On 27 October 2016, the State Intellectual Property Office of China (SIPO) released proposed revisions to its Guidelines for Patent Examination for public consultation. According to SIPO’s explanatory note, the proposed revisions are aimed to strengthen the IP protection for innovation in emerging fields such as Internet, e-commerce, big data etc., to improve the IP protection system for business models, to improve the post-grant patent documents amendment system and timely disclosure of procedural information on patent examination.
Mainly, the following revisions are proposed:
- In the section concerning exception to the exclusion from patentability of rules and methods for mental activities (Part II, Chapter 1, Section 4.2), it is proposed to add the following example:
“If a claim relating to business model contains not only matter of business rules and methods but also technical features, it shall not be excluded from patentability under Article 25 of the Patent Law.”
- In the section concerning examination criteria of patent applications relating to computer programs (Part II, Chapter 9, Section 2), it is proposed to replace “computer programs” with “computer programs per se” at two places including the following one:
“If a claim merely relates to an algorithm, or mathematical computing rules, or computer programs per se, or computer programs per se recorded in mediums … it falls into the scope of the rules and methods for mental activities and does not constitute the subject matter for which patent protection may be sought.”
- In the section concerning drafting of patent claims relating to computer programs (Part II, Chapter 9, Section 5.2), it is proposed to make the following amendment:
“The claims of an invention application relating to computer programs may be drafted as process claim or product claim, i.e. for example, the apparatus for executing the process… If it is drafted as an apparatus claim, the various component parts and the connections among them shall be specified, and a detailed account shall also be given on the component parts by which the various functions of the computer program are performed, and on how these functions are performed and the components may include not only hardware, but also programs.”
Further, it is proposed to replace “function modules” with “program modules” at several places.
- In the section concerning sufficient disclosure of chemical invention (Part II, Chapter 10, Section 3), it is proposed to replace “any embodiment and experimental data submitted after the date of filing shall not be taken into consideration” with “data submitted after the date of filing shall be examined by the examiner. The technical effect proved by the submitted experimental data shall be one that can be reached by a person skilled in the art from the contents disclosed in the description”.
- In the section concerning amendment to patent documents in invalidation procedure (Part IV, Chapter 3, Section 4.2, 4.3.1, 4.6.2 and 4.6.3), it is proposed to revise several passages to allow adding in a claim one or more technical features discribed in other claims, so as to narrow down the scope of protection; and to allow correcting apparent errors in claims.
- In the section concerning public inspection of patent application files (Part V, Chapter 4, Paragraph 5.2), it is proposed to amend several passages to extend the allowable inspection scope for pending patent applications to include office actions, search reports and decisions issued by the examiner during substantive examination.
As can be seen in item 1 and 2 above, the proposed revisions relating to patentability of business models and computer programs do not substantially change but rather clarify existing rules. The proposed revision in item 3 can, if adopted, make the drafting of claims involving computer programs more direct and thus clearer and easier. As to the proposed amendment in item 4, it is reported that it merely reflects the current actual practice.
Probably most welcomed is the proposed revision in item 5. Currently, opportunities for amendment in invalidation proceedings are extremely limited, and only three types of amendments are allowed, namely combination of existing claims, deletion of a claim, or deletion of an alternative technical solution in a claim. This proposed revision will, if adopted, provide new ways to help patentees keep their patent alive.
Not unimportant is the proposed extension of file inspection scope in item 6. The timely disclosure of procedural information on ongoing patent examination can be very helpful for the interested public – whether it’s a competitor intending to use a technology covered by a patent application, a potential acquirer of a patent folio, a stock investor, or a person who just filed third-party observation against a patent application. This proposed revision is surely a good news for them all.
All these proposed revisions are open for public comment until 27 November 2016.
The official information (in Chinese) is available here: