On 4 April 2019 the China National Intellectual Property Administration (CNIPA) released the Draft Amendment to the Patent Examination Guidelines on its website. The draft was open for public feedback until 5 May 2019.
The draft proposes revisions to both substantive and procedural aspects in preliminary examination, substantive examination and invalidation proceedings regarding patents. This article analyses the major proposed changes to patent examinations.
Time limit for filing further divisional applications
The draft clarifies the time limit for filing further divisional applications if the examiner has objected to an existing divisional application based on a lack of unity. If this has happened, a further divisional application should be filed before the prosecution of the existing divisional application has been completed. More specifically, the deadline will be two months after receipt of the notice of allowance for the existing divisional application.
Under current practice – as the deadline for filing a further divisional application based on the existing divisional application is not explicitly specified in the examination guidelines – an applicant may file further divisional applications by simply submitting the examiner's unity objection notice, without being bound by any specific time limit. This has given rise to the widely criticised practice of extremely late filing of further divisional applications.
To avoid confusion, the time limit for filing divisional applications on an applicant's own accord (ie, a voluntary filing) remains unchanged and depends on the status of the earliest parent application.
The draft also requires that the applicant for a divisional application must be identical to the applicant for the parent application as recorded at the time of filing the divisional application. In the case of a further divisional application, its applicant must be identical to that of the existing divisional application on which it is based.
Eligibility of stem cells from human embryos
The draft confirms the patentability of stem cells that are isolated or obtained from human embryos within 14 days after fertilisation (ie, not developed in vivo) and the preparation method thereof. It clarifies that such inventions should not be rejected as being contrary to social morality. Meanwhile, human embryonic stem cells will not be classified as a human body at various stages of its formation and development.
Considering the research and rapid developments in the stem cell field, eligibility of stem cells will encourage more innovators to patent their inventions.
Deferred examination on patent applications
The draft introduces a new rule relating to deferred examination. An applicant can request that its patent application examination be deferred by one, two or three years. This rule applies to any type of patent application, including invention, utility model and design. Any application for deferred examination should be submitted at the time of requesting substantive examination for an invention or at the time of filing a utility model or a design.
Against the current backdrop of CNIPA's push to speed up the patent examination process, the deferred examination provides an additional route for applicants with diverse needs and adds flexibility to the patent prosecution regime.
Examiner's reference to common knowledge
If an applicant raises objections to the 'common knowledge in the art' ground in the office action, the draft requires the examiner to provide corresponding evidence in this regard. If the examiner deems that the technical feature contributing to solving the technical problem falls under common knowledge, they should provide relevant evidence.
Under current practice, the common knowledge ground seems to have become a convenient ground that examiners often cite against inventiveness of the claimed invention without giving any supporting evidence. This has raised lots of concerns. The new requirement will put applicants in a better position to defend the inventiveness of their innovations.
Meetings and discussions with examiners
The draft encourages applicants to meet with the examiner to clarify issues, eliminate discrepancies and promote understanding. The meetings can be set up on the request of either the examiner or the applicant at any time during the substantive examination proceeding. The draft relaxes the restraints on the timing of meetings and alleviates the clerical burden of examiners engaging in telephone discussions with applicants, which is expected to greatly facilitate communication.
The draft also encourages communication with the examiner during substantive examination procedures, not only via the telephone, but also via email or video conferencing. The discussions will cover substantive matters, rather than being limited to minor or formality issues as under the current practice.
The new approach opens the door to efficient communication with examiners and allows applicants to readily present their opinions, which will help to accelerate the granting procedure.
The draft intends to reduce the burden on petitioners who initiate invalidation proceedings. For example, it states that:
if the references submitted by the petitioner are used in two or more groups of combinations to challenge the patent at issue, they will indicate the most primary way of combination in this regard. If the petitioner is silent in indicating such a combination, the first group of combination of the references as listed will be deemed as the most primary combination.
However, this proposed method of examination during invalidation proceedings could be a double-edged sword. Therefore, petitioners are highly recommended to clearly indicate the primary way for combining the references or prior art as submitted before the Patent Re-examination Board when filing the request of invalidation.
In the draft, the requirements regarding designs for graphical user interfaces (GUIs) are summarised in a new section of the examination guidelines (Section 4.4 of Chapter 3 of Part I). The amendments specify that the name and explanation of the GUI design should reflect its main usage. The amendments also include some specifics about the submitted image of the GUI in order to further simplify the requirements of the drawings.
In addition to the above, the draft includes other amendments which focus on improving the efficiency and quality of patent examination – for example, by specifying requirements about:
- prior art searches by the examiner; and
- the ways in which inventiveness is assessed.
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