Back to articles June 2017
On 1 April 2017, the State Intellectual Property Office (SIPO) of the People’s Republic of China brought into effect new revisions to the Guidelines for Patent Examination . The revisions to the Guidelines have slightly altered SIPO’s process of handling patent applications.
A notable modification relates to subject matter excluded from patentability. The previous Guidelines used by SIPO prevented the patentability of any business model-related invention. However, the Guidelines have been updated to reflect that if a claim involving a business model contains not only the business method features but also technical features, then such a claim shall not be automatically excluded from being patentable purely on ineligible subject matter grounds. The new Guidelines thus provide a window of opportunity for applicants and patentees looking to acquire a business method patent in China and an examiner’s rejections should now focus on the lack of novelty or inventive step as opposed to an immediate refusal due to the subject matter being ineligible for a patent.
Another significant change to the Guidelines relates to the patentability of software-related inventions. Previously, SIPO only allowed the use of method claims, apparatus claims defined in terms of means-plus-function elements and system claims comprising a memory and processor configured to perform functions. However, this resulted in some difficulty when drafting patent applications, not least because means-plus-function is interpreted in China as being limited to the embodiments as described in the patent application’s specification. On the other hand, apparatus claims which recited both hardware and software, and Beauregard claims (typically ‘a computer program product’ or ‘a computer-readable medium’) were not allowed by SIPO. To address this, the Guidelines have been modified so that Beauregard claims and apparatus claims defined in terms of both hardware and software are now allowable provided that the claim discloses a technical feature. Although there is no expansion of the patentability of software-related inventions, this new revision potentially provides the patentee with more flexibility when drafting patent claims.
Another important alteration to the Guidelines is the handling of supplementary experimental data. Prior to the new Guidelines coming into effect, SIPO would not take into consideration additional data submitted after the date of filing when evaluating sufficiency of disclosure. The new Guidelines remedy this, allowing for experimental data to be provided post-submission under the requirement that the technical effect shown in the experimental data should be acquirable by a person skilled in the art given the disclosure in the entire specification as filed. This revision seems to show that SIPO has become slightly more lenient on the applicant.
Other noteworthy alterations include the breadth of patent application documents available to the public during patent prosecution, which has been extended to contain, amongst others, notifications, search reports and decisions issued during substantive examination. Furthermore, the process in which claims are amended during invalidation proceedings (in which a petitioner requests that a patent is declared invalid at any time following the grant of a patent right) have also been revised, as have the methods in which additional causes and/or evidence for invalidation are submitted. Finally, the time limits that the Patent Office stipulates in procedures related to property preservation have been revised to bring them into compliance with Civil Procedure Law.
The revised Guidelines have been generally welcomed by both patentees and the public alike, as they reflect a general attitude shift at SIPO toward being friendlier to applicants and patentees whilst providing an all-round better service for the public.
1. Decision on the revision of the Patent Examination Guide (2017) (No. 74) http://www.sipo.gov.cn/zwgg/jl/201703/t20170302_1308618.html
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