Highlights on New Examination Guidelines

Recently the State Intellectual Property Office of China has officially published the revised Patent Examination Guidelines which will become effective as of July 1, 2006. The following are some highlights of the revision that may lead to certain changes or clarification regarding patent prosecution in practice.

1. Time point for filing divisional application(s) on the applicant's own initiative

a. According to the law, so long as an application is pending or within two months after the date of the grant decision, the applicant is entitled to file divisional application(s) from the application.

b. Upon receipt of a rejection decision, the applicant is entitled to file divisional application(s) within three months regardless whether or not a request for re-examination is duly filed with the Patent Re-examination Board (the PRB);

c. During the re-examination procedure at the PRB or even during the appeal procedure before the court for not satisfying with the re-examination result of the PRB, the applicant is entitled to file divisional application(s) from the application.

d. In addition to the above time points (a. b. and c.), there is a specified restriction on filing a divisional application based on a divisional application. To file a further divisional application based on a divisional application, it is a precondition that the first parent application as initially filed in China is either in a status of pending or within two months of the date of grant decision. In other words, if the first parent application has been announced a patent or abandoned, it is not acceptable for the applicant to try to divide its divisional application into further divisional application(s) on his/her own initiative.

e. Any divisional application duly filed at an examiner's objection to the unity of the application will be accepted without a consideration of the above mentioned precondition of the status of the parent case. That is, it is possible for the applicant to file a further divisional application based on a divisional application if the unity of the divisional application is protested by the examiner, even when the said first parent case has been issued or withdrawn

2. Treatment for double patenting

The Chinese Patent Law does not allow double patenting for one invention. If there are two identical applications co-existing at the SIPO and one of them has been issued a patent, the applicant will be requested to make a choice and a statement to declare to maintain one of the two cases when the second case is examined and is to be granted. According to the current practice, the applicant may make a statement stating that the previously granted patent will be abandoned on the date when the second case is granted. However, the new Guidelines request that the applicant make a statement that the previously granted patent is abandoned since the filing date of the previous application, if he/she would like to maintain the later granted case and abandon the previously allowed one.

As a matter of fact, it is the case that some of applicants take a strategy to co-file two applications for the same invention at the beginning, one for a patent for invention and the other for a patent for utility model, aiming to get an earlier grant by way of utility model and also to get a searched and examined patent by way of patent for invention. And later on they will have the previously granted utility model abandoned once they are requested to make their option to maintain one case when the later case is found patentable and identical with the previous one. It is also the case that a divisional application is filed within two months upon the parent application is granted when the granted patent is found not perfect and needs to be modified or corrected. We believe that the new regulations should be taken into account when adopting such a strategy of co-current filing in terms of enforcement of the patent right.

3． Software-related patent applications

(1) It is explicitly stipulated that it is not necessary for a solution relating to computer program to include the change of computer hardware.

(2) A claim, which merely relates to an algorithm or rules of mathematical computing, is not patentable for the reason that it falls into the category of rules and methods for mental activities.

(3) A claim, which is defined not only by the features of rules and methods for mental activities, but also by certain technical features, should not be considered as rules and methods for mental activities as a whole, and its patentability should not be excluded in accordance with Art. 25 of the Patent Law.

(4) A computer-related invention is a patentable subject matter when it constitutes a technical solution only. A technical solution refers to such a kind of solution that is adopted to resolve a technical problem by using technical means and can produce technical effects.

(5) Generally, it is accepted by the new Guidelines that the claim for product may be defined in the way of means plus functions corresponding to each step of the corresponding process claim of a computer software invention, and in this way, the claimed product would be considered as a solution consisting of these functional modules fulfilled by the computer program, rather than a physical entity which implements the solution by way of hardware.

4. Chance for argument before being rejected

The Guidelines prescribe that normally a rejection decision would be made after at least two office actions if the case is found not in a condition of being allowed. Especially if the applicant's response to the first office action includes amendment to the application document, a second office action should be issued upon consideration of the amended document before a rejection decision would be issued. By this specified rule, even for some prudent applicants, it may be worth while to try to use the chance to argue for their applications in response to the first office actions by filing amendment to the applications before surrender, as there will be a second office action in the light of the arguments and amendment.

5. Publication (Art. 22 of the Patent Law)

It is clearly specified that the publication in internet consists of disclosure of publication and is bar to the novelty of the same invention.

6. Exception of lack of novelty

Under Article 22 of the Chinese Patent Law, China adopts absolute novelty requirement in terms of publication while relative novelty in terms of use or knowledge that is made public by other way than publication. It is explicitly described in the new Guidelines that displaying in an exhibition held in a foreign country does not constitute disclosure while the publication of the invention spread during such an exhibition will raise a bar to the novelty of the same invention.

7. Sufficient disclosure of chemical inventions

Sufficient disclosure is emphasized in the new Guidelines. It sets forth the requirements in detail for the full disclosure for either the invention for chemical product, for chemical process or for usage of chemical product. New embodiments or new experimental/test data filed after the filing date for overcoming insufficient disclosure issue will not be considered. For a new use of a known compound, the description shall set forth experimental data/test date for proving said use and effect.

8. Unity of invention of Markush claims

The unity requirements used to be set forth as: "All the Markush elements should meet the following standards: (1) all alternative compounds possess a common property or activity; and (2) all alternative compounds possess a common structure, i.e. they share a common main structure unit; or under the circumstances that they do not have a common structure, all of the alternative compounds are regards as belonging to the same class of chemical compounds in the relevant technology of the invention". They are replaced by the following provisions in the new Guidelines: "All the Markush elements should meet the following standards: (1) all alternative compounds possess a common property or activity; and (2) all alternative compounds possess a common structure, which common structure constitutes a distinguishing feature between the present invention and the prior art and is absolutely necessary for the common property and activity, or under the circumstances that they do not have a common structure, all of the alternative compounds are regarded as belonging to the same class of chemical compounds in the relevant technology of the invention."

9. Examination on the gene engineering related inventions

The new Guidelines set forth in detail the regulations for examination of gene engineering applications in the light of the special natures of the invention in the field.

10. Restoration for request for re-examination

It is explicitly acknowledged that if the request for re-examination or the payment concerned is somehow considered officially not in conformity with the formality requirements, it is possible for the applicant to restore the re-examination request by making up necessary steps.

11. Time limit for evidence provision during the invalidation procedure

It is clearly set forth that the time limit for the petitioner to supplement evidence is within one month from the date when he/she files the petition for invalidation. The evidence submitted after the one-month period will not be considered by the Panel.
12. New regulations for the petition of correction of search report with respect to a utility model patent

There is a new procedure for the patentee of a utility model to request for correction of a search report where any mistake like the following is found. That is, (1) a mistake among the data of bibliographic information or the characters is found, (2) the procedure of making the search report is found inappropriate; (3) the regulations of laws applied thereto are found inaccurate; (4) the fact on which the preliminary conclusion is made is wrong; or (5) there exist other mistakes that should be corrected. The patentee can raise the correction requirement within two months from the date of receipt of the search report.

13. For a PCT application, electronic form of sequence list without hard copy in paper is acceptable.

In summary, the new Guidelines set forth more flexible and operative requirements for formalities or preliminary examination of patent applications. For formalities, it goes in conformity with the international trend of "applicant-friendly" and is quite encouraging. For the substantive examination, it provides clarification for quite a few vague points that used to be uncertain for the applicants and makes the substantive requirements standardized and easier to be followed.