New rules for patent examination

24-04-2017

Stephen Yang

The Guidelines for Patent Examination have been amended by the State Intellectual Property Office (SIPO) and took effect on April 1, 2017. Major changes concern examination of business methods, computer program-related claims, supplementing experimental data and invalidation procedure, among others.

The amended part II, chapter 1, section 4.2 of the guidelines specifies that if a claim relating to business model has features of business rules and methods and technical features, such a claim shall not be excluded from patentability under article 25.1(2), which provides that a rule or method for activities in the mind is non-patentable subject matter.

In other words, it is advisable to include “technical features” in a claim related to a business method. However, this does not necessarily mean business methods are now patentable subject matter. A claimed solution must fall under the definition of “invention”, prescribed by article 2 of the Chinese patent law as any new technical solution relating to a product, process, or improvement thereof. A technical solution should use technical means, solve technical problems and achieve technical effects.

This amendment does not open the door to allowing business methods as patentable subject matter. It is still the technical solutions used in a business model that can be allowed.

 Claim format

Another aspect of the amendments relates to the format of computer program-related claims. The amended part II, chapter 9, section 2 allows a “computer-readable medium + computer program process” format of claims, eg, “a computer-readable medium, with computer program/instruction stored therein, wherein the program/instruction performs the following steps when executed by a processor”.

The amended part II, chapter 9, sections 5.2 allows a claim related to a computer program to be drafted as an apparatus claim which has both hardware features and software features, eg, “a communication system comprising a memory and a processor configured to execute the instructions stored in the memory”. In the past, an apparatus claim like this would have been objected to by Chinese examiners for lack of clarity.

The changes make Chinese patent practice in the field of computer program-related inventions more harmonised with that in other major jurisdictions.

Part II, chapter 10, section 3.5 prescribes that examiners should assess any experimental data submitted after the date of filing. The technical effects to be proved by the supplemented experimental data should be obtainable by a person skilled in the art from the content disclosed in the application document.

This practice has been adopted by SIPO for some years. It should be appreciated that experimental data submitted after the date of filing cannot be used to fulfil the sufficiency requirement. They are useful to prove technical effects of the invention and support arguments for inventiveness. But such technical effects should be obtainable by a person skilled in the art from the content disclosed in the application document.

"The changes make Chinese patent practice in the field of computer program-related inventions more harmonised with that in other major jurisdictions."

Considering the fact that Chinese practice is very strict with respect to added subject matter, it is advisable to include many technical effects when the description is drafted.

Part IV, chapter 3, section 4.6.2 allows more ways of amending claims during invalidation proceedings. In addition to deletion of a claim, the combination of claims and deletion of a technical solution, the guidelines allow further limitation of a claim and correction of obvious mistakes.

However, it is to be noted that further limitation of a claim means to add one or more technical features from other claims as granted in order to narrow the scope of protection. Adding a technical feature present in the description but not present in the granted claims is still not permitted.

If granted claims have the following format—claim 1: A+B and claim 2: C+D—before the above amendment takes effect, claim 1 can be amended to A+B+C+D by deleting claim 1 and converting claim 2 into a new independent claim. After the above amendment takes effect, claim 1 can be amended to A+B+C. This provides a patentee with more flexibility and opportunities to obtain a partially invalidated patent with relatively less restricted claims than before.

Stephen Yang is a managing partner at Chofn Intellectual Property. He can be contacted at: stephen@chofn.cn 

Stephen Yang, Chofn Intellectual Property, State Intellectual Property Office, SIPO, patent, computer program-related claims, patent filing,

WIPR