SIPO Loosens Rules for Claim Amendments in Invalidity Actions and
Software Patents
March 3, 2017
On March 1, 2017, the State Intellectual Property Office of China (“SIPO”) of China announced
formal amendments to its Patent Examination Guidelines.
The formal amendments are almost
the same as the version SIPO previously published for public comments last year. The
amendments will take effective as of April 1, 2017 (and it remains to be clarified whether and how
the amendments will be retrospectively applied to existing patent applications and patents).
Overall, the amendments are pro-patent owners.
The most important amendments include (1) a
rule allowing the patent owner to add to a claim one or more individual features from the other
granted claims during an invalidity action, and (2) rules to allow more leeway to draft claims for
software patents.
Below is a summary of the major amendments and our comments.
1. Narrowing a claim during an invalidity action
Amendments: During an invalidity action, the patentee can add to a claim one or more features
from other claims as granted.
If the patent owner does such an addition, the invalidity challenger
should be given a chance to add new grounds of invalidation toward the amended claims, but the
challenger cannot cite new evidence to support the added grounds and can only rely on evidence
previously submitted.
Comments: This amendment will give patent owners more flexibilities to amend the claims during
invalidity actions, beyond the current option of combining two or more full claims into one or
cancelling an alternative option from a claim. The patent owner still needs to ensure that the
amendment does not introduce new matter. On the other hand, the amendment does not go as
far as allowing the patent owner to add a feature from the specification to a claim.
2. More options to draft claims for software patents
Amendments: It is made clearer that while “computer programs per se” are not patentable,
inventions related to computer programs can be patentable.
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Various specific amendments
further allow applicants to draft claims in the following manners:
(1) medium plus computer programs; and
(2) apparatus claims defined by both hard ware components and computer programs.
Comments: Currently applicants can only present the following 3 types of claims: (1) method
claims, (2) apparatus claims defined with means-plus-function features that strictly correspond to
the steps of the method claims, and (3) a system comprising memory and a processor configured
to perform certain functions according to computer instructions stored in the memory (some
examiners could object to this type of claims). The amendments provide 2 more options and are
certainly welcome.
3. Eligibility of business methods
Amendments: If a claim recites both features about business methods and technical features, the
examiner shall not reject the claim on the grounds that the claim relates to “rules and methods for
mental activities” under Article 25 of the PRC Patent Law.
Comments: This amendment does not carry much practical effect.
Currently, examiners already
seldom invoke Article 25 to reject such claims, but would perform a prior art search, compare the
claim with the prior art and then reject the claim on the grounds that the distinguishing features
are merely about business methods with no technical contribution and thus the claim is not
inventive. This amendment likely will lead examiners to issue such an inventiveness rejection
more consistently.
4. Supplement experimental data for chemistry inventions
Amendments: Examiners should consider and examine supplemental experimental data
submitted during examination, and the technical effect to be proven by the data should be
derivable by persons in the art from disclosures of the subject application under examination.
Comments: This amendment is also a positive development, and it is in response to some
judgments and rules made by the Beijing Higher People’s Court and the PRC Supreme People’s
Court.
Some examiners actually have started to admit and consider such supplemental data,
and this amendment likely will help unify the practice among examiners.
The amendment again
highlights the need for applicants to disclose in the specification possible effect, result and
benefits the subject invention may bring.
Also, officially the amendment relates only to the examination of disclosure sufficiency by the
specification. It is not clear how the examiner should treat such data if an applicant submits the
data to prove that his invention is superior over the prior art and thus is inventive (some examiners
currently are willing to consider such data under the guidance from the Beijing Higher People’s
Court and the PRC Supreme People’s Court).
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5. Time limit for a property preservation
Amendments: When the People’s Court issues a property preservation order to the Patent Office
to suspend and preserve the status of a patent or a pending application, the Patent Office should
follow the time limit set by the court’s order.
Comments: This refers to the scenario where SIPO “freezes” its proceedings on a patent
application or a patent when there is an ownership dispute before the court.
Currently the freeze
will last a fixed 6-month period, which may not match the time period needed by the court. The
amendment will now peg the freeze to the time period specified by the court, which is more
reasonable and operable.
LEXFIELD
LexField Law Offices | Intellectual Property Law
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Chaoyang District, Beijing 100020, China
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