SIPO published an amendment proposal on the Patent Examination Guidelines 2010 on February 4 2013, and invites comments from the public by March 18 2013.
In China, patent applications for utility models and designs are not subject to substantive examination. Some applicants intentionally file the same patent applications for utility models and designs many times, even plagiarising prior art technologies or prior designs and filed patent applications. On these bad faith filings, patent rights should not be granted.
To cope with this problem, when the Implementing Regulations of the Patent Law of China were amended in 2010, examination on "obvious lack of novelty or practical applicability" for utility model applications and examination on "obvious lack of novelty" for deisgn applications were introduced to the preliminary exmination. However, the Patent Examination Guidelines 2010 say that examiners normally don't need to conduct a search during preliminary examination. Therefore, patent rights are still granted on some applications for utility models and designs that are obviously not new or violate the "double patenting" requirement.
In order to solve this remained problem, SIPO proposes to amend the Patent Examination Guidelines 2010 by encouraging examiners to make a novelty search during preliminary examination for utility model applications and design applications.
Under the amendment proposal, the examiner may examine "whether a patent application for utility model obviously lacks novelty based on the information of relevant prior art or conflicting applications (i.e. earlier filed but later published applications) that the examiner obtained", and "whether a patent application for utility model complies with Article 9 (i.e. avoid double patenting) according to the identical invention-creation that the examiner obtained"; the examiner may also examine "whether a patent application for design obviously doesn't comply with Article 23.1 based on information of relevant prior design or conflicting applications that the examiner obtained" and "whether a patent application for design complies with Article 9 according to the identical design that the examiner obtained". So the examiner may obtain such prior art information after conducting a search, and the limitation "without making a search" is deleted from the current Patent Examination Guidelines.
When this amendment is finally approved by SIPO, bad faith filings for utility models and designs should be reduced.
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Xiaojun Guo |
CCPIT Patent and Trademark Law Office
10/F, Ocean Plaza
158 Fuxingmennei Street
Beijing 100031, China
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