Draft Amendment to the
Patent Examination Guidelines released by CNIPA
A proposal to amend the Patent Examination Guidelines was made internally at the National IP Administration of PRC (“CNIPA”) before the end of 2017. In April of 2019, CNIPA released a draft amendment on the Examination Guidelines, and invited advices from the IP community to render their comments on this new version of draft within a period of one month. Many changes in the draft were made in devotion both to clarify the phrasing and optimize current practices. For elaboration, emphases of the new Examination Guidelines are digested as follows.
Divisional Applications
The new Examination Guidelines clarified the timeframe to file for a divisional with a lack of unity because it is absent in the guidelines currently in effective. The phrasing specified that “a further (grandchild) divisional” raised in a (child) divisional shall be made, though falling short of unity, within a designated timeframe based on the child divisional application. As a reminder, the supreme time structure will remain the same that one can only request for divisional applications with the parent (the very first application) pending.
To file for a divisional, the applicantship shall be the same as that recorded in the parent application. For any inconsistency with the applicantship, an agreement of the assignment or a similar instrument demonstrating a change with the applicant shall be recorded at the Bibliographic Database of CNIPA before one/they file for a divisional application. To cope with the new requirement, foreign counsels are advised to retain a longer period of time ahead of giving instruction on a divisional application to a local counsel, if the applicants turn different.
Also, the examiner is empowered to investigate or validate both the executions of an assignment by an assignee and assignor, such as any possible inconformity of stamps, seals, signatures, and others that are used on the application sheets and assignment. Therefore, one shall ensure that such executions are not erroneous.
Graphical User Interface
Graphical user interface (GUI) that is visible when a given electrical tool is powered up became patent-eligible from March 2014. Within the new Examination Guidelines, it exemplified the proper title of a patent for GUI design as “a refrigerator having temperature-control GUI” or “a dynamic GUI for weather forecast installed on a cellphone.” Nonetheless, a title cannot be as indefinite as “a GUI for software” or “an operable GUI.”
Submission of drawings for GUI was even more specified. The applicant may submit only one orthographic view which clearly presents the product indicating to which GUI is installed. In the case where dynamic views are involved, the applicant may submit an orthographic view of one state as the front view, with views of other states in serial transformation also provided.
Benchmark of Inventive Step for Invention Applications
China uses a “problem-solution approach” similar to that by EPO to determine inventiveness. The examiner shall, at first, identify the “distinguishing features” different from that of the prior art to establish a technical problem objectively. And then, the examiner shall identify the technical problems with solution offered by the technical effect of the distinguishing features “in the claimed invention.” In other words, the examiner shall not identify a technical problem simply by his plain understanding of the effect of the said distinguishing feature according to ordinary knowledge or in a prior art for reference.
For multiple technical features that are functionally in collaboration and interacting, the examiner shall consider the technical effects resulted from those technical features and their coordination in comprehensive terms. As a caution to the examiners, the new Examination Guidelines emphasized that any technical feature that has “no contribution” to solve a technical problem does not carry much weight to determine the inventiveness of a technical solution in a claim.
One may be optimistic about this change. In fact, an examiner is prohibited from challenging claims by an arbitrary dismantle or over-segmentation of a synergetic assembly of the claimed technical features. Furthermore, an applicant will have more ammunition in the future, such as hindsight bias, to argue over inventiveness rejections.
Also, the examiner shall provide corresponding evidence of proof or state reasons in order to reject by citing a piece of common knowledge. In addition, if the examiner considers the technical features having contribution to the solution of a technical problem as common knowledge, the corroborative evidence shall generally be provided
Telephone and In-person Interviews
Some current restrictions are scheduled to be removed. At any time during pendency, both examiner and applicant may, when occasion requires, request for a conversation. Rather than only formality issues, a conversation may include the interpretation from both parties about the claimed invention and prior art for references. The new Examination Guidelines stressed that a phone conversation is, in no circumstances, inferior to an in-person interview simply as of its formality in which conversation has been conducted. Other options include video conferences and emails.
Furthermore, the production of logs and records of conversation will no longer be a mandatory requisite at the end of the examination.
An amendment simply orally agreed between the examiner and the applicant cannot, in whatsoever way, replace a paper submissions. Only a formal request accompanied by amendments in writing will officially enter.
Invalidity Action
When the challenger presents multiple references and there is more than one way to combine those references, the examiner shall start with a “primary” combination. If the challenger fails to designate a primary combination, the first combination will by default be reckoned as the primary one. It is foreseeable that the entire procedure of an invalidity action will be accelerated with disputes concentrated.
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