Articles

Amendments to the Guidelines for Patent Examination

By Stephen Yang, Chofn Intellectual Property

On February 28 2017 the State Intellectual Property Office (SIPO) announced that the latest amendment to the Guidelines for Patent Examination would take effect on April 1 2017. Major changes under this amendment relate to the examination of business methods, computer program-related claims, prosecution of chemical inventions, the invalidation procedure and file wrapper practice, among other things.

Business method claims

The amended Part II, Chapter 1, Section 4.2 of the guidelines specifies that claims related to a business model with features of business rules and methods and technical features are not excluded from patentability under Article 25.1(2), which provides that a rule or method for mental activities is non-patentable subject matter. In other words, it is advisable to include technical features in a claim related to a business method to overcome objections based on Article 25.1(2). However, this does not necessarily mean that a business method is now patentable subject matter. A claim related to a business model must also meet other requirements. Specifically, a claimed solution must fall under the definition of ‘invention’, which as prescribed by Article 2 of the Patent Law is any new technical solution relating to a product, process or improvement thereof. The guidelines further define a ‘technical solution’ as a collection of technical means applying the laws of nature to solve a technical problem, and technical means are usually embodied as technical features. A claimed solution must solve technical problems, use technical means in conformity with the laws of nature and achieve technical effects in conformity with the laws of nature in order to constitute a technical solution. The term ‘laws of nature’, according to the Modern Chinese Dictionary, is defined as the laws existing in objective things in nature – that is, the inherent and essential relations between natural phenomena that are embodied as invariant under certain conditions (eg, Newton’s first law of motion).

For many business method-related solutions, it is difficult – if not entirely impossible – to argue that the effects achieved are governed by the laws of nature. It is crucial to incorporate technical content in a business method-related solution to make such arguments at all possible. During substantive examination, there are five possible scenarios for a business method-related claim:

  • A claim that has only business method features is regarded either as a rule or a method for mental activities according to Article 25.1(2), or as not constituting a technical solution according to Article 2.
  • A claim that has both business method features and technical features passes examination based on Article 25.1(2), but is still regarded as not constituting a technical solution according to Article 2. A claim that passes examination on the basis of Article 25.1(2) and Article 2 will be examined by a Chinese examiner using the ‘problem-solution’ approach. The examiner will perform a search, cite references and identify distinguishing features.
  • Assuming that the examiner correctly identifies the distinguishing features, all the distinguishing features are technical features.
  • All the distinguishing features are business method features.
  • The distinguishing features include both business method features and technical features.

In the third scenario, as in an ordinary patent application, the examiner uses the problem-solution approach to evaluate whether it is obvious for a person skilled in the art to combine the distinguishing features with the cited references to solve the technical problem redefined by the examiner according to the identified distinguishing features.

In the fourth scenario, experience shows that the examiner will most likely consider it obvious for a person skilled in the art to combine these business method features with the cited references and thus object to the claims as lacking inventiveness.

In the fifth scenario, examination practice seems to vary. Some examiners collectively consider the obviousness of combining the distinguishing features with the cited references. Others further discriminate between the problems to be solved by the business method features and the technical features. Where the problems to be solved by the business method features and the technical features are not related, the examiner may evaluate only the obviousness of combining the technical features with the cited references to solve the technical problem. Instead of evaluating the obviousness of combining the distinguishing features with the cited references, some examiners consider whether the technical features bring about any technical improvements. It will be interesting to see how SIPO harmonises examination practice for business method-related claims after April 1 2017.

In short, for business method-related claims to succeed, the key is to include technical content in the claims and meet the patentability requirements (eg, novelty and inventiveness). The recent amendment of the guidelines only clarifies the examination standard on the basis of Article 25.1(2) and should not be construed as opening the door to allow business methods as patentable subject matter. It is still the technical solutions used in a business model that are allowable.

Claim format of computer program-related inventions

Another aspect of the amendments to the guidelines relates to the claim format of computer program-related claims. The claim format for such claims has long been an issue that confuses many applicants and foreign patent practitioners. The amended Part II, Chapter 9, Section 2 of the guidelines clarifies that a computer program per se is not equal to a computer program-related invention. Such a distinction allows the ‘computer readable medium + computer program process’ format of claims. Specifically, claims drafted as follows are permitted as of April 1 2017:

  • “A computer-readable medium, with computer program/instruction stored therein, wherein the program/instruction performs the following steps when executed by a processor”; or
  • “A computer-readable medium, with computer program/instruction stored therein, wherein the program/instruction performs the steps of the method of claim X, when executed by a processor”.

This change brings Chinese patent practice in the field of computer program-related inventions closer into line with that of other major jurisdictions.

Another change to the guidelines relates to computer program-related inventions. The amended Part II, Chapter 9, Section 5.2 of the guidelines allows a claim related to a computer program to be drafted as an apparatus claim which has both hardware and software features. Specifically, the amended guidelines specify that “If it is drafted as an apparatus claim, the various component parts and connections among them shall be specified. Said component parts may include not only hardware but also programs”. In the past, apparatus claims drafted this way were rejected for their lack of clarity; examiners would comment that such an apparatus claim is unclear as to whether the claimed technical solution is a structure or a method.

SIPO’s practice in this regard has varied. Many claims drafted in this format have faced objections from Chinese examiners and successfully rebutting the objections depends largely on the actual situation of the invention involved. The relevant amendment to the guidelines will hopefully facilitate uniform practice at SIPO. Specifically, an apparatus claim related to computer programs that is drafted as follows is permitted as of April 1 2017:

  • “A communication system comprising a memory and a processor configured to execute the instructions stored in the memory, wherein said instructions comprise…”; or
  • “A computer system comprising a memory, a processor and a program stored in the memory and executable by the processor, wherein the processor performs the following steps when executing said program…”.

This change also brings Chinese patent practice in the field of computer program-related inventions closer into line with that of other major jurisdictions.

Supplementing experimental data

In addition to the amendments regarding computer program-related inventions, the recent amendments to the guidelines include changes relating to chemical inventions. Specifically, Part II, Chapter 10, Section 3.5 was introduced, which prescribes that examiners should examine any experimental data submitted after the date of filing. The technical effects to be proven by the supplemented experimental data should be obtainable by a person skilled in the art from the content disclosed in the application document.

In fact, SIPO followed this practice for years before the relevant amendment was even proposed to the public; the amendment merely explicitly affirms the practice in writing. However, experimental data submitted after the date of filing of a patent application cannot be used to fulfil the sufficiency requirement. Part II, Chapter 10, Section 3.5 of the guidelines prescribes that whether the description is sufficiently disclosed is judged on the basis of the disclosure contained in the initial description and claims. In other words, experimental data submitted after the date of filing does not form part of the original disclosure. However, supplementing experimental data is still advisable for the purpose of proving the technical effects of the invention and thus supporting arguments for its inventiveness. Notably, the guidelines specifically prescribe that any technical effects to be proved by the supplemented experimental data should be obtainable by a person skilled in the art from the content disclosed in the application document. Considering that Chinese practice is very strict with respect to added subject matter – and literal support is often, if not always, required for any amendments to be permitted by Chinese examiners – it is advisable to include as many technical effects as possible when drafting the description. However, the applicant should not take this too far by making false or misleading promises or statements about the technical effects of the invention, which may have implications in other jurisdictions.

Amendment methods in invalidation procedure

After a Chinese patent has been granted, anyone can request the Patent Re-examination Board to declare the patent invalid. During the invalidation procedure, the options for a patentee to amend the granted claims are limited to:

  • deletion of a claim;
  • combination of claims; and
  • deletion of a technical solution.

Deletion of a claim involves removing one or more claims from the granted set of claims. In reality, deletion of a claim often involves deleting an independent claim in light of prior art and converting a dependent claim into an independent claim. Combination of claims involves combining two or more claims which have no dependency relation between themselves, but are all dependent on the same independent claim, in the granted set of claims. Apparently, the newly combined claim defines a new technical solution which was not present in the claims as granted. This is possible only when such a newly combined claim finds support in the description.

In the amended guidelines effective as of April 1 2017, the relevant content in Part IV, Chapter 3, Section 4.6.2 has been changed to read: “Specific manners of amendment are generally limited to deletion of a claim, deletion of a technical solution, further limitation of a claim and correction of obvious mistakes.” In addition, the guidelines prescribe that further limitation of a claim involves adding one or more technical features from other claims in order to narrow the scope of protection.

Apparently, the amended guidelines now permit more liberal amendment during the invalidation procedure. However, there are still many restrictions on methods of amendment. First, the applicant can work only with technical features present in the set of claims as granted. If certain technical features were present in one version of claims during prosecution, but were removed and thus not present in the claims as granted, the applicant cannot use these features to amend claims. Second, a claim as granted cannot be amended by adding a technical feature present in the description or drawings, but not present in the granted claims, to make a new claim.

The following example shows the difference in how claims can be amended before and after the amendment to the guidelines took effect on April 1 2017:

  • Claim 1 – A+B; and
  • Claim 2 – C+D.

Before the amendment took effect, Claim 1 could be amended to A+B+C+D by deleting Claim 1 and converting Claim 2 into a new independent claim. In contrast, following the entry into force of the amended guidelines, Claim 1 can now be amended to A+B+C. This provides the patentee with more flexibility and opportunities to obtain a partially invalidated patent with relatively less restricted claims than before.

The amended guidelines also include adaptive changes in Part IV, Chapter 3, which is directed to the invalidation procedure.

File wrapper

The amended Part V, Chapter 4, Section 5.2 of the guidelines improves file wrapper practice at SIPO. Before the amendment took effect, the content that was accessible and available for photocopying in a patent or patent application file was as follows:

  • For a pending patent application for an invention which had previously been published (but not yet granted a patent right), only documents filed or issued before the date of publication could be accessed and photocopied. These included application documents, formality documents, publication documents, office actions and decisions issued during preliminary examination and the text of the observations filed by the applicant in response to office actions.
  • For a granted patent, the documents that could be accessed and photocopied included application documents, formality documents, the pamphlet of the published application, the pamphlet of the granted patent, the patent register, the patent right evaluation report, office actions and decisions issued and observations filed by the applicant or relevant party in response to the office actions, in various examination proceedings, including preliminary examination, substantive examination, re-examination and invalidation procedures.

Following the entry into force of the amended guidelines, for a pending patent application for an invention which has previously been published (but not yet granted a patent right), in addition to the content specified above, office actions, search reports and decisions issued to the applicant during substantive examination can be accessed and photocopied. However, the applicant’s observations filed in response to office actions issued during substantive examination remain inaccessible. For granted patents, in addition to the content specified above, priority documents and search reports issued in various examination proceedings that have been concluded can be accessed.

Chofn Intellectual Property

B316 Guangyi Plaza

5 Guangyi Str, Xicheng

Beijing 100053

China

Tel +86 10 6213 9699

Fax +86 10 6213 1230

Web www.chofn.com

Stephen Yang

Managing partner

office@chofn.cn

Stephen Yang is a Chinese patent attorney and partner with Chofn Intellectual Property, an IP law firm in China. His practice covers patent search, legal opinions, drafting, prosecution, re-examination, invalidation and litigation in mechanics, electronics, energy and high-tech areas. He began to practise patent law in 1997 in a Chinese IP law firm in Beijing. He then worked as an in-house patent specialist in Canada and another Chinese IP firm in Beijing before he joined Chofn in 2016. He received double bachelor’s degrees in mechanical engineering and industrial engineering from Tsinghua University in China and a master’s degree in mechanical and industrial engineering from the University of Toronto in Canada. He also received training in US patent law at a US law firm.

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Issue 69