Amendments to the Patent Examination Guidelines

Recently, in order to better implement the spirit of the documents of the Party Central Committee and the State Council, implement the innovation-driven development strategy, accelerate the construction of an intellectual property power, promptly solve the current problems of outstanding social reflection and urgent needs, promote the continuous improvement of the patent examination system, and better integrate with international standards In line with the standards, the State Intellectual Property Office has revised the "Guidelines for Patent Examination" (hereinafter referred to as the "Guidelines"). The newly revised Patent Examination Guidelines will be implemented on April 1, 2017.

Modify content

(I) of Amendments to Chapter I of Part II (Application for Not Granting Patent Rights)

Modification point:

The revised "Guide" clearly stipulates that if a claim involving a business model contains both business rules and methods and technical features, it should not exclude the possibility of obtaining a patent right in accordance with Article 25 of the Patent Law. (Section 4.2)

Reason for modification:

The "Guide" before the revision stipulates that the management methods and systems of commercial implementation, as the rules and methods of intellectual activities, belong to the object of non-patent rights. With the development of Internet technology, business model innovations involving finance, insurance, securities, leasing, auction, investment, marketing, advertising, business management and other fields continue to emerge. These new business models have good market operation effect and good user experience, which improves the efficiency of resource allocation and flow, saves social costs and improves social welfare, therefore, technical solutions in such business model innovation should be actively encouraged and properly protected, and patents should not be granted simply because the technical solutions contain business rules and methods.

Amendments to Chapter IX of Part II of the (II) (Several Provisions on Examination of Patent Applications for Inventions Involving Computer Programs)

Modify point one:

The revised Guide further clarifies that "computer programs themselves" are different from "inventions involving computer programs", allowing claims to be written in a "medium computer program flow. (Section 2)

Reason for modification:

According to Article 25 of my country's Patent Law and the enumerative provisions of Chapter 1 of Part II of the "Guide" before the amendment, "computer program itself" belongs to the rules and methods of intellectual activities and cannot be patented. The "computer program itself" is clearly defined in chapter 9, section 1, part two of the "Guide" before the revision. However, in Section 2, "Examination Criteria for Patent Applications for Inventions Involving Computer Programs", there is no distinction between the expression "computer program" and "computer program itself". In practice, it is easy to misunderstand that "inventions involving computer programs" cannot be patented. In this regard, in order to distinguish between the two, "itself" is added after "computer program" or "program" in section 2 (1), clarifying that only "computer program itself" is not the object of patent protection, and "inventions involving computer programs" can be patented, thus making it clear that claims are allowed to be written in the way of "media computer program flow.

Revised point 2:

The revised Guide deletes "and describes in detail which components of the computer program are used to perform the functions of the computer program and how to perform these functions" in section 5.2, and adds "the components may include not only hardware but also programs" at the end of paragraph 1, making it clear that "programs" can be used as an integral part of the device claim. In addition, "that is, a device that implements the method" in the first paragraph is adaptively modified to "for example, a device that implements the method". (Section 5.2)

Reason for modification:

The characteristic of computer products is that software and hardware are two components that work together and can be improved and innovated. The claims of an invention patent application involving a computer program can be written as a method claim or a product claim. According to the pre-amendment Guide, the device claims are written in a way that is easy to understand the program flow as a method or function that defines the hardware. In order to guide the applicant to directly and clearly describe the improvement in the process flow involved in the invention, the above modification is made, and it is clear that the "program" can be used as an integral part of the device claim.

Revised point three:

In the revised Guide, the term "function module" in paragraph 2 of section 5.2 is amended to read "program module". (Section 5.2)

In addition, delete [Example 9] "A system for learning a foreign language in a way that has no guiding significance for practice". (Section 3)

Reason for modification:

The expression of "functional module" in the "Guide" before the revision fails to clearly reflect the technical essence and is easy to be confused with the expression of "functional limitation.

Amendments to Chapter 10 of Part II of the (III) (Several Provisions on Examination of Patent Applications for Invention in the Chemical Field)

Modification point:

The revised Guide adds section 3.5 "on supplementary experimental data", moves the content of item (2) of section 3.4 to section 3.5, and modifies "examples and experimental data submitted after the application date shall not be considered" to "examiners shall review the supplementary experimental data submitted after the application date. The technical effect proved by the supplementary experimental data should be obtained by those skilled in the art from the contents disclosed in the patent application". (Section 3.5)

Reason for modification:

In determining whether the specification is fully disclosed, the contents of the original specification and claims shall prevail.

The guidelines before the amendment stipulated that the experimental data submitted after the application date would not be considered. However, when the supplementary experimental data is used to prove the technical effect that the technical personnel in the technical field can obtain from the contents disclosed in the patent application, the examiner shall examine it. In order to avoid possible misunderstandings caused by the current regulations and to clarify how the examiner can review the supplementary experimental data, the above amendments are made.

(IV) Revision of Chapter III of Part IV (Examination of Requests for Invalidation)

Modify point one:

The revised Guide moderately liberalizes the modification of patent documents, allows one or more technical features recorded in other claims to be added to the claims, so as to narrow the scope of protection and allow obvious errors in the claims to be corrected. (Sections 4.2, 4.6.2, 4.6.3)

Reason for modification:

According to the provisions of the Guide before the amendment, the amendment of the patent document after authorization is limited to the deletion, merger and deletion of the claim in the invalidation procedure. In practice, the patentee hopes that the modification method of the patent document can be more flexible, allowing the technical features recorded in the claim or the specification to be added, and allowing the correction of obvious errors. However, since the scope of protection of the patent right is subject to the content of the claims, and the claims of the authorization announcement are public, the amendment of the patent document cannot harm the trust interests of the public. After comprehensive consideration, moderately liberalize the modification of patent documents.

Revised point 2:

The revised Guide makes it clear that if the claimant adds a reason for invalidation "to the claims modified by the patentee in a manner other than deletion", it should only "for the modified content". (Section 4.2)

Delete the provisions of the Guide before the amendment that "claims modified by merger against the patentee" allow the claimant to add evidence within a specified period of time, so as to avoid unreasonable extension of the procedure. (Section 4.3.1)

Reason for modification:

Article 67 of the detailed rules for the implementation of China's Patent Law stipulates that after the Patent Reexamination Board of the State intellectual property Office accepts the request for invalidation, the requester may add reasons or supplementary evidence within one month from the date of filing the request for invalidation; if the reason or supplementary evidence is added within the time limit, the Patent Reexamination Board may not consider it. In practice, when the patentee modifies the patent document, the requester needs to be given the opportunity to increase the reasons for invalidation, but only for the modifications made by the patentee. In view of the above-mentioned moderate liberalization of the patent document modification method, the above amendments are made.

When the patentee modifies the claim by adding the technical features recorded in other claims, since the technical features that do not exist in the previous claims are not introduced, the patentee only needs to adjust the combination of the evidence it has submitted, and does not need to add additional evidence, so the above amendments are made.

Revision of Chapter 4 of Part V of the (V) (Patent Application Document)

Modification point:

The revised "Guide" adds content that allows the public to consult and copy: in Section 5.2, Item (2), for invention patent application files that have been published but have not yet been announced, delete the "until the publication date" The provision expands the scope of public inspection and copying to the substantive review procedure, including the notice, search report and decision issued to the applicant; in item (3), for the patent application files that have been announced to grant patent rights, the "priority documents" and the "search report" issued by the patent office are included in the contents allowed to be consulted and copied, the word "text" in the "text of the reply of the applicant or the relevant parties to the notice" is deleted, and the scope of consulting and copying is expanded from the text of the reply to the revised documents. In addition, since the principle of judging whether inspection and reproduction are allowed has been clearly defined in Section 5.1 "Principles of Inspection and Copying", it can be determined whether documents are allowed to be inspected and copied. Therefore, item (5) of Section 5.2 is deleted: "Other documents except the above shall not be inspected or copied." (Section 5.2)

Reason for modification:

The "Guide" before the revision stipulates that for invention patent application files that have been published but have not yet announced the grant of patent rights, only the relevant content in the patent application file up to the publication date can be consulted and copied. This provision is not conducive to the dissemination of technology and affects the public's timely access to information on the patent examination process and the supervision of patent examination.

(VI) Amendments to Part V, Chapter VII (Duration, Restoration of Rights, Suspension)

Modification point:

The revised "Guide" clarifies that if the people's court requires the Patent Office to assist in the execution of property preservation and execute the suspension procedure, the Patent Office shall suspend the relevant procedure in accordance with the property preservation period specified in the civil ruling and the notice of assistance in execution; after the expiration of the suspension period, If the people's court requests to continue to take property preservation measures, it shall send the notice of assistance for continued preservation to the Patent Office before the expiration of the time limit, the duration of the stay shall be renewed; at the same time, the requirements for the duration of the stay relating to the invalidation procedure and the pending preservation shall be adapted. (Sections 7.4.2, 7.4.3, 7.5.2)

Reason for modification:

In order to effectively solve the problem that it is difficult to enforce the effective judgment and ruling of the people's court, the revised civil procedure law, which was formally implemented on January 1, 2013, has strengthened the requirements for relevant units to perform the obligation of assisting in the execution of seizure and freezing of property. Therefore, the provisions on the suspension procedure in the guide before the amendment have been modified adaptively.

　　http://www.sipo.gov.cn/zscqgz/2017/201703/t20170306_1308644.html