Search in examinations on utility model and designs
The draft amendment relates to the preliminary examination of utility model applications and industrial design applications.
According to Chinese patent practice, there are no substantive examinations for utility model and design applications. However, the examination for utility model and design applications is called the preliminary examination, which is not a simple registration system. In other words, examiners do check the application, in many different aspects, as a matter of fact.
The preliminary examination may include examination on formality, non-patentable subject matter, new matter, unity, claim language, clarity, definition of (subject matter suitable for protection by) utility model, double patenting, foreign filing licences, etc. In particular, the preliminary examination also includes an examination for obvious substantive defects.
For utility model applications, this includes examination for obvious lack of novelty and industrial applicability and for design applications, examination on whether the design obviously belongs to prior design and whether there is a conflicting application.
“THE GUIDELINES ALLOW THE EXAMINER TO CONDUCT A SEARCH ONLY IN VERY RARE INSTANCES, SUCH AS OBVIOUSLY PLAGIARISING PRIOR ART OR PRIOR DESIGNS WITH SUBSTANTIALLY IDENTICAL CONTENT.”
However, the guidelines prescribe that examiners usually will not conduct searches. The guidelines allow the examiner to conduct a search only in very rare instances, such as obviously plagiarising prior art or prior designs with substantially identical content, where the examiner is authorised to raise objections on the basis of the prior art or prior design obtained through searching.
In reality, simply for this reason, examiners seldom conduct searches. As a result, many utility models or designs that fall into the prior art or prior design have been granted patent rights, leading to many double patenting problems and negatively affecting the quality of utility model and design patents.
Hence, the draft amendment aims at encouraging examiners to actively discover prior art or prior design, so as to avoid double patenting problems to a great extent and improve the overall quality of Chinese utility model and design patents.
Revisions
Section 11 Chapter 2 of Part I of the guidelines is proposed to be revised to read: “In the preliminary examination, the examiner examines whether a utility model obviously does not have novelty. Examiners may examine, on the basis of prior art or conflicting application he or she obtains, whether the utility model application obviously does not have novelty.”
The key revision in this section is the removal of the expression “the examiner generally does not conduct a search” and “on the basis of related prior art or information of conflicting application he or she obtains not through search”.
Similarly, Section 11 Chapter 2 of Part I is proposed to be revised to: “In accordance with Article 9.1 of Chinese patent law, for an identical invention-creation, only one patent right shall be granted. In accordance with Article 9.2, where two or more applicants file applications for patents for the identical invention-creation, the patent right shall be granted to the applicant whose application was filed first.
“In the preliminary examination, the examiner may examine whether or not an application for utility model may obtain a patent right according to Article 9, on the basis of the application for the identical invention-creation he or she obtains.”
The key revision is the removal of the expression “the examiner generally shall not examine through search whether …”.
Section 9 Chapter 3 of Part I is proposed to include a similar expression that examiners may examine, on the basis of prior art or conflicting applications, whether a design application obviously does not meet the requirement of Article 23.1.
Section 11 Chapter 3 of Part I is proposed to include a similar expression that in the preliminary examination, the examiner may examine whether a design application may obtain a patent right according to Article 9, on the basis of the application for the identical design he or she obtains.
If these proposed changes come to pass, it will be interesting to observe the number of searches by examiners in their examination on utility model and design application.
