no matter in what way the claims are amended, supplemental evidence is not permitted any longer. The reason is that the technical features newly introduced to the amended claim(s) have already been in the granted claims; so, no supplemental evidence is needed.
V. More accessible archives of patent application to the public
For the published patent applications, under the current Guidelines, documents only created by the publication date are available for consulting and copying. However, as the Revised Draft provides, the documents available extend to those in substantial examination period.
For granted patents, one more kind of documents will be available, that is, the search report.
VI. Consistency of suspension period arising from attachment of property
Suspending of the procedure arising from judicial property attachment used to be within six months during the patent prosecution, and renewable by the court’s requirement, or one year during invalidation, unrenewable. By contrast, under the Revised Draft, for both patent prosecution and invalidation, the period is extended to the one specified in the judicial order.
November 4, 2016