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CHINA: NEW RULES WITHIN PATENT EXAMINATION GUIDELINES

CHINA: NEW RULES WITHIN PATENT EXAMINATION GUIDELINES

To adapt to the rapid growth of new technology, reflect the innovators’ new demands on the rules and modes of examination, and improve the quality and efficiency of patent examination, the China National Intellectual Property Administration (“CNIPA”) has made amendments on Patent Examination Guidelines (“Guidelines”). The amendments have come into force on 1 November 2019. We summarize the main amendments as follows.

1. Sub-divisional application

The amendments clarify that the timing for filing a sub-divisional application based on a divisional application which is rejected for lacking unity should be determined by the status of the divisional application. The applicants of the sub-divisional application should remain the same as those of the divisional application and the inventors of the sub-divisional application should remain the same as or be partial of inventors of the divisional application.

2. Patentability of human embryonic stem cells

The amendments clarify that if a stem cell is isolated or obtained from a human embryo within 14 days of fertilization that has not undergone in vivo development, an invention made by using such a stem cell will be excluded from being an unpatentable subject matter which can be rejected on the grounds of „violating social morality.“ Furthermore, it is also clarified that human embryonic stem cells do not belong to human bodies at various stages of formation and development.

3. Inventive step

The amendments clarify that “…For technical features that functionally support each other and have an interactive relationship, the technical effects achieved by the technical features and the relationship between them in the claimed invention should be considered as a whole…” and “…the technical features in the claims that do not contribute to the resolution of technical problems do not affect the evaluation of the inventiveness of the technical solutions defined by the claims.” The amendments also clarify that if the Examiner considers that a technical feature contributing to solve the technical problem is common knowledge in an Office Action, he or she will have an obligation to provide relevant evidence to prove it.

4. Communication between the examiner and the applicant

The amendments encourage the examiner and the applicant to establish necessary communication via such as email, video conference or interview during the substantive examination in order to properly remove the discrepancy and improve efficiency of patent examination. It is also clarified that for any amendments agreed by the examiner during the communication, the applicant needs to submit a formal document reflecting the agreed amendments.

5. Invalidation proceeding

The amendments require that in the invalidation procedure, if the petitioner submits multiple prior art documents and indicates two or more ways of prior art combination, one main combination needs to be indicated for examination. Otherwise, the first combination of prior art will be considered as the main combination.

6. Delayed examination of patent application

The amendments introduce a delayed examination procedure of invention and design patent applications. For the invention patent application, the request for delayed examination must be filed at the time of requesting the substantive examination. For the design patent application, the request for delayed examination must be filed at the time of filing the application. The examination can be delayed for 1 year, 2 years or 3 years depending on the applicant’s request.

We wish to thank our colleague Wubin YAN, Managing Partner at HNC Innovation Ltd for this helpful information.

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