China’s New Guidelines for Patent Examination from November 1, 2019
On September 25, 2019, the CNIPA announced new guidelines for patent examination to take effect from November 1, 2019.
The new guidelines are now in place. They are mainly directed to examination of invention and design patents and introduce several changes to invention patent prosecution practice and design patent registration requirements.
Invention Patent Prosecution Practice
Under the new practice guidelines, it is only when an examiner raises a unity of invention objection against a first divisional application, that a second divisional application can be filed. The first divisional application must still be pending for a second divisional application to be filed. This change is to restrict the number of divisional applications that can be filed.
The new guidelines also say that the applicant of a first divisional application should be the same as the applicant of the parent application when the first divisional application is filed. The applicant of a second divisional application should be the same as the applicant of the first divisional application.
Inventive step analysis
When considering the issue of a claimed invention’s inventive step, Chinese examiners use a three step analysis method:
- Identify the closest prior art;
- Identify (a) the technical feature(s) in the claim that distinguishes the claim at issue from the closest prior art and (b) the technical problem(s) solved by that distinguishing technical feature(s);
- Determine if the inclusion of the distinguishing technical feature(s) is obvious in the face of (a) the disclosure of another prior art document or (b) the common general knowledge (CGK) in the art.
In order to ensure examiners consider the invention as a whole, the new guidelines say that examiners must:
- …determine the actual technical problem(s) to be solved based on the technical effect(s) achieved by the distinguishing technical feature(s) in the invention as claimed; and
- …for distinguishing technical features that provide mutual support, or which interact with each other, examiners should look at the wider picture and consider the technical effect(s) achievable by the relationship of those technical features, as a whole.
When an examiner is relying on the common general knowledge (CGK) to support an inventive step objection:
- If the examiner views the inclusion of the distinguishing technical feature that contributes to addressing the stated technical problem(s) as CGK, he should provide evidence;
- If the applicant disagrees with the examiner’s view of the CGK, in relation to any point (not limited to the inclusion of the distinguishing technical feature that contributes to addressing the stated technical problem(s), the examiner should provide reasons or evidence to support that view.
These changes are intended to clarify that an examiner cannot simply assert something is CGK without adequate support for that view.
Stem cells of human embryos
The new guidelines have modified the exclusion to patentability for (i) Inventions-Creations Contrary to Social Morality with respect to use of human embryos for industrial or commercial purposes and (ii) the Human Body at the Various Stages of Its Formation and Development.
The changes to the guidelines say that:
- If an invention-creation includes isolating or obtaining stem cells using human embryos which are not undergoing vivo development and are within 14 days after fertilization, then the invention-creation cannot be refused to be granted for “contrary to social morality”; and
- Human embryonic stem cells do not belong to the human body at the various stages of its formation and development.
The changes to the guidelines leave some room for patentability of technical solutions related to human embryos developed in vitro within 14-days of after fertilization, and for embryonic stem cells of human beings isolated or obtained from such human embryos, and related preparation methods.
Deferral of substantive examination for invention and design patents
The option to defer substantive examination for invention and design patents for 1, 2, or 3 years is now available.
An examiner is now able to discuss substantive issues with an applicant (or the applicant’s patent agent) in a face-to-face interview, a telephone interview, an email exchange, or a video conference.
An applicant (or the applicant’s patent agent) is now also able to ask for a discussion on substantive issues using the same options, and the examiner should agree to this if it is helpful to clarify questions relating to those issues.
Prior art searching
Examiners are now required to undertake 3 types of prior art searches:
- A preliminary search based on the patent family, the applicant(s) and the inventor(s);
- A regular search based on the technical field of the application; and
- An extended search based on functions like those of the invention at issue.
The extended search was previously conducted by examiners, but the requirement to do so was not clearly stated in the guidelines. This change makes the three types of search the “standard” approach.
Graphic User Interfaces (GUI)
The new guidelines provide clarity on obtaining design patent protection for GUI designs:
- A GUI must be on a real physical product such as a display module or a mobile phone.
- The applicant must identify a physical product including the GUI. Displayed content alone is not patentable.
- Only the front view of the physical product showing the GUI is needed, if the other features of the physical product are not part of the design to be protected.
- A brief description of the design that states what the GUI is designed to do and what product the GUI is to be applied to, such as a computer, mobile phone etc.
The new guidelines introduce welcome flexibility to patent prosecution practice and address many of the frustrations that are commonly faced by patent applicants in China. Restriction on the number of divisional applications that can be filed will require a change to patent prosecution strategies, but restrictions of this type are not uncommon internationally. Easing restrictions on patentability related to stem cell research may encourage research in this important sector. Clarification of the requirements for filing design patents directed to GUIs is useful, but amendments to China’s patent law to allow protection of partial designs, and therefore GUIs per se, would be better.