CNIPA - Changes Proposed to Draft Examiners' Guide

Towards the end of 2017 the State Intellectual Property Office (SIPO – now CNIPA) began developing a Patent Examination Guide (the Guide), with an aim to improve the efficiency and quality of patent examination.

Amendments to the draft Guide have now been proposed to more accurately direct Chinese Patent Examiners’ examination process and to improve procedural requirements.

Comments have been called for by May 5, 2019. A link to the CNIPA site is below (Chinese version).

CNIPA: Call for Comments on Draft Revision of the Patent Examination Guidelines (Draft for Comments)

知识产权局 关于就《专利审查指南修改草案(征求意见稿)》公开征求意见的通知

Some of these changes are:

a. Changes to the section on examination for inventive step:

The approach an examiner takes to determining the issue of inventive is a 3 step evaluation:

  1. Identify the closest available technology
  2. Determine the distinguishing characteristics of the invention and the technical problems actually solved by the invention
  3. To determine whether an invention requiring protection is obvious to a technician in the field

The change proposed is to clarify and emphasise for step (2) that the technical problems actually solved by the invention should be determined according to the technical effect achieved and the technical problem actually solved in the invention to be protected.  Where technical characteristics interact and provide mutual functional support, the effect of the interaction of the technical characteristics should be considered in the invention requiring protection as a whole.

Although technically not part of examination for inventive step, when an examiner is reviewing the impact of technical features in a claim as part of the general examination process, it is to be clarified that technical features that do not contribute to the technical solution should have no impact on evaluation requirements. For example, if the essence of the invention lies in the improvement of a camera shutter, the solution of its technical problems depends on the shutter structure or exposure time control. If there are other inherent parts of the camera, such as lenses, viewfinder and other parts in the claim, these are not related to the technical problems of camera shutter improvement. Therefore, they belong to technical features that do not contribute to the solution of the technical problem of improving the camera shutter and have no impact on evaluation requirements.

b. Changes to allow for a request for delayed examination.

An applicant may make a request for a delay in examination for a period of 1, 2, or 3 years.

A request for delay in the examination of an invention patent shall be made by the applicant at the same time as making a request for substantive examination. The delay will take effect from the date of entry into force of the request for substantive examination.

A request for delay in the examination of utility models and designs shall be made by the applicant at the same time as submitting a utility model or design application.

After the expiry of the delay period, the application will then be examined. CNIPA retains the ability to initiate the examination process on its own.

c. Examination approach and procedure

A common issue in examination of Chinese applications is that examiners simply state that something is known leaving the applicant to disprove that statement. In order to clarify the approach to this issue, it is proposed that if the applicant objects to knowledge cited by the examiner, the examiner should provide evidence supporting the existence of the knowledge. If an examiner asserts technical features that contribute to the solution of the problem are recognized as common sense, evidence should usually be provided to prove it.

To streamline the examination process generally, changes proposed include clarification that:

  • Preliminary examination shall normally be initiated in the order in which the applications are submitted
  • For invention patent applications, substantive examination should proceed in the order in which requests for substantive examination are made (except as otherwise provided)
  • Applications of great or public interest or public interest may be reviewed on a priority basis and given priority in the subsequent review process
  • If the same applicant applies for both a utility model and an invention for the same invention on the same day (i.e. filed as a “pair”), the patent application for the invention will generally not be given priority review. As a result, the patent application in the “pair” will be examined in the usual order. This makes sense procedurally, but removes one of the advantages of filing cases as a “pair”.

d. Human body at various stages of formation and development

Currently, the human body at all stages of formation and development, including human germ cells, fertilized eggs, embryos and individuals, are excluded from patentability. The change proposed is to clarify that human embryonic stem cells do not belong to the human body at all stages of formation and development.