The draft amendment to patent examination guidelines

By Duan Xiaoling and Sun Zhanhua, Wanhuida Peksung IP Group
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China National Intellectual Property Administration (CNIPA), on 4 April 2019, released on its official website the “Draft Amendment to the Patent Examination Guidelines”, soliciting public opinions before 5 May 2019 as to how the Draft could be improved. The Draft proposes revisions to both substantive and procedural aspects in preliminary examination, substantive examination and invalidation proceedings. The major changes are analyzed below.

Time limit for filing further divisional applications

Patent examination
Duan Xiaoling
Senior partner
Wanhuida Peksung IP Group

The Draft clarifies the time limit for filing further divisional application(s) on the basis of the existing divisional application due to unity objections raised by the examiner. In that case, a further divisional application should be filed before the prosecution of the existing divisional application completes. More specifically, the deadline should be the expiration date of the two months period starting from receipt of allowance notice of the existing divisional application.

Under the current practice, as the deadline for filing a further divisional application based on the existing divisional application is not explicitly specified in the Examination Guidelines, the applicant may file further divisional applications just by submitting the examiner’s unity objection notice, without being bound by any specific time limit. This has given rise to a widely criticized practice: the extremely late filing of a further divisional application.

To avoid confusion, it would be more advisable to reiterate that the time limit for filing divisional applications on the applicant’s own accord (voluntary filing) remains unchanged, i.e., depending on the status of the earliest parent application.

The Draft also requires that the applicant(s) of a divisional application should be identical with the applicant(s) of the parent application as recorded at the time of filing the divisional application. In the case of a further divisional application, its applicant(s) should be identical with that/those of the existing divisional application on which it bases.

Eligibility of stem cells from human embryo

Patent examination
Sun Zhanhua
Patent counsel
Wanhuida Peksung IP Group

The Draft confirms the patentability of the stem cells isolated or obtained from human embryo within 14 days after fertilization (not developed in vivo) and the preparation method thereof. It clarifies that such inventions should not be rejected as being contrary to social morality. Meanwhile, a human embryonic stem cell should not be deemed as a human body at various stages of its formation and development.

Considering the active researches and rapid developments in the above technical field of stem cell, eligibility of the stem cells will encourage more innovators to patent their inventions.

Deferred examination on patent applications

The Draft introduces a new rule about deferred examination. The applicant may request the deferring for the examination of its/his patent application. The applicant may opt to a delay of 1, 2 or 3 years. This rule is applicable to any type of patent applications, including invention, utility model and design. Any application for deferred examination should be submitted at the time of requesting substantive examination for an invention, or at the time of filing a utility model or a design.

Against the current backdrop of the CNIPA’s pushing for expedition of patent examination, the deferred examination provides a supplementary route for the applicants with diversified needs and adds flexibility to the patent prosecution regime.

Examiner’s reference to “common knowledge in the art”

If the applicant raises objections to the common knowledge ground in the Office Action, the Draft requires the examiner to provide corresponding evidence or convincible reasons in this regard. If the examiner deems that the technical feature contributing to solving the technical problem falls under common knowledge, he/she should provide relevant evidence.

Under the current practice, the “common knowledge in the art” seems to have become a too convenient ground that examiners often cite against inventiveness of the claimed invention without giving any supporting evidence. This has raised lots of concerns. The new requirement will put the applicant or patentee in a better position in defending inventiveness of its/his innovations.

Meeting and discussion with the examiner

The Draft encourages meeting with the examiner for the purpose of clarifying issues, eliminating divergence and promoting understanding. Such a meeting may be set up, upon the request of either the examiner or the applicant, at any time during the substantive examination proceeding. It is very welcome that the Draft relaxes the restraints on the timing of meetings and alleviates the clerical burden of the examiners engaging telephone discussion with the applicants, which is expected to greatly facilitate communication.

The Draft also encourages communication with the examiner during substantive examination procedure, not only via telephone, but also via email or video conference. The contents for discussion with the examiner may cover substantive matters, compared with only minor or formality issues under the current practice.

The above approach opens the door to efficient communication with the examiners and allows the applicant to readily present opinions, which will help accelerate the granting procedure.

Invalidation procedure

The Draft, which intends to reduce the burden of the petitioner who initiates the invalidation proceeding, reads: If the references submitted by the petitioner are used in two or more groups of combinations to challenge the patent at issue, it/he shall indicate the most primary way of combination in this regard. If the petitioner is silent in indicating such a combination, the first group of combination of the references as listed will be deemed as the most primary combination.

However, this proposed way of examination during invalidation proceeding could act as a double-edged sword. The petitioner is therefore highly recommended to indicate clearly the primary way for combining the references or prior arts as submitted before the Patent Reexamination Board, when filing the request of invalidation.

Graphical user interface (GUI)

In the Draft, the requirements regarding the designs about GUI are summarized in a new section of the Examination Guidelines (Section 4.4 in Chapter 3 of Part I). Meanwhile, the amendments specify that the name of the design about GUI should show the main usage and the product used thereof, and the brief explanation should also recite the corresponding usage. The amendments also include some specifics about the picture or the photograph in order to further simplify the requirements of the drawings.

Duan Xiaoling is a senior partner at Wanhuida Peksung IP Group. She can be contacted on +86 10 6892 1000 ext.306 or by email at [email protected]

Sun Zhanhua is a patent counsel at Wanhuida Peksung IP Group. He can be contacted on +86 10 6892 1000 ext.312 or by email at [email protected]