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A brief introduction and comments on the latest amendments to patent examination guidelines

2019.10.10 WANG, Zhaohui (Zoe)、Lora Wu、Hao Zhao、Bin Wang、Ni Peng、Lufang Leng

On September 24, 2019, the Chinese National Intellectual Property Administration, PRC (“CNIPA”) released the Decision on Amendments to Patent Examination Guidelines (No. 328 Order of CNIPA) (hereafter referred to as the “2019 Amendments”).  The Decision amends the Patent Examination Guidelines and the amendments will come into effect on November 1, 2019.

In response to the requirements of CNIPA to improve the quality and efficiency of patent examinations, the 2019 Amendments clarify some of the unclear and unreasonable aspects in the current Patent Examination Guidelines (“Examination Guidelines”).  This article introduces some of the key points of the amendments, and briefly analyzes the impact that the amendments may have.

I.Clarification of the conditions for filing divisional applications

With respect to the filing of a further divisional application based on an existing divisional application (“Further Divisional Application”), the current Examination Guidelines do not clearly stipulate a time limit, which has led to different understandings of this issue under the current practice.  Hence, the 2019 Amendments specify that the time limit for filing a Further Divisional Application should be examined on the basis of an existing divisional application that is rejected by an examiner on the grounds of a lack of unity. No Further Divisional Application can be accepted if this application is based on a divisional application having no unity defect.

This amendment corrects the legal loophole of “unlimited divisions” that may occur under the current Examination Guidelines. According to the current Examination Guidelines, as long as any divisional application of a parent patent application (the “Basic Division”) receives an office action raising a unity issue or a notification on filing a divisional application (collectively referred to as the “Notification of Unity Defect”), a Further Division Application may be accepted before the closing of the Basic Division or any of its sub-divisions.  However, after the 2019 Amendments come into effect, applicants can file a Further Divisional Application only before the closing of a specific divisional application, subject to a Notification of Unity Defect.  In practice, for some patent applications such as those relating to a new drug, the applicants may hope to delay the filing of a divisional application for their important patent families for as long as possible.  When the 2019 Amendments come into effect, it may be harder to have the opportunity of filing a new divisional application for a long period of time.  Applicants may try to achieve this by filing at least one divisional application with a potential unity issue to obtain a Notification of Unity Defect, and then file further sub-divisions with a potential unity defect by adopting the same strategy before the closing of the former divisional application, subject to a Notification of Unity Defect.

Furthermore, the 2019 Amendments also clarify that the applicant(s) and the inventor(s) of a divisional application should correspond to the applicant(s) and the inventor(s) of the application on which it is based (the “Basic Application”).  Specifically, at the time of filing, the applicant(s) of a divisional application or a Further Division Application must be identical to the applicant(s) of the Basic Application, otherwise the application will not be accepted.  The inventor(s) of a divisional application or a Further Division Application must be the inventor(s) or some of the inventors of the Basic Application at the time of filing such a divisional application or Further Divisional Application.

Due to the above amendment, it is recommended to check the consistency of the applicant(s) and the inventor(s) when filing a divisional application.  In the event where the applicant(s) of the divisional application and/or the Basic Application will be changed or are not the same, it is recommended to file the divisional applications at a nominated time, depending on the specific circumstances of the case, to avoid filing multiple requests to change the applicant(s). 

II.Introduction of deferred examination and optimization of prioritized examination

Compared with the current Examination Guidelines, one of the highlights of the 2019 Amendments is the introduction of deferred patent examination, which provides more options for applicants to develop their patent protection strategies.  Specifically, the main points concerning the provisions of deferred examination in the 2019 Amendments are as follows:

a)Types of patent applications entitled to deferred examination: invention and design patent applications.

b)When to file a request for deferred examination: at the time of filing a request for substantive examination for an invention patent application, or at the time of filing a design patent application.

c)Deferment period: one, two or three years from the effective date of approving the request for deferred examination.

d)Procedures after the expiration of the deferment period: related applications will be added to the waiting list for examination.

e)Exceptions: when necessary, the Patent Office may terminate the deferred examination before the expiration of the deferment period and initiate the substantive examination process.

The introduction of the deferred examination provides an opportunity for applicants to defer examinations, which may give applicants more time to consider the protection scope of their applications, whether to maintain their applications, whether to file further divisional applications and the like.  In practice, applicants may apply a strategy of combining deferred examinations and divisional applications, so as to reach the goal of preserving the opportunity of filing a divisional application for as long as possible, and having an opportunity to argue for patentability in different ways.

While providing the option for deferred examination, the 2019 Amendments further revise the provisions concerning prioritized examinations of patent applications under the current Examination Guidelines in accordance with the current Administrative Measures for Prioritized Patent Examination.  The 2019 Amendments specify that the types of patent applications entitled to prioritized examination are invention, utility model and design.  Moreover, according to the 2019 Amendment, if the same applicant files an invention application and a utility model application for the same invention on the same day, the invention patent application normally will not be approved for prioritized examination for the purpose of saving resources of said examinations.

III.Adjustment to the requirements on design applications involving Graphical User Interfaces

The 2019 Amendments streamline the provisions of the current Examination Guidelines that are relevant to designs involving graphical user interfaces (“GUIs”), incorporate the contents related to GUI designs into a newly added Section 4.4 of Chapter 3, Part I, and add specific requirements regarding GUI design applications, which mainly cover the following three aspects:

a)Product name: The product name must indicate the primary purpose of the GUI and the product to which it applies, and a general description such as “graphical user interface” should not be taken as the product name. 

b)Requirements of images: In addition to the requirements of images as stipulated in Section 4.2, Chapter 3, Part I of the current Examination Guidelines, images of a product design involving GUI should also meet the following requirements: i) at least one image, including the front view of the display screen panel of the GUI, should be submitted if the design points only lie in the GUI ; ii) if it is necessary to clearly show the size, position and scaling of the GUI in the final product, the applicant should submit a front view of the plane of the final product which includes the GUI; iii) if the GUI is dynamic, the applicant should submit the front view of the plane including the GUI in one state as the major view, and the views of key frames of the GUI in other states can serve as views of various states; and iv) regarding a GUI for operating a projector, applicants should submit at least one view that clearly shows the projector in addition to the views of the GUI.

c)Brief description: The purpose of a GUI should be clearly stated and correspond to the use embodied in the product name.  If only a front view of the display screen panel including the GUI is submitted, all final products to which the display screen panel including the GUI can be applied should be listed in an exhaustive way, and applicants should state the display location of the GUI in the product, any human-computer interactions and change the process of the GUI when necessary.

The above amendments clarify the application requirements for design applications involving GUIs, further simplify the requirements of the images to be submitted, and allow applicants to broaden the protection scope of the final products that have GUIs, by listing in a brief description all the final products where the display screen panel, including the GUIs, applies.  

IV.Clarification of the conditions for interviews with examiners and the relaxation of constraints on telephone discussions

To increase the efficiency of communications between examiners and applicants, the 2019 Amendments clarify the conditions for face-to-face interviews with examiners, and relax the constraints on telephone discussions with examiners under the current Examination Guidelines.

Regarding face-to-face interviews with examiners, the 2019 Amendments remove two conditions for initiating an interview in the current Examination Guidelines. In particular, applicants no longer have to request an interview only: (i) after the issuance of the first office action; and (ii) at the time of or after a response to the office action.  When the amendments become effective, examiners and applicants can initiate a meeting at any time during the substantive examination proceedings.  Moreover, the principle of holding a meeting is specified as “being advantageous for clarifying issues, eliminating discrepancies and promoting understanding”.  However, examiners can refuse to meet with applicants if “the opinions of both parties have been fully presented and relevant facts are clearly determined by writing, telephone discussions, etc.” under the 2019 Amendments.

For patent applications involving complicated technical solutions, meeting with examiners can provide applicants with an opportunity to demonstrate or explain the technical intricacies of inventions to the examiners.  On the one hand, this helps examiners to understand an invention more accurately and compare it with the prior art.  On the other hand, it is beneficial for applicants to understand examiners’ opinions on relevant facts and legal issues.  Applicants with complicated applications may consider filing a request for an interview meeting at an early stage of the substantive examination proceedings to expedite the examination.

In terms of telephone discussions, the 2019 Amendments expands on the scope of discussions via telephone, which is no longer limited to “solving problems regarding minor and non-misleading formality defects”.  Instead, applicants may set up a telephone discussion with examiners on the understanding of the invention and the prior art and the problems that exist in the applications, which will improve the efficiency of examinations.  By adding the communication means, such as video conferences, e-mails and the like, the 2019 Amendments provide the option for more communication channels for applicants and examiners.

What should also be noted is that applicants should submit a formal written document for the amendments agreed by the examiner in the meeting or the telephone discussion, unless the amendments fall within the scope of the examiner's ex officio modification.

V.No exclusion on applications relating to Human Embryonic Stem Cell Technology solely on the grounds of non-compliance with Article 25 of the Patent Law

In the 2019 Amendments, inventions related to the use of human embryos to obtain stem cells will no longer be excluded from the scope of patentable subject matters.  The 2019 Amendments specify that “for inventions relating to stem cells isolated or obtained from human embryos within 14 days after fertilization that have not developed in vivo”, such inventions should not be rejected on the ground of “violating social morality”.  This means that, after the 2019 Amendments come into force, patent applications related to human embryonic stem cell technology may have the chance to be granted patent rights, which is valuable to biopharmaceutical companies in need of protection for stem cell related technologies.

VI.Clarification that technical effects should be those achieved in the claimed invention under examination when evaluating inventiveness, and the requirements on evidence when citing common knowledge

The 2019 Amendments clarify that in the examination of inventiveness when identifying the technical problems solved by an invention in accordance with the technical effect achieved by the distinguishing feature of the invention with respect to the reference documents, the technical effect should be that achieved “in the claimed invention”, rather than any other technical effects that the distinguishing feature can achieve.  The 2019 Amendments also emphasize that “for technical features that functionally support each other and have an interactive relationship, the technical effect achieved by such technical features and their relationships in the claimed invention should be considered as a whole”.  In fact, this principle has been applied in practice, for example, in the Decision of Reexamination No. 133119 issued by the Patent Reexamination Board of CNIPA (Note: This case was considered as one of the “Top Ten Patent Reexamination and Invalidation Cases in 2017”, which involved the invention patent No. 201310113848.0.).  This amendment will facilitate the application of the principle more uniformly by examiners.

In addition, the 2019 Amendments also specify that common knowledge cited in an office action normally needs evidence for proof.  If the applicant objects to the common knowledge cited by the examiner, the examiner should provide corresponding evidence as proof or explain the reasons.  If the examiner deems that the technical feature in the claims contributing to solving the technical problem belongs to common knowledge, he or she usually should provide relevant evidence as proof.  The 2019 Amendments regulates the citation of common knowledge during the examination proceeding.

VII.Requirements for the petitioner for invalidation to specify the primary combination among multiple combinations of evidence

The 2019 Amendments clearly stipulate that when citing multiple evidence in a request for invalidation, the primary combination should be first compared with the claims, and focus on the key points.  When the 2019 Amendments come in to effect, the petitioner that requests for invalidation can still submit multiple sets of evidence, but the primary combination should be placed at the beginning.  In practice, such rules have been generally followed by the Patent Reexamination and Invalidation Department in oral hearings for invalidation cases.  Therefore, such amendments will only have a limited impact on future patent invalidation practices.  But in the future, for invalidation cases, petitioners should carefully consider the various possible combinations of evidence before filing a request for invalidation and put the combination with the highest likely success rate at the forefront, and state in most detail the opinions of the petitioner.

In addition to the amendments described above that may affect the practice of patent application, the procedures for the examiner's search are also specified in the 2019 Amendments, and the requirements for the transfer documents or the qualification documents in the procedure of patent assignment are also added.

In summary, compared to the current Examination Guidelines, the 2019 Amendments provide applicants with more options, allow applicants to apply for prioritized examinations or deferred examinations based on their actual needs, relax the constraints on meetings and telephone discussions between applicants and examiners, clarifies the application requirements for design patent applications involving GUIs, and broadens the scope of patentable subject matter to include specific technologies involving human embryonic stem cells.

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