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Patent prosecution strategies under the proposed examination guidelines




Li Ke of Panawell & Partners outlines the proposed examination guidelines for patent examination, and how applicants can use them to their advantage

On October 27 2016, the State Intellectual Property Office (SIPO) of China released the proposed revision to Guidelines for Patent Examination for public comments. These guidelines include some drastic changes to examination practice on patent applications related to computer programs or business methods (hereinafter referred to as "program-related applications" and "business-related applications" respectively).

Regarding program-related applications, the proposed revision mainly establishes that: "a computer program per se" is not identical to "an invention related to a computer program"; a claim drafted in the format of "medium plus computer program" is patent eligible; and the constituting parts of an apparatus claim may be computer programs. Regarding business-related applications, the proposed revision clarifies that an invention related to business methods is not definitely unpatentable, and if a claim of a business-related application recites certain technical features, the examiner shall not reject the claim on the ground that it belongs to "rules and methods for mental activities" under Article 25 of the Chinese Patent Law.

In general, the proposed revision indicates that SIPO is becoming increasingly flexible and liberal on examination of program- or business-related applications, and the patent prosecution strategies or even patent drafting strategies of applicants for these kinds of patent applications need to be adjusted accordingly.

Program-related applications

According to the Guidelines for Patent Examination currently in effect, a computer program per se, a computer readable medium defined only by computer programs recorded thereon, or an apparatus claim containing computer programs as constituting parts, is not patentable.

With respect to a computer program per se, the proposed revision still prescribes that it is not patent eligible. In practice, a claim whose title of the subject matter is "a computer program", "computer program instructions", etc is usually considered as a claim directed to a computer program per se by the Chinese examiners and thus is not patent eligible.

In this proposed revision, it is prescribed that a claim drafted in the format of "medium plus computer program" (for example, a claim directed to a computer readable medium comprising a computer program recorded thereon) is patent eligible. So, if the applicants wish to obtain a patent covering this kind of computer readable medium in China in the future, they may consider amending the application documents to add claims in the format of "medium plus computer program". For those applications under prosecution now, the applicants might take advantage of these changes by trying to keep the patent applications pending as long as possible (for example, by requesting time extensions, utilizing the restoration procedure or even filing a divisional application) until the proposed revision takes effect.

An apparatus claim containing computer programs as constituent parts (for example, an apparatus comprising a processor and a computer program which can be executed by the processor) is not currently permitted. To get round restrictions, these kinds of claims are usually amended into apparatus claims in means-plus-function formats based on the process implemented by the computer programs.

However, in some cases, a program-related invention is achieved by both hardware and software improvements, and thus it is often difficult to redraft an apparatus claim in a means-plus-function format because such claims are construed by SIPO as a virtual function module architecture which cannot involve hardware improvement. The proposed revision, though, would allow apparatus claims comprising computer programs as constituent parts, and the applicants may draft an apparatus claim relating to computer programs in a more natural way.

To sum up, the proposed revision will provide the applicants with more ways to protect an invention comprising computer programs, although a computer program per se is still not patentable.

Business-related applications

Along with the development of internet technologies, new business models in the fields of finance, insurance, securities, advertisement, management, etc. are springing up in the world. These new business models significantly improve the efficiency of resource allocation and reduce social costs, and thus SIPO hopes to provide encouragement and proper patent protection for them. So, the proposed revision clarifies or emphasizes that an invention related to business methods is not definitely unpatentable, and if a claim of a business-related application recites certain technical features, the examiner shall not reject the claim on the ground that it belongs to "rules and methods for mental activities" under Article 25 of the Chinese Patent Law. The proposed revision in this regard is actually consistent with the Guidelines for Patent Examination currently in effect and the current examination practice of SIPO, but it signifies that SIPO is trying to relax some examiners' very rigorous examination standards on business-related applications, and hopes to provide proper patent protection for them.

In fact, the SIPO's examination practice on business-related applications has changed somewhat in recent years. In the past, business-related applications which do not involve technical features (such as, applications which merely involve pure business rules or methods) were usually rejected by the Chinese examiners on the ground that they belonged to rules and methods for mental activities under Article 25 of the Chinese Patent Law, and those which involve some technical features (for example, computers, servers) were usually considered by the Chinese examiners as not eligible for patent protection because they did not belong to technical solutions under Article 2.2 of the Chinese Patent Law. Both Article 25 and Article 2.2 of the Chinese Patent Law relate to a determination of whether the subject matter is patent eligible, which mainly depends on the examiner's subjective judgement. Therefore, once the examiner has determined that the claimed subject matter is not patent eligible, there would be little chance of persuading the examiner to change his mind.

However, in a couple of recent years, we noted that, for business-related applications which involve some technical features, SIPO has changed its examination practice and tended to raise prior art rejections, rather than simply assert that they are not patent eligible. Although, when assessing the inventive step of business-related applications, Chinese examiners tend to ignore most business-method features by alleging that they are disqualified as prior art because they are part of the common knowledge of the art, there is some room left for an applicant to make arguments, where previously the applications would be automatically rejected on the basis of their subject matter.

Under the proposed revision, a patent application related to pure business rules or methods (without any technical feature involved) will still be patent ineligible under Article 25 or Article 2.2 of the Chinese Patent Law. For those involving some technical features, the examiner will not be allowed to reject them based on Article 25 of the Chinese Patent Law.

It is preferable for the applicants to disclose more technical features associated with the business rules or methods when drafting a business method related patent application. The more technical features referenced, the better the chance the applicants will obtain protection for their business method-related inventions.

Li Ke
  Li Ke is a partner at Panawell & Partners, where he specializes in patent search, drafting, prosecution, reexamination, invalidation, litigation and counseling in the fields of computer software and hardware, computer networks, and communications technology. He received his BS from the Xi’an Institute of Posts and Telecommunications in 2002 and MS from Beijing University of Posts and Telecommunications in 2005.


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