SIPO amends its Patent Examination Guidelines
by Guangyu Zhang (Wan Hui Da – Peksung Intellectual Property Group - China)
Directive of the State Intellectual Property Office on Amendment to the Patent Examination Guidelines (2017) (#74)
The newly amended Patent Examination Guidelines of SIPO will take effect on April 1, 2017. The amendments involve important changes concerning business method and software related inventions, post-filing data and invalidation procedure.
The proposed amendments involve patentability of business methods, provisions about inventions relating to computer programs, provisions about experimental data submitted after the filing date, provisions regarding invalidation requests, accessibility of patent application documents, and provisions regarding suspension.
The new Patent Examination Guidelines are summarized below:
A notable amendment is the introduction of a provision concerning the protection of business models. A new paragraph is added in Chapter 1, Part II which concerns unpatentable creations. This new paragraph stipulates that a claim involving business models shall not be excluded from patent protection if, apart from the description of the business rule and method, it includes technical features. This provision opens a door for protecting a business method under the Patent Law.
Several amendments are introduced in Chapter 9, Part II concerning patent applications for computer implemented inventions. They intend to clarify that a computer program per se is different from an invention relating to a computer program, and thus it is allowed to draft a claim directed to a media plus computer program flow. The amendments also clarify that a claim directed to an apparatus may include a program as a component part. The expression “function module” is replaced by “program module”, in order to better reflect the technical nature and distinguish clearly from the expression “functional definition”. The amendments in this part reflect a tendency that the SIPO is becoming open to protecting computer implemented inventions under the Patent Law.
The provisions about post-filing data (Chapter 10, Part II) are also amended. The current provisions that any embodiment and experimental data submitted after the filing date shall not be taken into consideration are deleted. Instead, a new section about post-filing data is introduced to specify that the examiner shall have to examine the experimental data submitted after the filing date, but the technical effect shown by the experimental data shall be obtainable based on the disclosure contained in the initial description and claims, from the viewpoint of a person skilled in the art. This amendment seems to be a sign that the SIPO has become more lenient to the applicant.
Regarding invalidation procedure, Chapter 3, Part IV loosens the way to amend a patent document, specifying that it is allowed to incorporate one or more technical features recited in other claims into a claim so as to limit the protection scope and that it is allowed to correct obvious errors in the claims. The provisions about the introduction of new invalidation grounds and new evidence are also amended to specify that new grounds concerning the claims that have been amended by incorporating technical features recited in other claims or by correcting obvious errors, shall be limited to responding to such amended contents. The provisions that the petitioner may present additional evidence within a specified time limit in response to amended claims by way of combination are deleted. As a result of such amendments, the patentee will stand in a more advantageous position in a patent invalidation procedure.
Regarding accessibility of patent application documents, Chapter 4, Part V broadens the scope of the contents accessible to the public. Anyone may consult and photocopy notifications, search reports and decisions issued during the substantive examination procedure for a patent application under examination as well as the priority documents for a patent.
Chapter 7, Part V brings the Examination Guidelines in compliance with the new Civil Procedure Law, specifying that the Patent Office shall suspend relevant procedures for the period indicated by a civil order or notification on assistance in execution issued by a people’s court, in relation to property preservation.
Generally speaking, the amendments reflect an attitude of the SIPO to be more friendly to applicants and patentees and to provide better service for the public.