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Although the Chinese Patent Law per se has not been changed since 2008, the Guideline for Patent Examination in China has been revised three times since its enforcement on 1 February 2010. The most recent revision of the guideline came into force as of 1 April 2017, bringing some significant developments in the patent practice.
Outline of changes in the guideline:
- Examination of inventions relating to business models – more friendly;
- Examination and protection of inventions relating to computer programs – more allowable subject matter and ways of claim drafting;
- Amendment during patent invalidation procedure – more flexibility;
- Examination of post-filing experimental data – allowed for proving sufficient disclosure;
- Content allowed for consultation and photocopying – more content for consultation and photocopying;
- Time limit of suspension due to execution assistance of property preservation – fewer limitations.
Business model inventions
In recent years, development of computer technology, especially internet technology, has effectively promoted the innovation of business models in various industries. In order to meet the demands of innovators for patent protection for innovation outcome relating to novel business models combined with computer technology, and to encourage such innovation, the revised guideline clearly provides that, “if a claim related to a business model involves not only content of business rules and methods but also a technical feature, it must not be excluded from the possibility of being granted a patent right according to article 25 of the patent law”.
The guideline thus intends to clarify that a solution, as long as involving a technical feature, must not be excluded from the patent-eligible subject matter merely because it relates to business models.
With this revision, the examination for business model-related inventions will mainly consider the novelty and inventiveness of the inventions. But we still have to wait and see the standard of evaluating the inventiveness of such inventions in future patent practice.
According to past examination practice in China, computer programs and carriers (computer-readable storage media) characterized only in computer programs are patent-ineligible subject matters. The revised guideline now emphasizes that computer-readable storage media that are patent-ineligible subject matters are limited to computer readable storage media that are merely defined by recorded programs per se, where the addition of the word “per se” intends to distinguish a sequence of instruction codes from a solution based wholly or partially on a program processing flow.
In other words, if the computer program stored in a computer-readable storage medium embodies a technical solution that solves a technical problem, the computer-readable storage medium falls within the category of patent eligible subject matters.
The revised guideline also provides that when an invention relating to computer programs is drafted as an apparatus claim, the component parts of the apparatus “may comprise not only hardware but also computer programs”. In contrast, the past examination practice in China did not allow computer programs as a component of an apparatus.
The revised guideline further clarifies that the “means” component in an apparatus claim corresponding to a computer program-implemented method claim is regarded as a program module, and the apparatus comprising such means is regarded as program module architecture.
More significantly, according to the revised guideline, an apparatus claim relating to computer programs is not required to be limited to “means plus function” as it used to be, but other forms of claim drafting such as “process plus memory storing computer program instructions” also become acceptable, just as in the US, EU and many other jurisdictions.
In summary, with respect to inventions relating to computer programs, more ways of claim drafting are allowable, including but not limited to: a method comprising various steps; a computer readable storage medium on which computer program instructions for performing various steps are stored; an apparatus comprising modules [means] for performing various steps; and an apparatus comprising at least a processor and a memory on which computer program instructions, when executing on the processor, for performing various steps are stored.
Changes to the guideline with respect to the invalidation procedure relate to two aspects: (1) relaxing the restriction on manners of amendment during invalidation proceedings; and (2) consequently allowing adding grounds for invalidation.
For a long time, in accordance with the guideline, the manners of amendment permissible during invalidation proceedings were limited to cancellation of claim, combination of claims, and cancellation of technical solution. In the revised guideline, combination of claims is deleted, while two other manners of amendment, i.e. further limitation to claim, and correction of apparent error in the claims, are added.
Further limitation to claim is limited to incorporating into a claim one or more technical features recited in other claim(s), so as to narrow the extent of protection. Incorporating features from the description is still not permissible. It could be found that the Chinese Patent Office endeavours to seek a balance between enhancing the protection of patentees and not prejudicing the reliance interest on the part of the public.
In response to the amendment made by the patentee other than cancellation of claim, the petitioner of the invalidation proceeding is allowed to add new invalidation grounds, accordingly, directed to the amended content. Herein “amendment other than cancellation of claim” includes both further limitation to claim and correction of apparent error.
According to the previous guideline, the petitioner was allowed to introduce new evidence once the patentee made amendments in the manner of combination of claims or adduced counter-evidence. In the revised guideline, the petitioner is no longer allowed to introduce new evidence in response to the further limitation to claim made by the patentee. The reason is quite clear: further limitation to claim is made within the features recited in the granted claims, as such the petitioner only needs to reorganize the evidence, without the necessity of adding new evidence.
CCPIT PATENT AND TRADEMARK LAW OFFICE
10/F, Ocean Plaza
158 Fuxingmennei Street
Beijing 100031, China
Email: [email protected]