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China: Patents: Examination Guidelines amendments good news for patentees

On March 2 2017, the State Intellectual Property Office (SIPO) of China announced its decision to amend the Patent Examination Guidelines, effective as of April 1 2017. The new Guidelines provide significant changes to software patents, data supplementation for pharmaceutical patents and claim amendments in the invalidation procedures.

Exciting news for e-commerce and internet plus

Previously, once an applicant filed an application involving business innovations in e-commerce or internet plus, the patent eligibility issue has been a challenge. Examiners always reject such applications as being directed to rules and methods for mental acts or not constituting a technical solution.

According to the new Guidelines, if a claim includes business methods and technical features, it will not be excluded as lacking patentability per se, which opens a new door for business method patents. However, this does not mean that having a technical feature is a guarantee of patentability. The technical elements test remains: for such an application, technical means is adopted to solve a technical problem and achieve a technical effect. Furthermore, the current examination policy puts more stress on inventiveness over prior art. This means that applicants and the practitioner must be able to find good ways to prove or at least argue for technical contribution.

Less headache to draft software patents

In the past, China's requirements for drafting computer program related claims are much stricter than its major peers, such as the US, Europe, Japan and Korea. The new Guidelines moved a step forward towards international standards.

According to the new Guidelines, a computer program-related invention should be distinguished from a computer program per se, and the former could be patentable. Although a computer program per se is still deemed as rules and methods for mental acts and thus unpatentable, it is clear now that claims can be drafted in terms of storage medium and program flow. Moreover, the new Guidelines provide that a computer program may, like hardware, act as an element of an apparatus claim, and the functional module previously defined in Chapter 9, Part II of the Guidelines is revised to be a program module so as to avoid confusion with the commonly known means plus function set forth in Chapter 2, Part II of the Guidelines.

Under the new Guidelines, claims may take the following forms which are familiar to US and EP applicants:

1) A computer readable medium comprising instructions executable by a processor for performing steps of:…;

2) A device comprising a processor, a storage medium and a computer program…; and

3) A device, comprising a program module for ...

Although computer program-related claims can be drafted in a more flexible way, further observations are needed as to whether such claims can be enforced smoothly and effectively, especially after the Nokia v Huaqin case was withdrawn from the Supreme Court last year, where the lower court gave a controversial decision holding a software claim as unenforceable for lacking clarity. It still remains uncertain how the courts will interpret the claims drafted under the new Guidelines.

Post-filing supplementation of experimental data

During prosecution of biotech and chemical patents, applicants may wish to supplement experimental data after the filing date, to testify the technical effect so as to strengthen the inventiveness or sufficient disclosure. However, supplementation of experimental data after the filing date to overcome insufficient disclosure is unacceptable under the old versions of the Patent Examination Guidelines (announced in 2001, 2006, and 2010), although the SIPO provided some flexibilities through informal guides.

According to the new Guidelines, post-filing supplementation of experimental data is allowed. The examiners shall examine experimental data supplemented after the filing date, and the technical effect to be testified by the supplemented experimental data shall be derivable by persons having ordinary skill in the art from the disclosure of the patent application.

The above seems an echo of Warner-Lambert v PRB (Case No 2014-8, April 16 2015) and looks more favourable than the Supreme Court's opinion in Takeda v PRB (Case No 2012-41, September 17 2012), holding that the precondition for accepting experimental data is that the technical effect to be testified by the supplemented experimental data is expressly recited in the original patent file. Under current judicial practice, another circumstance to consider accepting experimental data supplemented after the filing date is that the original patent file contains some relevant experimental data.

Patent amendment during invalidation procedure

Under the old Guidelines, patent amendments during the invalidation procedure were limited to deletion of a claim, deletion of a claimed solution, and consolidation of claims. Under the new Guidelines, consolidation of claims is cancelled, while further defining a claim and correcting an obvious error are introduced.

Here, further defining a claim means the claim is narrowed by incorporating one or more technical features set forth in other claims. The new Guidelines are silent regarding what kind of error is obvious and can be corrected in the invalidation procedure. We believe that an obvious error should be one easily identifiable by persons having ordinary skill in the art and its correct answer can be determined directly.

Overall, the amended patent examination guidelines offer encouraging news for the patentees as they can have more freedom to amend claims during the invalidation procedure, which may save some of the patent enforcement efforts.

Steve SongHe Jing

AnJie Law Firm26/F, Tower D, Central International Trade Center6A Jianguomenwai Avenue, Chaoyang District, Beijing 100022, PR ChinaTel: +86 10 8567 5988Fax: +86 10 8567

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