The Chinese National Intellectual Property Administration (CNIPA) distributed revisions to the Guidelines for Patent Examination on September 23, 2019, and the changes became effective on November 1, 2019.
This article will present outstanding purposes of the changes from a part of how they will possibly influence the candidate. The outstanding focuses for the most part identify with divisional application, assessment criteria on innovativeness, meeting and phone correspondence, request of assessment, assessment standard of human embryonic undifferentiated organisms, and configuration including Graphic User Interface (GUI)
The revisions for divisional application center around as far as possible for documenting another divisional application dependent on a divisional application recorded as of now, and the candidate and creator of a divisional application.
1.1 Time limit for recording another divisional application dependent on a divisional application documented as of now
The Guidelines before the alterations stipulated that, where a candidate records another divisional application dependent on a divisional application documented as of now, the accommodation date of said another divisional application will be analyzed by the underlying application with the special case that said another divisional application is documented because of a solidarity deformity in the divisional application documented as of now. Be that as it may, the Guidelines didn’t explicitly stipulate as far as possible for recording said another divisional application because of a solidarity deformity in the divisional application documented as of now. Under this situation, it might be misconstrued that there is no time limit for recording such a divisional application. By and by, a few candidates tried to exploit that by documenting a divisional application considerably after the entirety of its related applications have been shut.
So as to explain as far as possible for documenting such a divisional application, the corrections of the Guidelines stipulate that the accommodation time of said another divisional application will be analyzed dependent on the divisional application field as of now with a solidarity imperfection, and if the accommodation time isn’t fulfilled, said another divisional application will be regarded as having not been submitted. As indicated by the changes, when said another divisional application is recorded because of a solidarity deformity in the divisional application previously documented, the divisional application documented as of now ought to be as yet pending. Something else, said another divisional application can’t be recorded or will be considered as having not been submitted.
1.2 Applicant and designer of a divisional application
The Guidelines before the revisions stipulated that the candidate of a divisional application will be equivalent to that of the underlying application, generally a report confirming the difference in the candidate will be submitted. With the corrections, “generally a record guaranteeing the difference in the candidate will be submitted” is erased, and it is stipulated that the divisional application will be regarded as having not be submitted if the above necessity isn’t fulfilled. In this manner, as indicated by the corrections, a divisional application can’t be recorded with an alternate candidate from that of its parent application. By and by, if a candidate wants to document a divisional application with an alternate candidate, he may demand changing the candidate of the divisional application after it is recorded.
Moreover, the corrections additionally explain the necessities of candidates and designers of another divisional application dependent on a divisional application documented as of now. In particular, it is stipulated that the candidate of said another divisional application will be equivalent to that of the divisional application recorded as of now, and the creators of said another divisional application will be the innovators or part of the designers of the divisional application documented as of now.
Assessment Criteria on Inventiveness
The revisions of assessment criteria on innovativeness center around deciding the specialized issue really unraveled by the development and weight of confirmation for basic information.
2.1 Technical issue really unraveled by the creation
In China, the imagination of a creation is normally assessed through a three-advance technique involving (I) deciding the nearest earlier workmanship, (ii) deciding the separating highlights of the innovation and the specialized issue really explained by the development, and (iii) deciding if the asserted innovation is clear to an individual gifted in the craftsmanship. Deciding the specialized issue really tackled by the development is a significant piece of the three-advance technique, and is significant for deciding if the guaranteed innovation is evident to an individual gifted in the craftsmanship.
The Guidelines before the changes stipulated that the specialized issue that is really unraveled by the development is resolved based on the specialized impact of the distinctive highlights. Notwithstanding, the Guidelines didn’t characterize what sort of specialized impacts that can be utilized to decide the specialized issue. The distinctive highlights may have a wide range of specialized impacts in various situations, some of which are not by any means identified with the development under assessment, and consequently those unessential specialized impacts are not fitting to be utilized for deciding the specialized issue really comprehended by the innovation. Thusly, the changes explain that the specialized issue that is really comprehended by the creation will be resolved based on the specialized impact of the distinctive highlights in the development to be ensured.
After the revisions, the analyst can’t decide the specialized issue really settled by the innovation just dependent on a general specialized impact of the distinctive highlights or a specialized impact of the distinctive highlights in a reference. Prior to the alterations, every once in a while, the analyst decides the specialized issue dependent on a specialized impact of the distinctive highlights in a reference, which improperly thinks little of the imaginative strides of the innovation since it turns out to be bound to consider the development and the reference are comparable and the specialized commitment of the creation might be disregarded under this situation. After the alterations, the assessment of innovativeness of the creation turns out to be increasingly reasonable since the specialized impact of the distinctive highlights in the development can more readily speak to the commitment of the innovation.
What’s more, the revisions further stipulate that, for those highlights which practically bolster and interface with one another, they and their relationship ought to be considered all in all when deciding the specialized impact of those highlights in the development to be ensured. Prior to the changes, the analyst some of the time will in general seclude the highlights which are practically related and decides the impacts of the highlights autonomously, which may improperly think little of the creative strides of the innovation since the mix impact of those highlights in the development might be neglected when thinking of them as independently. After the revisions, the analyst is ceased from the unseemly detachment of highlights while assessing the innovativeness of the development.
2.2 Burden of confirmation for basic information
By and by, the analyst utilizes regular information to assess imagination of the development much of the time, and it is exceptionally basic that the inspector brings up normal information based criticism without refering to any proof. Such way really leaves the candidate with weight to demonstrate a component isn’t normal information, which is generally difficult to be fulfilled.
In perspective on that, the revisions of the Guidelines recommend that the inspector should initially consider giving proof as opposed to possibly expressing the reasons while guaranteeing normal information by correcting “where the candidate has issues with the basic information refered to by the analyst, the analyst will express the reasons or give comparing proof to verification” as “Where the candidate has issues with the regular information refered to by the inspector, the inspector will give relating proof to evidence or express the reasons”. Likewise, the revisions show a situation where the inspector will normally worry about the concern of confirmation for regular information by including the stipulation of “if the analyst decides a component which adds to the taking care of the specialized issue in the cases as basic information, as a rule the inspector ought to give proof to demonstrate it.” According to this stipulation, for the most part the analyst will not just decide the element of innovative focuses to be basic information without proof.
With the revisions for the assessment criteria on imagination, the creativity of the innovation might be assessed all the more sensibly and impartially.
Meeting and Telephone Communication
By and large, the corrections of this part urge the inspector to speak with the candidate through a wide range of ways, for example, talk with, phone correspondence, video chat, email and so forth., to improve the assessment productivity.
As far as possible for meet is dropped. The candidate can demand a meeting whenever during the considerable assessment system, as opposed to simply subsequent to getting the principal office activity.
Furthermore, the changes stipulate a general rule that the analyst will endorse a solicitation for meet if the meeting can arrive at a gainful reason, and if the meeting can be advantageous to explain issues, dispose of debates, or advance comprehension. With this standard, it will be almost certain for a candidate to get an opportunity to meet with the inspector. There are still a few conditions where the inspector can dismiss the meeting demand at any rate, for instance, where the two sides’ sentiments have been adequately communicated and the related realities are plainly decided through a composed strategy, phone exchange, and so forth.
3.2 Telephone correspondence
The alterations to the piece of phone correspondence drop the confinements of the substance that can be examined through a phone correspondence, and include more correspondence frames notwithstanding phone correspondence, for example, video chat and email.
Specifically, the corrections erase the past stipulation of “the correspondence by phone will apply just to minor issues and non-misdirecting issues concerning the proper deformities”, and change “The inspector may talk about the issues in the application reports with the candidate by phone” into “The analyst may examine the comprehension of the creation and the earlier craftsmanship, the issues in the application records, and so on with the candidate by phone.”
Request of Examination
The alterations of the Guidelines modify the guideline for the request for assessment, which incorporates a general rule, organized assessment, and deferring assessment.
4.1 General guideline
As a general guideline, as a rule the starter assessment of patent applications will be begun in the request for accommodation time of the applications, and the generous assessment of innovation patent applications will be begun in the request for accommodation time of ask for and charge for significant assessment of the development patent applications.
4.2 Prioritized assessment
Organized assessment can be applied to unique applications, for example, those identified with enterprises advanced by Chinese government, and the definite principles are stipulated in another guideline report distributed by the CNIPA, which is designated “Guidelines for organized assessment of licenses” and became effective before the changes of the Guidelines.
It should be noticed that the revisions particularly stipulate a circumstance where organized assessment doesn’t make a difference. That is, for the situation where a similar candidate records an innovation application and an utility model for a similar development creation on a similar date, the assessment of the creation application will for the most part not be organized. The explanation is that a similar development creation has been ensured by the utility model which can be allowed rapidly and consequently it isn’t important to encourage the assessment of the design application.
4.3 Delaying assessment
Postponing assessment is a system recently included the Guidelines. As per this new method, the candidate may demand deferring assessment for development applications or structure applications. The postponing assessment demand for an innovation application will be submitted while presenting the generous assessment demand for the creation application, and the deferring assessment demand for a structure application will be submitted when recording the plan application. The postpone period can be 1, 2 or 3 years from the approval date of the deferring assessment demand. During the postpone period, the application won’t be analyzed. At the point when the postpone period lapses, the application will go into the line to be analyzed by the previously mentioned assessment request.
Postponing assessment enables more space for candidates to consider and actualize their patent techniques.
Assessment Standard of Human Embryonic Stem Cells
The alterations of the Guidelines loosen up the assessment standard in the field of human embryonic undifferentiated cells assessment. Especially, the revisions indicate that human embryonic undifferentiated organisms don’t have a place with the human body at different phases of advancement, and if the innovation creation is to detach or get immature microorganisms by utilizing human incipient organisms that have not experienced in vivo improvement and are inside 14 days from treatment, the development can’t be dismissed on the grounds of “abusing social profound quality”. What’s more, the revisions erase the stipulation of “human embryonic immature microorganisms and readiness techniques thereof fall inside the unpatentable extension as stipulated by Article 5, Paragraph 1 of Patent Law”.
After the alteration, human embryonic foundational microorganisms are prohibited from the meaning of the human body at different phases of improvement and human incipient organisms that have not experienced in vivo advancement and are inside 14 days from treatment are rejected from the meaning of human fetuses, which gives more space to be allowed as for the innovations on human embryonic undifferentiated organisms and planning strategies thereof. As per the present patent practice, the propensity of patent assessment is loose with the improvement of the innovation of human embryonic undeveloped cells. Thusly, life science-related organization will alter patent application procedure ahead of time so as to early spread out for the market.
Configuration Involving GUI
The alterations for configuration including GUI incorporate numerous particular necessities for the structure name of the item, the photos or photographs of the plan, the concise clarification, and the patentable extension for configuration including GUI.
In any case, the most significant point in the revisions is that a plan application may just present an orthographic perspective on the presentation screen board containing the GUI instead of present drawings of the entire items to be secured, and names of the items to be ensured can be recorded in the concise clarification. After the revisions, one plan application can consolidate numerous sorts of items with a similar GUI, and the structures of the parts other than the GUI part can be extraordinary. For instance, in a plan application, the documented drawing can just show the orthographic perspective on the showcase screen board containing GUI, and a concise clarification expresses that the GUI can be applied to cell phones and PCs. In such a manner, this plan application can be applied to both cell phones and PCs. Conversely, before the revisions, at any rate one drawing of the entire item to be secured will be displayed regardless of whether just the GUI is the plan point, and accordingly normally just a single sort of item can be fused in one structure application.
The above difference in the assessment rules for configuration including GUI will without a doubt impactsly affect candidates’ application methodology for structures including GUI. Furthermore, this change may diminish handy challenges in security of configuration including GUI under the situation that part configuration isn’t patentable in China. By and by, a GUI configuration might be utilized in different sorts of items with various equipment plans. In any case, before the revisions, a plan patent including GUI will characterize the two structures of the GUI and the equipment part of a particular item. Along these lines, the plan patent can’t be viably authorized since the GUI might be utilized in an alternate sort of item or an item with various equipment structure, which typically doesn’t encroach the plan patent in spite of the fact that a similar GUI is utilized. Interestingly, after the alteration, a plan patent can just generously characterize the GUI, and the applied items can be simply recorded by names without characterizing their particular equipment structures. Under this situation, the secure extent of the plan patent is significantly widened, and it will be sensibly considered as encroaching the patent if a similar GUI is utilized in an item recorded in the structure patent paying little respect to the equipment structure of the item.