FICPI, The International Federation of Intellectual Property Attorneys

New Patent Examination Guidelines for China

12th November, 2019

China National Intellectual Property Association (CNIPA) has published revisions to its Patent Examination Guidelines, the changes became effective on 1 November 2019. In this article, Michael Caine of Australia’s Davies Collison Cave and member of FICPI’s CET Executive 2018-2021, and Lena Shen of Beijing Sanyou Intellectual Property Agency Ltd and member of FICPI’s CET 8 Asian Issues, examine the main revisions and FICPI’s view on them.

The main revisions can be summarised as follows:

1. Divisional application rule clarification

The timing for filing second and further generation divisional applications from first generation divisional applications has been clarified.

The applicant cannot file any divisional or further divisional application after the original parent application has been rejected, withdrawn or deemed as withdrawn; or after expiry of a two-month period following the issuance of a notification of grant on the original parent application, unless an Examiner invites it with a notification to file a divisional application or with an office action raising a unity objection. In such a case, the deadline for filing a further divisional application will be three months from the date the applicant receives such an invitation to file a divisional application or an office action on the parent case.

The new Guidelines have also clarified that the applicant for a divisional application must be the applicant of the parent applicant at the time of filing the divisional application.

2. Inventive step assessment

When assessing inventive step, Examiners should adopt a problem/solution approach, and consider whether distinguishing features of the claimed invention help to achieve a technical effect that is required to solve a problem.

The assessment of inventive step should be based on consideration of the claimed invention as a whole, not just on the basis of particular technical features.

Where the applicant questions the common general knowledge cited by the Examiner in an office action, the Examiner should provide supporting evidence or reasoning. If the Examiner raises an inventive step objection based on an assertion of common general knowledge, the Examiner should normally provide evidence to support such an assertion.

3. Relaxed restriction on the subject of patents relating to stem cells

The previous practice of denying patents in respect of stem cell inventions involving the industrial or commercial use of human embryos has been revised.

Patent protection will no longer be denied if an invention uses stem cells separated or acquired from a human embryo that has not developed in a host and within 14 days of fertilization.

4. Deferred examination procedure introduced

A deferred examination procedure has been introduced. The applicant of a Chinese invention or design patent now has the option to request deferred examination.

A deferred examination request for an invention patent application should be submitted together with the request for substantive examination, while that for a design patent application should be made at filing of the patent application.

The period of deferral may be 1, 2 or 3 years. However, where necessary, CNIPA has the discretion to refuse or reduce the period of deferral.

5. GUI-related issues put in a separate and specific paragraph

In 2014, China introduced the possibility of acquiring design patents for graphical user interfaces (GUIs) but the rules regarding the examination of such GUI designs were found in disparate parts of the Examination Guidelines.

Under the new Guidelines, the rules relating to design applications for GUIs are gathered together in a specific and separate part, which makes it clearer and easier to find and follow them.

6. Requests for invalidation simplified

It is no longer necessary to indicate all ways in which cited prior art documents may be combined in a request for invalidation, although it is necessary to indicate a primary combination.

In a request for invalidation, if there is more than one cited document and there are two or more ways of combining those documents to impugn the non-obviousness of the invention, it is only required to indicate a primary combination, and, if there is no such indication, the first combination specified in the request will be taken as the primary one.

However, although it is no longer a requirement to list all the possible ways of combining references, it is still considered advisable to list them all, except where that would be unpractical.

FICPI’s view and involvement

FICPI is pleased to note the steps taken by CNIPA to revise its Examination Guidelines, particularly in relation to the assessment of inventive step. In meetings with CNIPA since 2016, FICPI has urged CNIPA to instruct examiners to provide evidence to support assertions of common general knowledge and sound reasoning when raising inventive step objections.

One object of FICPI is to study all administrative or legislative reforms and all improvements to international treaties and conventions, with the object of facilitating the exercise by inventors of their rights, of increasing their security, and of simplifying procedure or formalities. (Statutes, Article 2.4 - https://ficpi.org/about-ficpi-1/governance/ficpi-statutes/statutes-en)

Next steps

Authors: Michael Caine & Lena Shen

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