SIPO to Amend the Guidelines for Patent Examination

published on 7 Feb 2017

The State Intellectual Property Office of the P.R. China (SIPO) on October 27 of 2016 published the “Draft of Amendment to the Guidelines for Patent Examination, for public comment” (“Draft”).  SIPO invited reviews from the general public and also welcomed submissions of any comments before the designated due date. The American IP Law Association (“AIPLA”) has submitted its comments to the Draft with commentary and additional proposals. Crystal J. Chen, a partner from the Tsai, Lee & Chen, contributed in translating part of AIPLA’s comments.

The Draft is presented with the following areas of amendment in emphasis.

Patent eligibility of business methods

The Draft affirmatively confirms business method’s eligibility for patent. If a claim directing to a commercial model comprises both business methodology as well as technical features, it shall not be excluded of patent eligibility. In recent years it has been found that, following the significant developments of financial technology, new models of business operation such as finance, insurance, securities, lease, investment, marketing and advertisement have all been springing up fiercely. Many of these new models have successfully contributed to the public by increasing the efficiency of resource allocations and circulation, economizing social costs, increasing national benefits, etc. By confirming patent eligibility, it may encourage more investments into business method by granting them patent rights.

Inventions relating to computer program

Pursuant to Article 25 of the Patent Law and Chapter 1, Part II of the Guidelines for Patent Examination (GPE), the computer program per se falls in the category of rules and methods of mental activities which are not eligible for patent protection. Some misled inferences about the protection of computer program related inventions have arisen due to ambiguities in the use of words in some paragraphs of the GPE. The Draft now removes such misinterpretation by clarifying that only the computer program per se will not be protectable. Instead, a claim composed in a style as “mediums plus computer program” is allowable. Specifically for instance, a claim set forth as follows will be allowable:

A non-transient and tangible computer-readable medium (CRM), wherein the CRM further comprises a program, wherein the program is executed in a processor to perform a set of instructions for a method to obtain geographical address information, wherein the method comprises:

Step A;

Step B; and

Step C.

Also, in the Draft, an apparatus claim can include a computer program as a component. That is, an apparatus claim can recite both hardware and software or recite a coordination/interaction between hardware and software. An apparatus claim does not limit to one directing to apparatus executing the process, meaning that an apparatus claim for software-related invention may enjoy more freedom and flexibility to compose a claim.

In the Draft, each of the computer program flow components in an apparatus claim shall be construed as a “functional module,” instead of a “program module.” Functional module referred to in the GPE is to define each step to implement the program flow as each corresponding component in an apparatus claim. Since the description of a function of each step in the program is easily confused with a “means for” style of claiming language, the term “program module” can more precisely pinpoint the nature of program component in an apparatus claim.

Data supplementation during examination of chemical inventions

According to the Draft, the examiner shall examine the experimental data submitted even after the filing date. (Section 3.4(2), Chapter 10, Part II, GPE) The technical effect shall be supported by the later-submitted data and shall be obtainable in the light of a person having ordinary skill in the art from the disclosure in the patent specification.

It is worth noting that confusions may be resulted as to which data is to be acceptable and to be deemed as sufficient disclosure. AIPLA proposes to elaborate on this section mainly by affirmatively emphasizing that the acceptable data should be those exist in or inherently flow from the disclosure of the patent application, and that all data submitted ought to be examined to determine whether it supports the disclosed technical effects. Furthermore, AIPLA proposes that after a thorough analysis, a post-filing data supplementation clause should also be applicable to other fields of invention.

Even after the Draft becomes effective, applicant should still be careful of the requirements for sufficient disclosure. For instance, the steps and conditions of an experiment should be clearly provided, terminology or measure system not use regularly in the field should be avoided, experimental data and the asserted use or physiological effect should keep in consistency, etc. 

Slight relaxation on post-grant amendment

As the currently effective rule, post-grant amendment to a patent specification can only be 1) Deletion of claims, 2) Combination of claims, and 3) Deletion of technical solutions. According to the Draft, the addition of one or more technical features from other claims in order to narrow the scope of protection will be permitted, as well as correction of obvious errors in the claims.

For example, a claim set reads as below.

1. An apparatus for manufacturing a processor comprising A and B; and

2. The apparatus according to claim 1 further comprising C and D.

For narrowing claim 1 to avoid patentability challenge, based on the current rule one can only delete the entire claim 1 while leave and restructure claim 2 reciting “an apparatus for manufacturing a processor comprising A, B, C, and D.” According to the Draft, amended claim 1 will be permitted to add just one technical feature at minimum, i.e. “C” herein, to recite “an apparatus for manufacturing a processor comprising A, B, and C.”

The reason to emphasize with two caveats regarding Chinese post-grant practice is that the amendment after a grant is admissible only when an invalidation action is activated against the very patent, and that a granted claim cannot be amended by incorporating technical features from the specification. Thus, it is so advised that, when preparing for a specification and claim set, all necessary technical features have to be included in the claim set which is structured in a strict hierarchy of claimed elements. Although the practice sometimes implies more claims to be presented and corresponding examination fees to be paid for, it assures critical features being available in a situation where post-grant amendment is inevitable.

Although the Draft allows incorporation of technical features from other claims, AIPLA suggests more progressively hoping to further permit amendments to a granted claim by incorporating technical features straight from the description of specification. AIPLA explains that such practice would improve harmonization with other major patent offices and also creates a balance of interests between the patentee and the public.  

Rules regarding invalidation actions

The Draft removes the rule that allows a requester who raises invalidation action to supplement new evidence directed to patentee’s claims amendment by incorporating other claims. Since amendment by incorporation does not introduce new matters, an invalidation request will only need to reorganize the submitted evidence. By allowing supplementing new evidence means repetitive challenges and defense which do irrationally prolong the proceeding. The Draft does not create any procedural hardship to the requester. In fact, by uncovering new evidence not previously submitted, the requester can nevertheless initiate another, independent, invalidation action.

Scope of file wrapper accessibility

The scope of review and duplication of file wrappers available for the public will be enlarged. According to the Draft, the general public can access to all file wrappers not only limited to those prior to the publication date. In addition to published application and specification, the general public will be able to further access to documents of substantive examination including official letters, search reports, examination decisions, etc.

Collaborative implementation of civil procedures

To comply with the Civil Procedural Law 2013, the Draft requires that where the court rules to suspend a proceeding for an ordered period of time for property preservation, local patent office shall perform administrative assistance to act accordingly.  

Short Conclusion 

Overall the Draft has been welcomed from various perspectives for its introduction of improvements that are by and large echoing the needs of the rapid developments in technologies. Without procrastination, one may expect the Draft to become effective in the first half of 2017. 

for any questions relating to this topic, please contact us at cjchen@tsailee.com.tw