New Amendments to SIPO's Guidelines for Patent Examination

by Brinks Gilson & Lione
Contact

Brinks Gilson & Lione

The State Intellectual Property Office of China (“SIPO”) on March 1, 2017 finalized the amendment to its Guidelines for Examination; the amendments included patentability of business method patents, enhanced claiming options for software-related inventions, post-filing submission of experimental data for chemical inventions, liberalized amendment practice in post-grant invalidation proceedings, and availability of prosecution documents of Chinese patents and applications. 

Business Method Patents

In preparation for the emergence of the financial technology, or “fintech” industry, SIPO is loosening up patent protection for innovation relating to novel business models. Previously excluded from patentability under Article 25 of the Chinese Patent Law, the new amendments now clarify that a business oriented innovation may qualify for patent protection provided that it includes technical features.

As revised, an applicant should do well following the European approach when applying for a business method patent, putting special emphasis on the business method’s “technical” features which solve “technical” problems in a non-obvious manner.

Software-related Inventions

In the past, patent protection for software related inventions was rather limited; their claims were commonly drafted a process claim, or an apparatus claim based on the computer program flow wherein each component is regarded as a function module required to realize each step in the said computer program flow or each step in the said method. Such apparatus claims are regarded as the function module architecture of the computer program described in the description, rather than entity devices needed to realize the said solution mainly through hardware.

Under the revised Guidelines, software claims may now include a computer program product,  a machine-readable medium, or a Beauregard type of claim, which focuses on “an apparatus comprising a processor configured to execute instructions on a computer-readable medium to perform steps of ....”

An applicant should pursue all new possibilities and include as many claim types as needed in the patent application; among other things, it will to make it easier to enforce software patents once they are granted.

Public Access to Prosecution History Files

In an effort to be more transparent, SIPO will make available to the public application documents relating to preliminary and substantive examinations, such as Office Actions, applicant Responses, Search Reports and Decisions issued by the SIPO, before the application is granted.

Post-filing Submission of Experimental Data for Chemical Inventions
 
Previously, the Guidelines explicitly stated that when evaluating sufficiency of disclosure, “examples and experimental data submitted after the filing date shall not be considered.” This practice was subject to criticism by many overseas groups, such as the U.S. group, Intellectual Property Owners Association. 

The amended Guidelines now state that “the examiner shall examine the post-filing experimental data submitted by the applicant.” However, it is expected that the newly submitted data can only prove technical effects that are obvious for those skilled in the art from the original disclosure.

Amending Claims in an Invalidation Proceeding

Previously, the options to amend a claim in an invalidation proceeding were rather restricted. The patentee is allowed to cancel claims, combine claims, or to delete technical solutions.

Under the revised Guidelines, an applicant is now additionally allowed to amend claims by incorporating one or more limitations from other claims.

Furthermore, while a patentee is still not allowed to correct obvious errors contained in the description, the patentee may now correct obvious errors in the claims.

In response to the amendment(s) made by the patentee, the petitioner who filed invalidation proceeding is allowed to add new invalidation grounds, except for cancelation of the claim(s). 
 
The new Guidelines become effective on April 1, 2017.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Brinks Gilson & Lione | Attorney Advertising

Written by:

Brinks Gilson & Lione
Contact
more
less

Brinks Gilson & Lione on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.