Analysis of key revisions of new Guidelines for Patent Examination: General Part of Substantive Examination

View: 353     Date: 2024-01-02 07:23

Author: Baitao XIE

On December 21, 2023, China National Intellectual Property Administration published the latest Guidelines for Patent Examination, which will come into effect on January 20, 2024.

This article analyzes the general part of the substantive examination mainly from the aspects including the subject matter that no patent right shall be granted, the novelty and the inventiveness.

I. The subject matter that no patent right shall be granted

(i) The key points of revision concerning Article 5 in the Patent Law

1. Clarifying the legal basis for contravening the Laws (Section 3.1.1, Chapter 1, Part II of the Guidelines)

First of all, for contravening the Laws, specifying the legal basis, "for example, the Criminal Law of the People's Republic of China, the Law of the People's Republic of China on Penalties for Public Security Administration, the Law of the People's Republic of China on the People's Bank of China, the Law of the People's Republic of China on Negotiable Instruments", the revisions here are optimizing amendments.

Secondly, deleting “apparatus for counterfeiting historic relics”. The main reason lies in the difficulty of distinguishing, merely on the basis of the patent application document, between the apparatus used to copy/imitate historic relics and the apparatus to counterfeit historic relics, where the apparatus to copy/imitate historic relics is not illegal itself (there is no explicit law), but only suspected of being illegal when it is used for fraud etc.

2. Adding circumstances and making levels for doing harm to public interest (Section 3.1.3, Chapter 1, Part II of the Guidelines)

First of all, the Guidelines added "symbols and emblems of political parties", and classifies them as category I, which is absolutely prohibited, together with important political event of the State or hurting the sentiments of the people or of ethnic groups, or advocating superstition.

Secondly, the Guidelines also added "involving important economic event and cultural event of the State ", and classified them as category II together with religious belief. The category II means the situations which may, but not necessarily, harm the public interest, and the patent rights will not be granted if the public interest is harmed.

3. Expanding the definition of genetic resources and adding exemplary cases (Section 3.2, Chapter 1, Part II of the Guidelines)

In order to adapt to the changes in Implementation Regulations, "genetic information derived from the use of such materials" is added into the definition of genetic resources, so as to incorporate genetic information into the scope of genetic resources.

At the same time, in addition to the original cases in the Guidelines, the exemplary case "providing or opening the use of information on human genetic resources in China to foreign organizations" is added.

(ii) The key points of revision concerning Article 25 in the Patent Law

1. In view of "Methods for Diagnosis or for Treatment of Diseases ", deleting the example of measuring blood pressure (Section 4.3.1.1, Chapter 1, Part II of the Guidelines)

With the development of technology and the strengthening of public awareness of health, blood pressure measurement is becoming very common, and the purpose of blood pressure measurement is more and more diversified. Most of the time, the purpose is to obtain intermediate measurement results, not to obtain disease diagnosis results as a direct purpose, for example, to improve sleep or health exercise, and thus it is not a disease diagnosis method. Therefore, it has been deleted in this revision.

2. In view of" Methods for Diagnosis or for Treatment of Diseases ", adapting to the development of new technologies such as wise information technology of medical, and improving the examination standards (Section 4.3.1.2, Chapter 1, Part II of the Guidelines)

For the circumstances of "Inventions Not Belonging to Diagnostic Methods", adding "information processing methods whose steps are all implemented by apparatus such as computers".

From the legislative point of view, the reason why the patent law restricts the grant of methods for diagnosis or for treatment of diseases is to avoid the restriction of medical treatment activities for doctors, and the practical issue that the object of implementation is living. The core invention point of " information processing methods whose steps are all implemented by apparatus such as computers" lies in the algorithm, such as: information statistics technology, information processing technology and other innovations, whose processing results are more to provide data support for doctors' diagnosis and treatment. Therefore, this revision will help stimulate the innovation vitality and patent protection in the field of wise information technology of medical, and meet the needs of innovative applicants.

(iii) The key points of revision concerning newly added R11 and the content of R59 in Implementation Regulations of Patent Law (Section 5, Chapter 1, Section 6.1.2, Chapter 8 and Section 4.7, Chapter 8 in Part II of the Guidelines ):

For applying of the principle of good faith:

In addition to the original provisions of Article 2, 5 and 25 of the Patent Law in Chapter 1, the Guidelines added a new section 5 to explain the principle of good faith in R11 of the Implementing Regulations of the Patent Law.

The Guidelines cited the Provisions on Regulating Behavior for Applying Patent Application (effective from January 20, 2024). Article 3 of the Provisions on the behavior of abnormally apply for patents includes seven specific circumstances and a backstop clause.

R59 of the Regulations lists violations of the principle of good faith as one of the circumstances that the patents should be rejected, and the Guidelines also made adaptive revisions to the types of rejection in Section 6.1.2, Chapter 8 of Part II. As for the principle of good faith, it runs through various procedures such as the preliminary examination, substantive examination, re-examination and invalidation procedure.

In order to respond to the innovative entities' concerns that this rule may be abused, the Guidelines made relevant provisions in Section 4.7, Chapter 8 of Part II, on the evidence and sufficient reasons for the examination of this clause.

II. With respect to novelty

(i) Adjustment of the classification of publications: printed publications, audio-visual materials, or materials existing on the Internet or other online databases (Section 2.1.2.1, Chapter 3, Part II of the Guidelines).

The use of Internet evidence is becoming more and more common in substantive examination or invalidation proceedings, where the identification of the authenticity, legality and date of publication is relatively complex and has a certain level of controversy in practice. To this end, in the new Guidelines, the classification of publications is adjusted, where print publications and audiovisual materials are merged for explanation, and Internet evidence is treated as a single subsection for separate explanation.

In Section 2.1.2.1 (2) of Chapter 3 of Part II, Information existing on the Internet or other online databases, first of all, Internet evidence is defined as "Information existing on the Internet or other online databases refers to text, pictures, audio and video materials stored in the form of data and transmitted through the network". Secondly, it emphasizes that the way to obtain Internet evidence should be legal, and the acquisition of data has nothing to do with whether passwords are required or payments are required, and whether the data has been read. Thirdly, stipulated the determination of the publication date of Internet evidence, which should generally based on the date of release recorded on the website. If the date of issue is not recorded or in doubt, the publication date may be determined by reference to the log file, the index date given by the search engine, the date displayed by the Internet Archive service, the time stamp information or the published date of the copied information displayed on the mirror website.

The key provisions on Internet evidence in the Guidelines provide a clear basis and guidance for the standard consistency in the process of using Internet evidence.

(ii) Tips on the publication of use (Section 2.1.2.2, Chapter 3, Part II of the Guidelines)

Clearly added "bidding" as an example of the publication of use. The classification of this kind of evidence is clarified and, a reminder is provided to the applicant to pay attention to avoid earlier publishing the technical information in the process of bidding activities, which may affect the grant of subsequent patents.

(iii) Grace period of novelty (Section 5, Chapter 3, Part II of the Guidelines)

In Article 24 of the revised Patent Law, on the basis of the original three circumstances that may enjoying the grace period of novelty, a fourth circumstance is added, "(1) In times of national emergency or extraordinary circumstances, published for the purpose of public interest for the first time", relevant revisions are made in Section 5, Chapter 3, Part II of the Guidelines.

At the same time, with the development of the Internet, information forwarding and network communication are becoming easier and more frequent. In this context, regarding the issue of whether the novelty is destroyed by the publication made by others, who learned the technical information through the publication meeting the provisions of item (1) (4) of the grace period, clear provisions are made in the Guidelines: "In times of national emergency or extraordinary circumstances, if an invention-creation is firstly published for the purpose of public interest, and then is published again by others upon learning of it, it shall be regarded as the situation described in Article 24 (1) of the Patent Law. Where others disclose the contents of the invention-creation without the consent of the applicant, and a third party discloses the invention-creation again upon learning of it, it shall be regarded as the situation described in Article 24 (4) of the Patent Law". That is, in the event that the invention-creation is disclosed again after being learned by others, a grace period may still be applicable.

III. With respect to inventiveness

The judgment of inventiveness usually adopts three steps: (1) determining the closest prior art; (2) identifying the distinguishing features of the invention and the technical problem that the invention actually solves; and (3) determining whether the protection claimed by the invention is obvious to those who skilled in the field.

The Guidelines mainly made important changes to the steps (1) and (2).

First of all, in the step of determining the closest prior art, the Guidelines added "to give priority to the prior art related to the technical problem that the invention is to solve", rather than just considering technical fields and the number of published features. By selecting the prior art related to the technical problem as the starting point of inventiveness evaluation, to better restore the process of invention and creation, can be more conducive to making objective and accurate judgments on inventiveness.

Secondly, in the step of identifying the distinguishing features of the invention and the technical problem that the invention actually solves, the Guidelines added two points:

The first is how to determine the technical problem in the case of alternative. The Guidelines added that "when all the technical effects of the invention are comparable to the closest prior art, the technical problem to be redefined is to provide an alternative technical solution to the closest prior art". In this case, it cannot be necessarily concluded that the invention lacks inventiveness because the invention is to provide an alternative solution, and further judgment is needed to determine whether the alternative is obvious.

The second is to focus on the typical misunderstanding of the identification of technical problem. The Guidelines added that "the redefined technical problem should match with the technical effect that the distinguishing feature can achieve in the invention, and should not be determined as the inherent effect of the distinguishing feature itself, nor should it contain the guidance or implication of the distinguishing feature", and added a case in the field of consumer electronics for more specific explanation. Through this provision, the determination of technical problem can be more accurate, avoid bringing into the specific solutions, so as to lay a good foundation for the third step of the obvious judgment, and more effectively avoid the occurrence of "hindsight" situation.

To sum up, this article analyzes several key points of the revisions of Guidelines for Patent Examination. The revisions are mainly carried out from the perspective of linkage with the Patent Law and the Implementation Regulations of Patent Law, the optimization of the examination procedures, the convenience of applicants, and the aspects of adapting the technology development of new formats and new fields. To improve the quality of patents as the goal, and make clearer requirements for the examination standards. It is helpful to strengthen and optimize the patent protection of technological innovation.