China releases draft revision of the Patent Examination Guidelines

China

The National Intellectual Property Administration of the People's Republic of China released the Draft Revision of the Patent Examination Guidelines ("Draft") on 4 April 2019. The Draft was open for public comment until 5 May 2019. The most important changes are summarised below.

  1. Clarification on patents regarding stem cells

    Under the current Patent Examination Guidelines, embryonic stem cells and their preparation methods are not patentable. Such inventions are considered as violating public morality and therefore been prohibited from been patented by the article 5.1 of the Patent Law of the People’s Republic of China. The Draft provides that if the invention is to abstract or obtain stem cell by using human embryos which have been fertilized within 14 days and have not been grown in human body, such invention does not violate the public morality and shall not be prohibited from been patented by the abovementioned article 5.1.

  2. Clarification on divisional applications

    Where a divisional application is filed by an applicant is response to an Office Action citing a unity defect in the original divisional application, the rule on judging whether the application is filed within the permitted time period is the same as the general rule for normal divisional applications. In the event that the applicant of the initial application intends to assign its right to file the initial application, the divisional application should be filed after the assignment has been completed. In the event that the applicant of the divisional application intends to assign its right to file the divisional application, it should file an assignment application at the same time as or after the divisional application.

  3. Clarification on the assignment of patents / patent applications

    Where an applicant or patent right holder intends to transfer its right by way of  assignment or donation, it should provide the authority with the assignment or donation contract with the signatures or stamps of both parties. The patent examiner will review the qualification of both parties in the following circumstances: (1) either party raises an objection to the assignment or donation; (2) there are conflicts in the documentations; or (3) The signatures on the assignment or donation contract are inconsistent with those on other filed documents.

  4. Clarification on pattern design patents

    Under the current rules, a Graphical User Interface is patentable as a design patent. The Draft further clarifies certain requirements for reviewing such design patents during the patent application, including but not limited to the product name, images or dynamic pictures.

  5. Clarification on the rule of judging inventiveness

    During the examination of inventiveness, a patent examiner will compare the claimed invention with prior art. According to the Draft, the patent examiner should not determine the technical problem actually solved by the invention only on the basis of the technical effect of the distinguishing features between the claimed invention and the prior art. The patent examiner must firstly determine the technical problem actually solved by the invention through the technical effects that the claimed invention can achieve.

To read the full text of the Draft (in Chinese only) please click here.