Author: Frank Feng, King & Wood Mallesons

April 4 2019, National Intellectual Property Administration published Patent Examination Guidelines Amendment (Draft) and requests public opinions.  The opinions may be submitted to NIPA by May 5, 2019.

The Draft generally includes eight aspects: (1) telephone discussion and interview, (2) examination of inventiveness, (3) prioritized examination and delayed examination, (4) invalidation, (5) human embryonic stem cells, (6) further divisional applications, (7) patent search, and (8) certain formality issues.

First, the Draft explicitly states that, when necessary, the examiner and applicant may conduct a telephone discussion.  Aside from formalities issues, the discussion may extend to the understanding of the invention and prior art and to the problems in the application.  Either party may institute the discussion.  In addition to telephone, other media may be used, such as video conference and emails.  If an amendment is agreed with by the examiner, the applicant should submit a formal amendment.  Moreover, the Draft expands the window for an interview with the examiner to the whole process of the examination, not limited to a period only after the first office action has been issued.

Second, regarding examination of inventiveness, the Draft requires an examiner to consider the technical effects that a differential technical feature may produce in the “invention” (i.e., in the claims) before he or she determines what actual technical problem may be solved by the invention; if a group of technical features functionally support one another and interact with one another, the examiner should consider these features as a whole to determine what technical effects their relationship may produce in the “invention.”  The Draft also explicitly states that, if a technical feature contributing to the solving of the technical problem is alleged to be common knowledge, the examiner usually should provide evidence to support his or her allegation.  In addition, the Draft states that, if a feature does not contribute to the solving of the technical problem, that feature does not affect the assessment of inventiveness.

Third, the Draft explicitly states that prioritized examination applies to all three types of patent applications (invention, utility model, and design).  Besides, the Draft adds delayed examination, by which an applicant may delay the examination of his or her application for one, two, or three years.

Fourth, in an invalidation procedure, if evidence may be combined in multiple ways, the Draft requires that the invalidation petitioner to elaborate on the “main” combination of evidence first.  If no main combination of evidence is identified, the first combination is determined as the main one by default.

Fifth, the Draft explicitly states that “human embryonic stem cells do not belong to a human body in various phases of formation and development”; social morals are not violated by an invention that separates or obtains stem cells from a human embryo if the embryo is developed outside a human body within 14 days of fertilization.

Sixth, the Draft clarifies the timing for filing a further divisional application and other formal requirements.

Seventh, the Draft further defines the databases used in patent search, the search procedure, search strategies, etc.

Eighth, the Draft also addresses certain formality issues.  For example, the Draft assembles into a separate section contents of graphic user interface related designs to allow easy use by patent examiners and applicants.

Regarding the Draft, if you want more information or would like us to submit detailed opinions to the NIPA, please contact us as soon as possible.