Decision by the State Intellectual Property Office on Amending the Guidelines for Patent Examination (Exposure Draft)

     The Guidelines for Patent Examination is amended by the State Intellectual Property Office as follows.

1.      The amendment of Section 4.2 of Chapter 1 of Part Ⅱ

Amendments to Item (2) of Section 4.2 of Chapter 1 of Part Ⅱ of the Guidelines for Patent Examination are as follows.

[Example]

If a claim involving business model contains not only the contents of business rules and methods but also technical features, then the claim shall not be excluded from patentability under Article 25.

Other contents of this section are not amended.

2.      The amendment of Section 2 of Chapter 9 of Part Ⅱ

Amend “computer programs merely recorded in mediums (such as tapes, discs, optical discs, magnetic optical discs, ROM, PROM, VCD, DVD, or other computer-readable mediums)” of the first paragraph of Item (1) of Section 2 of Chapter 9 of Part Ⅱ of the Guidelines for Patent Examination to “computer programs themselves merely recorded in mediums (such as tapes, discs, optical discs, magnetic optical discs, ROM, PROM, VCD, DVD, or other computer-readable mediums”.

Amend “computer-readable storage medium that is merely defined by recorded program” of the first sentence of the third paragraph of Item (1) of Section 2 of Chapter 9 of Part Ⅱ of the Guidelines for Patent Examination to “computer-readable storage medium that is merely defined by recorded program itself”.

Other contents of this section are not amended.

3.      The amendment of Section 3 of Chapter 9 of Part Ⅱ

Delete [Example 9] in Item (3) of Section 3 of Chapter 9 of Part Ⅱ of the Guidelines for Patent Examination.

4.      The amendment of Section 5.2 of Chapter 9 of Part Ⅱ

Amend “i.e., the apparatus for executing the process” of the first sentence of the first paragraph of Section 5.2 of Chapter 9 of Part Ⅱ of the Guidelines for Patent Examination to “for example, the apparatus for executing the process”.

Amend “and a detailed account shall be given on the component parts by which the various functions of the computer program are performed, and on how these functions are performed.” of the third sentence of the first paragraph of Section 5.2 of Chapter 9 of Part Ⅱ of the Guidelines for Patent Examination to “and the component parts includes not only hardware, but also program”.

Amend “function modules” of the second paragraph of Section 5.2 of Chapter 9 of Part Ⅱ of the Guidelines for Patent Examination to “program modules”.

Other contents of this section are not amended.

5.      The amendment of Section 3 of Chapter 10 of Part Ⅱ

Added Section 3.5 to Section 3 of Chapter 10 of Part Ⅱ of the Guidelines for Patent Examination, and moved Item (2) of Section 3.4 to Section 3.5 and then amended it. The contents of Section 3.5 are as follows.

3.5 Experimental Data Submitted after the Date of Filing

Whether or not the description is sufficiently disclosed is judged in the basis of the disclosure contained in the initial description and claims.

The examiner shall examine the experimental data submitted after the date of filing. The technical effects proved by the experimental data submitted after the date of filing shall be obtained from disclosures of the patent applications by a person skilled in the art.

Other contents of this section are not amended.

6.      The amendment of Section 4.2 of Chapter 3 of Part Ⅳ

Amend (i) of Item (2) of the Section 4.2 of Chapter 3 of Part Ⅳ of the Guidelines for Patent Examination to:

(i)   for claims amended in ways other than deletion by the patentee, addition of clauses for invalidation is made within the time limit specified by the Patent Reexamination Board, and the added causes are explained concretely within the time limit;

Other contents of this section are not amended.

7.      The amendment of Section 4.3.1 of Chapter 3 of Part Ⅳ

Delete “claims amended by way of combination” of the (i) of Item (2) of the Section 4.3.1 of Chapter 3 of Part Ⅳ of the Guidelines for Patent Examination.

Other contents of this section are not amended.

8.      The amendment of Section 4.6.2 of Chapter 3 of Part Ⅳ

Amend Section 4.6.2 of Chapter 3 of Part Ⅳ of the Guidelines for Patent Examination to:

4. 6. 2 Manners of Amendment

Subject to the above principles of amendments, the specific manners of amendment are generally limited to deletion of a claim, deletion of technical solution, further limitation of a claim, and amendment of obvious mistake.

Deletion of a claim means one (or more) claim, such as an independent claim or a dependent claim, is removed from the claims.

Deletion of technical solution means to remove one or more technical solutions from several parallel technical solutions defined in a same claim.

Further limitation of a claim means to add one or more technical features recorded in other claims to the claim so as to narrow the scope of protection.

9.      The amendment of Section 4.6.3 of Chapter 3 of Part Ⅳ

Amend “amend the claims by the way of combination” of the second paragraph of Section 4.6.3 of Chapter 3 of Part Ⅳ of the Guidelines for Patent Examination to “amend the claims in ways other than deletion”.

Other contents of this section are not amended.

10.  The amendment of Section 5.2 of Chapter 4 of Part Ⅴ

Amend Item (2) of Section 5.2 of Chapter 4 of Part Ⅴ of the Guidelines for Patent Examination to:

(2) For the file of a patent application for invention which has been published and the grant of patent right has not been announced, the contents in the file may be consulted and copied, including the application documents, formality documents directly relating to the application documents, public documents, notifications and decisions sent to the applicant in the preliminary examination procedure and the text of the observations submitted by the applicant in response to the notification, and notifications, search reports and decisions sent to the applicant in the substantive examination procedure.

Amend “notifications and decisions issued by the Patent Office or the Patent Reexamination Board to the applicant or parties concerned” of Item (3) of Section 5.2 of Chapter 4 of Part Ⅴ of the Guidelines for Patent Examination to “notifications, search reports and decisions issued by the Patent Office or the Patent Reexamination Board to the applicant or parties concerned”.

Delete Item (5) of Section 5.2 of Chapter 4 of Part Ⅴ of the Guidelines for Patent Examination.

Other contents of this section are not amended.

11.  The amendment of Section 7.4.2 of Chapter 7 of Part Ⅴ

Amend Section 7.4.2 of Chapter 7 of Part Ⅴ of the Guidelines for Patent Examination to:

7.4.2 Time Limit of Suspension Due to Execution Assistance of Property Preservation

For the Patent Office’s assistance for the suspension due to execution assistance of property preservation asked by the People’s Court, relevant procedures shall be suspended according to the duration of preservation written in the civil order and the Notification on Assistance in Execution.

Where the People’s Court orders to continue adopting measures of property preservation, it shall serve the Patent Office with a Notification on Assistance in Execution before the expiration of the time limit for suspension. The suspension may be extended if the Notification on Assistance in Execution complies with the regulations set forth in section 7.3.2.1 of this chapter after being checked.

12.  The amendment of Section 7.4.3 of Chapter 7 of Part Ⅴ

Delete “or asked by the People’s Court to assist in execution of property preservation” of Item (5) of Section 7.4.3 of Chapter 7 of Part Ⅴ of the Guidelines for Patent Examination.

Other contents of this section are not amended.

      This Decision shall enter into force as of                        .

State Intellectual Property Office’s Explanation on the Guidelines for

Patent Examination Draft Amendment (Exposure Draft)

1.  The significance and main process of the Guidelines for Examination Amendment

The State Council Several Opinions on Deepening System Reform to Accelerate Innovative Action Developmental Strategy (ZhongFa﹝2015﹞No.8) indicates: We shall research the intellectual property protection of new innovation products like business model. The State Council Several Opinions on Construction of a powerful Country by Accelerating Intellectual Property Construction Under New Situation(GuoFa〔2015〕No.71) indicates: we need to strengthen the intellectual property protection of innovation products in new types of business and new fields, and to research and perfect commercial intellectual property protection system; we need to intensify intellectual property rights research in the Internet, e-commerce, big data, etc., and to promote improving relevant laws and regulations; we need to improve patent documents amendment system after authorization; and we need to promptly exposure information in the patent examination process according to law.

  In recent years, internet technology flourishes and is deeply integrated with various economic and social arenas, which promote all walks of life commercial model’s innovation effectively. Through the investigation discovery, innovative subject wishes patent system can provide protection to innovating technical proposals among commercial models. In addition, in the patent examination practice, innovative subject puts forward attention and requirements in these aspects: examination principle of innovative subject to resubmit experimental data explicitly, alter mode of after authorization patent documents, further discloses the information of patent examination process, etc., which are reasonable, and it is necessary to give positive feedbacks at regulation level, clarify examination standard, enhance the administration by law, and upgrade the government’s public service levels. After relevant laws modified, patent examination process needs to be adjusted accordingly.

To better implement the central government and the State Council document spirit, solve problems of serious social reflection and urgent need in time, and constantly promote improving patent examination system, in the late 2015, State Intellectual Property Office launches the modification work on the Guidelines for Examination (referring to Guidebook). Combining the investigation and discussion, through careful study and advice taken by some enterprises and professional agencies, the Guidelines for Examination Draft Amendment (Exposure Draft) is formed.

2.      The main revision content

(1)   The revision of the second section from chapter one(non-patentable application)

The present Guidelines stipulate: intellectual activities’ regulations and methods related to business implementation managerial approach and system or other aspects, belongs to non-patentable object. With the increasing popularity of internet technology, innovative business models are emerging, such as Finance, Insurance, Security, Auction, Investment, Marketing, Advertising, Operating and Management, etc. These new business models are well in operation, have good user experience, enhance the resource allocation and flow efficiency, save the social cost, and improve social welfare. Thus, positive encouragement and proper protection should be given to innovative technical solution in this kind of business model, and we cannot refuse to give granted patent for the business rules and methods included. It is proposed that Guidelines clearly stipulate: If claims involving business model not only contains business rules and methods, but also contains technical features, then we cannot eliminate the possibility of acquiring patent right according to Article 2 in Patent Law. (Section 4.2)

(2)   The revision of the second section from chapter nine(several regulations involving computer programs’ application of innovation patent examination)

a)      Further define “computer programs themselves” are different from “innovation involving computer programs”, permit using the way of “medium+ computer programming process” to write claims.

According to Article 25 in Patent Law and the second section in chapter one from Guidelines’ listed regulations: “computer programs themselves” belong to intellectual activities and methods, which cannot require patent protection. Present section 1, chapter nine in Part two gives a clearly definition of “computer programs themselves”; but “references of invention applications relating to computer programs” doesn’t express “computer programs” or “computer programs themselves” separately, then in practice,  the misunderstanding-“invention relating to computer programs” cannot acquire patent protection may occur. To this issue, it is proposed to separate the two, add “themselves” after “computer programs” or “programs” to item (1) of section two, clarify that only “computer programs themselves” don’t belong to patent protection object, and “invention relating to computer programs” can acquire patent protection so as to clarify the permission of using “medium+ computer programming process” method to write claims. (Section 2)

         b)  Clarify the components of device claims can involve programs

         The feature of computer product is that the software and hardware are components working cooperatively, and both of them can improve and innovate. Patent innovation claims relating to computer programs can be written as one method claims, and it can be written into a certain type of product claim, the most common one is “device for performing the method”. According to present Guidelines, device claims writing method may easily be regarded program process as limit hardware’s method and functions. To guide applicants to describe the revision involving programs process in creation activities, it is proposed to delete “ the various functions to be performed by the computer program and the way to perform the functions shall be described in detail according to the steps of the process” from section 5.2, paragraph one, and add “the stated combining part not only includes hardware, but also programs” in the final part of paragraph one and make it clear that “programs” can be components of device claims. Meanwhile, adaptively modify “the apparatus for executing the process” into “such as the apparatus for executing the process” is proposed.

         c) Modify “function module” into “program module”

         The present Guidelines’ expression relating to “functional module” doesn’t clearly reflect the essence of technology; it can easily be confused with “functional limits”. It is proposed to modify “function module” into “program module” from section 5.2, paragraph two. (Section 5.2)

         Besides, delete “a system for learning foreign language with active selection of learning with active selection of learning contents” which is meaningless to practice. (Section 3)

(3)   The modification of part two in chapter ten(invention patent application’s several opinions in chemical field)

When judging whether the instruction is fully disclosed, we shall subject to original instruction and claims. Thus present Guidelines stipulate that the resubmitted experimental data would not be considered. However, if the resubmitted experimental data is used for proving a person skilled in the relevant field of technology can acquire technical effect from patent application disclosing content, and then examiner should make examination. To avoid potential misunderstanding the present regulations may bring and give a definite answer to how can an examiner make examination for resubmitted experimental data, it is proposed to add “on resubmitted experimental data” in section 3.5, shift the experimental related data from section 3.4 to section 3.5, and modify “any embodiment and experimental data submitted after the date of filing shall not be taken into consideration” into “as for the experimental data submitted after the date of fling , examiner should make examination. The proving technical effect of resubmitted experimental data shall belong to the content which the technical staff can get from public patent application. ” (Section 3.5)

(4)   The modification of part four in chapter three(examination of the request for invalidation)

a)      Release the patent document’s revision method moderately

According to present Guidelines, as for the modification of authorized patent document, the modifying ways are restricted to delete claims in the procedures for requesting invalidity declaration, and combine or delete technical solution. In practice, patentee wishes the patent modifying way can be more flexible, he permits adding technical features in claims or instructions, and permits modifying obvious mistakes. However, since the protection scope of a patent right is based on the content of claims, the claim of patent grand statement has the nature of publicity, and the modification of patent document cannot destroy the public’s reliance interests. After comprehensive consideration, it is proposed to moderately release patent document’s modifying way, permit adding one or several technical features recorded in other claims to narrow the protection scope, and permit modifying obvious mistakes in claims. (Section 4.2, 4.6.2, 4.6.3)

b)      Adjust regulations related to applicant’s adding ground of opposition to grant of patent and additional evidence.

Item 67 of The Implement Regulations of Patent Law stipulates: After accepting request for invalidation by patent reexamination board, the applicant is able to add ground of opposition to grant of patent and additional evidence in the first month from the date of requesting for invalidation; If the adding ground of opposition to grant of patent and additional evidence is overdue, the patent reexamination board can put away. In practice, after modifying patent document by patentee, the ground of opposition to grant of patent opportunity should be increased, but it only ought to be modification to patentee. In view of the above moderately releasing modifying methods of patent document, it is proposed to specify the applicant “for claims amended by way of combination by the patentee” adding ground of opposition to grand of patent, which should only regarded as “for amended content by the patentee”. (Section 4.2)

         Since there aren’t technical methods in former claims, when patentee modifies claims by adding technical methods from other claims, applicant only needs to adjust the evidence submitted compound mode, not to adding any other evidence. Therefore, it is proposed to delete regulation related to “concerning claims amended by way of combination or counterevidence presented by the patentee”, which requires applicant to add evidence within a specific period of time and avoid the unreasonable lengthening of program.(Section 4.3.1)

(5)   The modification of part five in chapter four(patent application document)

The present Guidelines stipulates: as for the disclosed but not publicly authorized invention patent’s file, we can only consult and copy the patent’s application file until the file authorized. The regulation is harmful to technical communication and is influencing the public’s acquiring patent examination information and the supervision in patent examination work. Hence, it is proposed to add publicly consulting and copying content, delete the regulation “until the date of publication” in item 2, section 5.2, and increase the consulting and copying scope to substantial examination process, including send notice, research report, and decision letter to applicant; In item 3, as for the publicly authorized patent application file, list “research report” into permitted consulting and copying issued by Patent Office. Besides, in section 5.1, “the principle of consulting and copying” have specified the principle of whether the content is permitted to consult and copy or not, so it is the evidence for determining if the document can be consult and copy, it is proposed to delete the regulation in item 5, section 5.2: “except where stated above, any other documents are not allowed to be consulted or copied.”(Section 5.2)

(6)   The modification of part five in chapter seven(deadline, restoration of rights and suspension)

              With the purpose of effectively easing the problems of difficulty in effective judgment enforcement, the modified Civil Procedure Law  took into effect on January 1, 2013; the law further demands the requirements of assisting executive obligations like detention and freezing assets. Thus, it is proposed to modify regulations related to stopping programs in present Guidelines, specifying where the People's Court requests the patent application bureau to suspend the proceeding in order to assist property preservation, the Patent Office shall stop related proceeding according to civil ruling paper and the property preservation period in assisting executive notice; after the stopping expiration of the period, if People’s Court demands to continue the property preservation measure, the assisting executive notice of continuing preserving property shall be send to Patent Office before the date of expiration, the notice meeting the requirements after examination can lengthen the date of expiration. According to the regulation from item 86 to item 88 in Implement Regulations of Patent Law, requirements related to the deadline of invalidation proceedings should be standardized.