Queenie X. QIU & Weihua He | Mar 18, 2020

CNIPA has published two amendments respectively in September and December 2019. Here we have summarized the main amendments for overseas clients as below.

[Part 1] Amendments on formality issues

1. Divisional applications
▲ The time limit for filing a further divisional application based on the afore-filed divisional application (due to lack of unity pointed out by the examiner) shall be examined based on the status of the afore-filed divisional application, which means the afore-filed divisional application shall be pending.
▲ A request to change the bibliographic data should be filed when there is a change of applicant for filing a divisional application. The inventor(s) of the second divisional application shall be the inventor(s) or at least some of the inventors of the first divisional application.
2. Patent assignments
▲ The Office may invite submission for a copy of certificate of business registration, for example, when the signature/seal on the assignment deed is not identical with the signature/seal on the POA for the patent application.

[Part 2] Incorporation of deferred examination for invention and design patent applications

3. Deferred examination for invention and design patent applications
▲ Timing for filing a request for deferred examination:
Invention applications: Upon filing the request for substantive examination
Design applications: Upon filing the application
▲ An application could be deferred for 1 year/2 years/3 years from the effective date of the request.
▲ A request for deferred examination is irrevocable.

[Part 3] Amendments on examination of inventive step and patentability

4. Judgment on inventive step
▲ Technical features in the claims that do not contribute to the solution of the technical problem have no influence on whether the said claim involves an inventive step.
▲ In an OA, when the examiner identifies the technical features in the claim that contribute to the solution of the technical problem as “common sense”, generally speaking, he or she should provide evidence to prove it.
5.Patentability of Human embryonic stem cells
▲ For an invention utilizing human embryos that have been fertilized for less than 14 days and that have not undergone growth in vivo for separation or to acquire stem cells, a patent shall not be denied on the grounds of “violating social morality”.

[Part 4] Amendments on Phone discussions and interview procedures with examiners

6. Phone discussions and interview procedures with examiners will be more flexible.
▲ The subject for telephone discussions is no longer limited to formality issues.
▲ Discussions on examination through video conferences and email communications etc. are also possible.
▲ Interview procedures can be initiated whenever necessary during the substantive examination stage, even before the first OA is issued.

However, in order to avoid unnecessary interviews which may affect the efficiency of examination, it also stipulates that an examiner can refuse an applicant's request for an interview when the opinions of both parties have been fully expressed through written and telephone discussions, and the relevant facts are clearly determined.

[Part 5] Formality requirements for filing of a GUI design application

7. The amendment intends to solve the problem of universal protection of a GUI design on one or more types of products.
▲ Product name of a GUI design application shall include the main use of the GUI and the product to which it is applied, for example, “fridge with GUI for temperature control”.
▲ For a design where the key elements only fall in the GUI, the applicant shall submit at least one front view of the display screen panel containing the GUI.
If the GUI is a dynamic pattern, the applicant shall submit at least a front view for one status of the GUI as the main view; and for the remaining status, submission of the views concerning the key frame of the GUI will be sufficient. But the views submitted shall be able to uniquely determine the complete changing process of the animation in dynamic patterns. The views shall be labeled in the sequence of the dynamic changing process.
If the GUI is for operating a projector, at least one view that clearly shows the projector shall be submitted in addition to the views of the GUI.

1. The brief description shall clearly state the use of the GUI and correspond to the use indicated in the product name. If only a front view of the display screen panel containing the GUI is submitted, the applicant shall list all applied products, for example, “the display screen panel is used for cell phones and computers”. If necessary, the applicant may describe the area of the GUI in the product, the human-machine interaction and the changing process.

[Part 6] Second amendment to the Guidelines in 2019 concerning examination on invention patent applications involving algorithm or business rules and method
(Effective date: 2020/02/01)

Generally, invention patent applications which are related to artificial intelligence (AI), "Internet Plus", big data, and blockchain and the like, would contain features like algorithm or business rules and method. Special provisions for examination of such applications and relevant examples are supplemented in these amendments of the Guidelines.

1. Examination on the subject matter
▲ In terms of a claim relating to algorithm or business rules and method, examination of the subject matter on that claim would be carried out in accordance with Article 25.1(2) “rules and methods for mental activities” and Article 2.2 “invention means any new technical solution relating to a product, a process or an improvement thereof” of the Chinese Patent Law.
▲ A claim relates to abstract algorithm or pure business rules and method could be patentable subject if the said claim
1) involves a technical feature;
2) recites technical means for a technical problem to be solved in which natural law is adopted; and
3) generates a further technical effect.
2. Examination on the novelty and inventive step
▲ Both technical features together with algorithmic features or business rules and method features should be considered when examination is carried out on the novelty and inventive step.
▲ During examination, technical features, which are in a mutually supportive and interactive relationship with the algorithmic features or business rules and method features, should be considered as a whole together with the algorithmic features or business rules and method features.