Yue Weining, Wang Jun, Wei Jie Intellectual Property King & Wood Mallesons

On November 10, 2020, the China National Intellectual Property Administration (CNIPA) published Draft Amendments to Patent Examination Guidelines (referred to “Draft” hereafter) and solicited public opinions by December 10, 2020.  

The draft amendments cover all of the five parts in the Guidelines and focus on eight main aspects, i.e., preliminary examination, substantive examination, computer program related applications, pharmaceutical and biological related applications, transitional Chinese medicine applications, procedure of a national phase application, reexamination and invalidation procedure, and procedural matters.  Some key topics included in the draft amendments are listed below for your reference.

  1. Filing of divisional applications
    • According to the draft amendments, “[t]he applicant, during the reexamination period after requesting for reexamination, within 3 months after receipt of a Board Decision or during the initiation of the administrative litigation against the reexamination decision, may also file a divisional application.”
  1. Means of Disclosure
  • According to the draft amendments, “[p]ublications comprise paper publications and materials existing on Internet or other online databases”. he publication time for materials existing on Internet or other online databases is typically determined as the publication date on the webpage.  If no publication date is present on the webpage, publication date/modify date included in a log file, an indexing date provided by a search engine, a date provided by an archive website could be referenced for determining the publication date.
  1. Grace Period for Non-Prejudicial Disclosures
  • According to the draft amendments, “[i]f another person leaks the solution without the consent of the applicant, and a third person discloses the solution due to the leak, then it would be considered as the situation in Article 24.3.”
  • That is, in the above circumstance, such a disclosure is considered as a non-prejudicial disclosure.
  1. Examination of Design
  • According to the draft amendments, views of sides of a product which are hard to view or are not viewable during use may be omitted.
  • The reason for omitting a particular view shall be stated in the brief explanation, e.g., “the left view is symmetric with the right view and the left view is omitted.
  • For components and parts, the product to which the components and part are to be applied shall be described in the brief explanation, and the usage of the product shall be described if necessary.
  • Designs of gambling devices and drug taking equipment are contrary to the law, and cannot be protected.
  • Images or pictures Designs with “vulgar” content cannot be protected.
  • the words or patterns of Designs that are detrimental to the public interest cannot be protected, no patent right shall be granted to that application.
  1. Diagnostic Methods
  • In the draft amendments, “method of measuring blood pressure” is removed from the examples of diagnostic methods for which no patent right shall be granted.
  • According to the draft amendments, “an information processing method implemented by a device with information processing capability (e.g., a computer) the immediate purpose of which is to obtain an intermediate result rather than to obtain the diagnostic result or health condition” does not belong to diagnostic method.
  1. Examination of Inventive Step
  • In the draft amendments, the problem-solution approach for examination of inventive step is further specified.
  • In particular, the draft amendments recite:
    • when determining the closest prior art, prior art related to the same technical problem to be solved by the application shall be prioritized;
    • when determining the technical problem to be solved by the application, if the technical effects achieved by the application are similar to the closest prior art, then the technical problem to be solved by the application could be determined as “providing a selectable solution other than the closest prior art”; and
    • the re-determined technical problem shall match with the technical effects achieved by the distinguishing features in the application, and shall not be determined as containing the distinguishing features themselves[1] nor include any guidance or hints about the distinguishing features.
  1. Examination of Invention Applications Relating to Computer Programs
  • Eligibility
    • According to the draft amendments, if a solution utilizes computer-implemented technical means, it must have solved a corresponding technical problem and achieved a corresponding technical effect. Then the solution shall be eligible under Article 2.2 of Chinese Patent Law.
    • Two examples of “Computer-implemented technical means”:
      • a) the solution recites an information processing device (e.g., computer, network device and programmable deice) and the content is controlled or processed by the information processing device through performing the computer program;
      • b) the solution does not recite any information processing devices, but recites content reflecting computer control or processing through performing the computer program.
        • For example, a solution recites content about controlling the industry process, measuring or testing through executing an industry process, measuring or testing control program.
        • In another example, a solution recites content about processing technical data through executing a technical data processing program.
        • In a further example, a solution recites content about setting or adjusting components of a computer system through executing an internal performance improving program.
  • NO specific technical field is required in the claim, and a “universal” AI method now seems eligible!
    • Eligible example:

A method of training a deep neural network, comprising: if a size of training data changes, determining the training time lengths associated with at least two predefined candidate training solutions for the changed training data; selecting a training solution with minimum time length from the at least two predefined candidate training solutions as a best solution for the changed training data, the at least two predefined candidate training solutions comprising at least a single processor based solution and a multiple processor solution based on data parallel; using the changed training data in the best training solution for model training.

  • A computer program product claim is now an eligible subject matter.
    • A computer program product shall be interpreted as a software product mainly implemented by a computer program.
    • Eligible claim example:

A computer program product, comprising computer program/instructions, characterized in that, the computer programs/instructions when performed by a processor implement the method according to Claim 1.

  • Examination of inventive step
    • According to the draft amendments, for the algorithm features in a claim, if the algorithm features lead to improvement on internal performance of a computer system, e.g., reducing data storage amount, reducing data transfer amount, improving hardware processing speed, and the like, then the algorithm features shall be considered as being “functionally correlated” with technical features, and shall be taken into account for the examination of inventive step.
    • For the business features in a claim, if the solution leads to the improvement of user experiences, and the improvement is brought by technical features or combination of the technical features and business features, then the improvement shall be taken into account for the examination of inventive step. 
  1. Examination of Pharmaceutical and Biological-Related Invention Applications[2]
  • Supplementary Data

Two examples are provided for the supplementary data for pharmaceutical-related patent applications.

  • In case that the supplementary data is provided to prove the sufficiency of disclosure of a compound claim, a prior art document describing the structurally similar compound with the similar activity should be provided for the data to be accepted.
  • In case that the data is provided to prove the inventive step of a compound claim, the disclosure of a range of the activity value shall be described in the specification such that the specific number can be introduced via supplementary data.
  • Novelty of a Compound
    • If the structure of a compound is disclosed such that those skilled in the art can identify the structure with the claimed invention as identical, then the novelty is destroyed.
    • Otherwise, other information including the preparation method, characterization data or technical effect can be used as a reference in the determination of novelty.
  • Inventive Step of a Compound
    • The assessment shall be conducted following the “problem-solution” approach. It is important to assess whether those skilled in the art would have the motivation to modify the compound structure when aiming at solving the technical problem.
    • For a compound with similar use or technical effect with the prior art, if it achieves unexpected technical effect, then the inventive step can be established.
  1. Invalidation Procedure
  • Manner of Examination
    • The manner of examination in the invalidation proceeding can be oral proceeding, written proceeding or a combination thereof, at the discretion of the Board.
    • Oral proceeding shall be held if the parties make a written request, unless the Board confirms the oral proceeding as not necessary.
    • The oral proceeding can be held via a remote on-line hearing, a face-to-face off-line hearing, or a combination thereof.
  • Time Limit
    • The time limit specified for providing a written response to the transferred document during the invalidation proceeding is one-month in principle, and can be shorter than one-month if the case is considered as simple.
  1. Examination of Design Patent in the Invalidation Procedure
  • Substantially Identical Design
    • According to the draft amendments, if “the difference lies in only slight changes in some fine details which cannot are hardly to be noticed paying normal attention”, the patent concerned and the comparative design are substantially identical.
  • Whole Observation and Comprehensive Judgment
    • According to the draft amendments, “the approach of whole observation and comprehensive judgment means to observe the patents concerned and the comparative design as a whole from the view of a general customer, to determine the similarities and differences between the two designs, to determine the impacts on the overall visual effect, and to reach a comprehensive conclusion”.
  • Examination in Accordance with Article 23.2
    • According to the draft amendments, during the examination in accordance with Article 23.2, “a single comparison could be made between the patent concerned and one prior design, or a comparison could also be made between the patent concerned and two or more prior designs.”
    • According to the draft amendments, “prior design features which can be used for combination shall be designs that are naturally distinguishable physically or visually and have relatively independent visual effects, and an arbitrarily divided point, line and plane does not belong to prior design features which can be used for combination.”

[1] The original text in the draft amendments is “shall not be determined as the distinguishing features themselves”, which appears a bit confusing.  From our understanding, the amendment is aimed to avoid incorporating the distinguishing features (i.e., the technical solution) in the technical problem.

[2] This part belongs to the first section of the proposed amendment to the Guidelines issued on October 4, 2020 and solicited public opinions by November 15, 2020, and is integrated herein for a comprehensive insight.