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Decision of the State Intellectual Property Office on Amending the Guidelines for Patent Examination

 

The State Intellectual Property Office(SIPO) has decided to make the following changes to the Guidelines for Patent Examination

 

A new paragraph is added after the Guidelines for Patent Examination, Part II, Chapter 1, Section 4.2, Clause 2, which reads as follows:

　　“[Example]

For the claims concerning business model, if it comprises not only the business rules and the contents of the methods, but also the technical characteristics, it shall not be based on Article 25 of the Patent Law to exclude the possibility of its patent rights. “

The rest of this section is not modified.

 

The following content in the first paragraph of Guidelines for Patent Examination, Part II, Chapter 9, Section 2, Clause 1 “merely the computer programs recorded in mediums (such as tapes, discs, optical discs, magnetic optical discs, ROM, PROM, VCD, DVD, or other computer-readable mediums)” is modified as follows: “merely the computer program itself recorded in mediums (such as tapes, discs, optical discs, magnetic optical discs, ROM, PROM, VCD, DVD, or other computer-readable mediums)”.

The following content in the first sentence of the third paragraph of Guidelines for Patent Examination, Part II, Chapter 9, Section 2, Clause 1“the computer-readable storage medium … that is merely defined by recorded program” is modified as follows: “the computer-readable storage medium … that is merely defined by the recorded program itself”.

The rest of this section is not modified.

 

 [Example 9] in Clause 3 of Guidelines for Patent Examination, Part II, Chapter 9, Section 3 is deleted.

 

The following content in first sentence of the first paragraph of Guidelines for Patent Examination, Part II, Chapter 9, Section 5.2 “i.e., the apparatus for executing the process” is modified as follows: “e.g. the apparatus for executing the process”.

The following content in the third sentence of the first paragraph of Guidelines for Patent Examination, Part II, Chapter 9, Section 5.2 “and a detailed account shall also be given on the component parts by which the various functions of the computer program are performed, and on how these functions are performed” is modified as follows: “of which the component parts may include not only hardware but also programs”.

All wordings of “function modules” in the second paragraph of Guidelines for Patent Examination, Part II, Chapter 9, Section 5.2 are modified as “program modules”.

The rest of this section is not modified.

 

New Section 3.5 is added to Guidelines for Patent Examination, Chapter 10, Section 3, and Clause 2 of Section 3.4 is moved to Section 3.5 with content modified. Section 3.5 reads as follows:

　“3.5 Supplementation of Experimental Data

Whether or not the description is sufficiently disclosed is judged on the basis of the disclosure contained in the initial description and claims.

The examiner shall review the experimental data submitted after the date of filing. The technical result evidenced by the supplemental experimental data shall be able to be obtained by those skilled in the art following the disclosure in the patent application.”

The rest of this section is not modified.

 

Item (i) of Guidelines for Patent Examination, Part IV, Chapter 3, Section 4.2, Clause 2, is modified as follows:

 “(i) For claims amended by ways outside of deletion by the patentee, addition of causes for invalidation is made within the time limit specified by the Patent Reexamination Board, and the added causes are explained concretely within the time limit;”

The rest of this section is not modified.

 

The following content in Item (i) of Guidelines for Patent Examination, Part IV, Chapter 3, Section 4.3.1, Clause 2 is deleted: “claims amended by way of combination or”

The rest of this section is not modified.

 

The first paragraph of Guidelines for Patent Examination, Part IV, Chapter 3, Section 4.6.2 is modified as follows:

 “Subject to the above principles of amendments, the specific manners of claims amendment are generally limited to deletion of a claim, deletion of a technical solutions, further limitation on a claim, and correction of an obvious error.”

The third paragraph of Guidelines for Patent Examination, Part IV, Chapter 3, Section 4.6.2 is deleted, so the fourth paragraph becomes the third and the following new paragraph is added as the new fourth paragraph:

 “Further limitation on a claim refer to the inclusion in the claim of one or more technical features described in the other claims to reduce the scope of protection.”

The rest of this section is not modified.

 

The following content in the second paragraph of Guidelines for Patent Examination, Part IV, Chapter 3, Section 4.6.3 “amend the claims by the way of combination “is modified as follows: “amend the claims by the ways outside of deletion”.

The rest of this section is not modified.

 

Clause 2 of Guidelines for Patent Examination, Part V, Chapter 4, Section 5.2 is modified as follows:

“(2) for the file of a patent application for invention which has been published and whose grant of patent right has not been announced, the contents in the file, which may be consulted and copied, include the application documents, formality documents directly related to the application, publication documents, notifications and decisions sent to the applicant in the preliminary examination procedure, the text of the observations submitted by the applicant in response to the notifications, and the notifications, search reports and decisions sent to the applicant in the substantive examination procedure.”

Clause 3 of Guidelines for Patent Examination, Part V, Chapter 4, Section 5.2 is modified as follows:

“(3) for the file of a patent application for which grant of patent right has been announced, the contents in the file, which may be consulted and copied, include the application documents, the priority right documents, the formality documents directly relating to the application, pamphlet of patent application for invention, pamphlet of patent for invention, pamphlet of patent for utility model or pamphlet of patent for design, Patent Register, evaluation report of patent right, and the various notifications, search reports and decisions issued by the Patent Office or the Patent Reexamination Board to the applicant or parties concerned, and the text of the observations submitted by the applicant or the parties concerned in response to the notifications in the examination proceedings which have been closed (including procedures of preliminary examination, substantive examination, reexamination and invalidation, etc. ).”

The rest of this section is not modified.

 

Section 7.4.2 of Guidelines for Patent Examination Part V, Chapter 7 is modified as follows:

“7.4.2 Time Limit of Suspension Due to Execution Assistance of Property Preservation

For the suspension due to execution assistance of property preservation asked by the People’s Court, all the related procedures shall be suspended for the period of property preservation as stated in the Civil Judgement and the Notification on Assistance in Execution.

Where the People’s Court orders to continue adopting measures of property preservation, it shall serve the Patent Office with a Notification on Assistance in Execution for keeping on the preservation before the expiration of the time limit for suspension; The suspension shall be extended if the notification complies with the regulations set forth in Section 7.3.2.1 of this chapter after being checked.”

 

The following content in Section 7.4.3 of Guidelines for Patent Examination, Part V, Chapter 7 “or asked by the People’s Court to assist in execution of property preservation” is deleted.

The rest of this section is not modified.

 

The following content in Guidelines for Patent Examination, Part V, Chapter 7, Section 7.5.2 “The duration of suspension is 6 months” is modified as follows: “the duration of suspension shall be the period for the property preservation as stated in the Civil Judgment and the Notification on Assistance in Execution”

The rest of this section is not modified.

 

This decision will come into force on April 1, 2017.