By: David Lu
According to the World Intellectual Property Organization (WIPO), more than 1.1 million patent applications, including direct and PCT national phase entries, were filed in China in 2015. Among these filings, more than 37,000 applications were from U.S. applicants who sought patent protections of their inventions. Early this year, the statistics released from the Chinese government indicate a record number of more than 1.3 million applications filed in 2016 for invention patents (one of the three types of patents in China along with utility models and design patents). Given the importance of China as a growing market for U.S. companies that rely on intellectual property, there is an increasing need for familiarity with China’s IP system, especially the practice before the Chinese Patent Office.
1. Guidelines for Patent Examination
In China, the State Intellectual Property Office (SIPO), as the patent administrative department, commissions the Patent Office to examine applications and grant patents on behalf of SIPO. The Patent Reexamination Board, set up by SIPO, is responsible for examining requests for patent reexamination and invalidation. To provide uniform bases and standards for the Patent Office and the Patent Reexamination Board to enforce the relevant laws and regulations, SIPO enacted the Guidelines for Patent Examination (“Guidelines”). The Guidelines detail and supplement the provisions of Chinese Patent Law and its Implementing Regulations. The current version of the Guidelines was published in 2010, and recent revisions became effective on April 1, 2017 (“April Revisions”).
2. Revisions to Guidelines
The April Revisions focus on several provisions that would influence business methods, information technologies, and biotech and chemical cases. They also aim to harmonize with patent practice in other countries, moving regulations closer to international standards. These changes reflect the government’s ambition to promote innovations in a number of fastest-growing technology sectors. China, as one of the world’s largest E-commerce markets, is facing both opportunities and challenges in the global internet-driven economy. The biotech industry is another area in which the government is seeking rapid growth in the next wave of technology innovation. The April Revisions are expected to provide guidance to both domestic and foreign applicants, in terms of protection of intellectual property rights and development of business strategies.
3. Business Methods
Before the April Revisions, business methods were generally considered patent-ineligible; however, the revised Guidelines provide that patent claims relating to business methods, and containing both business rules and technical characteristics, shall not be excluded from the possibility of obtaining patent rights under Article 25 of Chinese Patent Law. The April Revisions appear to emphasize the importance of technical solutions and reject the notion that certain methods are not patent-eligible solely because they include business rules and methods. The government reasoned that, from a public policy point of view, innovative technical solutions for business models should be encouraged and given proper protection, especially when they have brought great benefits to the society, including improved market operation, resource distribution, and logistics management.
4. Computer Programs per se or Inventions Involving Computer Programs
The April Revisions clarify that the term “computer programs per se” is different from “inventions involving computer programs.” Computer programs themselves, which belong to mental activities according to Chinese Patent Law, are still excluded from patent protection. Prior to the April Revisions, the Guidelines did not explicitly distinguish “computer programs” from “computer programs per se,” and there was some confusion as to whether inventions involving computer programs were indeed patent-eligible. The revised Guidelines make it clear that inventions involving computer programs can be patented. For example, it would be suitable to use the format of “media plus computer program” to describe program-implemented inventions in the claims.
5. Hardware vs. Software
Before the April Revisions, computer programs recited in system/apparatus claims were generally interpreted to merely limit the functions of hardware. However, this interpretation seems to be inconsistent with the notion that hardware and software work collaboratively in computer products, and in fact, that computer-related inventions can often be written as either a system/apparatus claim or a process/method claim. To allow applicants to accurately describe improvements in software, the revised Guidelines acknowledge that a computer program, not just hardware, can be considered as an integral part of a claimed system/apparatus.
6. Post-filing Experimental Data
Practitioners have long noted that experimental data submitted after the filing date would generally not be taken into account during examination in China. This was especially challenging for biotech and chemical cases, because applicants often wanted to use post-filing data to show that the application describes the invention in a sufficiently clear and complete way for a skilled person to carry out the invention. Prior to the April Revisions, the Guidelines explicitly stated that post-filing experimental data would not be considered, although in recent years SIPO started to relax its sufficient disclosure requirement, and to allow submission of post-filing data to address rejections raised by examiners in biotech and chemical cases. The revised Guidelines clarify that examiners should review experimental data submitted after the filing date. They also require that the technical effect proved by the post-filing data should be obtainable from the disclosures of the application by a skilled person in the art. It is still unclear how the examiners will apply this new standard during examination. Nevertheless, the revision seems to be in line with the approach used by other major jurisdictions, such as the European Patent Office (EPO), where post-published evidence may be taken into account, but only to back up the findings in the application, and not to establish sufficiency of disclosure on their own.
7. Claim Amendments during Invalidation Proceedings
Before the April Revisions, claim amendments during invalidation proceedings were limited to claim cancelation, claim consolidation, and deletion of a technical solution. The revised Guidelines allow additional ways of claim amendments during invalidation proceedings. Patentees can now amend a claim by introducing one or more technical features recited in another claim to narrow the claim scope. Patentees can also amend the claims simply to correct obvious errors.
8. Additional Causes and Evidence for Invalidation
Consistent with the additional ways of making claim amendments during invalidation proceedings, revisions have been made to the Guidelines regarding how petitioners can add causes and supply evidence for invalidation. The Guidelines restrict the ability of the petitioner to submit additional causes or supplementary evidence, if they are submitted after a time limit. For example, the revised Guidelines require that additional causes can only be raised in response to certain amendments made by the patentee. According the revised Guidelines, supplementary evidence from the petitioner should be related to the counterevidence provided by the patentee.
9. Access to Examination
Previously, the public could only access patent files up to the date of publication for applications that have been published but not yet granted. To improve transparency in the patent system, the revised Guidelines expand the accessibility to the stage of substantive examination. In particular, notifications, search reports, and decisions sent to the applicant during substantive examination can now be inspected and copied. For granted patents, priority documents and search reports have also become accessible.
To improve patent enforcement, certain provisions in the Guidelines regarding the suspension and property preservation procedures have been revised. These changes reflect the revisions in Chinese Civil Procedure Law introduced in 2013.
Although too early to draw conclusions, the April Revisions seem to suggest that China is moving toward a more patent-friendly environment due to the government’s determination to advance technologies. It may be time for U.S. technology companies doing business with China to reevaluate their IP strategies in view of the changing patent landscape and policies.