insight on chinese patent practice patent granting ...en.wanhuida.com › public › upload › file...

Insight on Chinese Patent PracticeTips on patent claim drafting from the perspective of patent invalidation and

lawsuit

Rebutting objections to inventiveness

Issue of insufficient disclosure in biotechnology: case study

Patent Legislative Development in ChinaThe new amendment to the Examination Guidelines effective as of April 1,

2017

The draft of 4th amendment of the Patent Law (still pending)

AppendixUpdated patent statistics of the SIPO

65

62

68

74

77

86

WAN HUI DA - IntroductionAbout our firm and patent prosecution strength

Patent Granting Procedure & Filing Strategies in ChinaQuestions and Answers: 7 aspects

Patent Prosecution Practice in ChinaEligible subject matters for patent protection

Specific issues in the fields of chemicals, bio-technology, and

pharmaceuticals

Designs for the protection of products

Reexamination focus

6

14

32

41

51

56

WAN HUI DA - Introduction ● 5Essentials for Patent Applications in China ● 4

WAN HUI DA- Introduction1PART


2. Patent Team

Our patent team has 180 patent professionals, including around 90 patent attorneys, serving both multinational and domestic client’s needs in patent protections in China . Most of them have advanced technical education and obtained their doctorate and master degrees in the best universities in China. Some of our professionals also have experience working for the State Intellectual Property Office, the Patent Examination Board, industries and research institutions. Many of our professionals have had education and work experience outside China as well.

Especially, our leading patent attorneys having both experience in prosecution and litigation, can take the advantages of comprehensive understanding of patent law and practice. All of these make our team be able to keep offering high quality work for the clients.

1. About Our Firm

WAN HUI DA which includes WAN HUI DA Law Firm, WAN HUI DA IP Agency, and Peksung IP Ltd. is a full Intellectual Property service provider in China, covering the whole range of patent, trademark, copyright, domain name and trade secret, from prosecution to litigation as well as counseling. WAN HUI DA now has 8 Offices in mainland China and 3 liaison offices overseas with a team of around 500 staff in total, comprising more than 300 of patent attorneys, IP lawyers, and trademark attorneys. Besides working on client matters, Wai Hui Da is also an active participant in China’s development of patent and technology laws.


4. Patent Strength

We are fortunate to have had the opportunity to work with some of the world’s most innovative and leading companies home and aboard. We file around 4000 patent applications with the State Intellectual Property office annually, including patents for invention, utility model and design.

The technology distribution of the patent applications filed:

Chemical/Pharma/Bio-tech 35%Mechanical Related 35% Electrical/Telecom/Physics 30%

Working as a team by the attorneys at law and the patent attorneys, we also represented our clients handling over 90 patent dispute cases, including patent invalidation and patent infringement in 2016.

3. Patent Coverage

Full - Technical Fields Coverage

Multiple - Working Languages

Chinese, English, French, German, Japanese, Korea

Chemistry Chemical Engineering BiotechnologyPharmaceutics Material science

MechanicsMedical devices Metallurgy

Articles for daily useDesign

PhysicsElectronics Hardware/software Semiconductor Telecommunication


5. Service Features

We help our clients for various patent works, including patent search, patent filing strategy, patent drafting, patent filing, translation, responding official actions, patent reexamination, patent invalidation, patent litigation, custom recordal, freedom to operate, and so on.

We always keep our client’s interests in mind and focus on adding values to them. Our service features are:

● Meeting client’s needs & expectations, and acting proactively,● Obtaining enforceable patent rights for clients,● Communicating smoothly with clients and/or examiners● Ensuring high quality by way of expertise and effective team work

Granting Procedure &Filing Strategies in

China2PART

Granting Procedure & Filing Strategies in China ● 15Essentials for Patent Applications in China ● 14

the local practice, design patents can be effective to stop infringement act both by administrative enforcement or civil litigation.

For s trategical reasons or for some important innovations, it can be practicable to file both invention and utility model applications for the identical technical solution on the same filing day. The exception is that the dual-filing cannot be based on a family PCT international application. As the utility model patent is granted faster after preliminary examination, enforcing patent right becomes available. Subsequently, when the invention

patent with the same technical solution is about to be granted after substantive examination, the utility model can be withdrawn to avoid double patenting. On the other hand, if the invention is not allowed, the utility model can still be effective. The applicant may take its time during prosecution of the invention application, to win relatively stable protection scope. In addition, keeping both utility model and invention patent may also be feasible provided that the scopes of the claim protection are not identical.

Q1: Which type of patent is suitable for protecting innovation in China? Invention, utility model or design patent?

In general, among the three types of patents, patent for invention offers protection of the broadest subject matters, including products, processes and usages. Patent for utility model aims at protecting product with the shape, structure, or their combination. Accordingly, method, usage, ingredient and the like cannot be protected by utility model. Patent for design protects the appearance of product in the form of shape, pattern, or their combination, or the combination of the color with shape or pattern of product, which creates an aesthetic feeling.

The main difference of the three types of patents is that invention patents should be subjected to substantive examination while the design and utility model patents can be granted

just through preliminary examination without prior art search. The protection term of invention patents is 20 years from the filing date, which is longer than 10 years as compared with utility model and design patents.

For innova t ions focus ing on technology improvement, invention patent with strong protection shall always be considered at the first place. Regarding small improvement or a product with short market cycle, utility model can be a good choice for quick protection and enforceable right with lower cost.

For a product to which the design of appearance contributes highly to its commercial values, it is advisable to obtain a design patent(s). According to


For Invention/Utility Model

1) Description, Claims, Abstract, Drawings (if any, but at least one drawing is mandatory for utility model application)

2) Certified priority document (if priority right is claimed);

3) Assignment (if the applicant in China is different from that of the priority application); and

4) Power of Attorney

For Design

1 ) D r a w i n g s o r P h o t o g r a p h s (for three-dimensional product, six orthogonal views and perspective views (at least front view, rear view and perspective view, and enlarged views of specific parts, if any) are required);

2) Certified priority document (if priority right is claimed);

3) Assignment (if the applicant in China is different from that of the priority application); and


For national phase of PCT application

1) The PCT Publication number, or description, claims, abstract, drawings, if such documents have not been published by the International Bureau;

2) Amendments under Art.19, 34 and Art.28/41 of the PCT, if any (if such amendments shall be basis for examination in China); and


Q2: How to effectively apply for a patent application in China?

For filing a patent application in China, the applicant can choose different routes including the direct applications, the applications on the basis of prior application(s) by claiming priority via Paris Convention or through PCT national stage. Foreign applicants most frequently choose later two routes for their Chinese filings. By claiming priority, one or more priorities can be combined together in the subsequent Chinese application. Partial priority is also possible, that is, in addition to the subject matter in earlier application(s), the subsequent application may include some new technical solutions. PCT route is generally recommended for the innovations of products or processes covering more potential markets with deferred cost investment. One thing worthy of notice is that the PCT route is not accessible for filing a patent application in Taiwan.

The time limit for filing Chinese application via Paris Convention is within 12 months from the priority date for invention or utility model, while within 6 months for design. For China national phase of PCT application (only for Invention or Utility Model), it is within 30-month or 32-month taking the two-month grace period by paying additional fees from the priority date. All application documents filed with the State Intellectual Property Office (SIPO) must be in Chinese at the time of filing. Only in the situation of filing a PCT international application with the SIPO as Receiving Office, the language can be Chinese or English.

Foreign applicants need to entrust a loca l agency to f i l e the patent applications. The documents necessary for the filing include


Utility Model and Design

The annuity occurs at the time when the patent right is granted and the years after.

Reexamination before PRB

The following flow chat illustrates the re-examination procedure after the decision of rejection is issued.

The State Intellectual Property Office (SIPO) sets up the Patent Office and the Patent Re-examination Board (PRB), being responsible for patent granting and re-examination/invalidation respectively.

Granting Procedure before the Patent office

Invention

Q3: What is the whole examination proceeding in the SIPO?


Q4: How to use the opportunities for making voluntary amendments and divisional applications?

T h e t i m i n g f o r v o l u n t a r y amendments of invention applications by the applicant after filing date is limited. There are two opportunities, one is at the time of filing the request for substantive examination and the other is within three months from the date of receipt of the notice of Entering into substantive examination procedure. The applicant may make full use of the opportunities for improving the claim scope intended to be protected. It can be quite flexible for making amendments to the claims, e.g., submitting a new set of claims, adding new claims, broadening the scope of independent claims and so on. The basic principle need to obey is that such amendments would not result in any new matter and could be supported by the description. According to the local practice, after receiving an Office Action, the applicant may only make amendments subject to the examiner’s

consent or examiner’s requirements, unless such amendments facilitate the prosecution of the application.

Filing divisional applications at the applicant’s own initiative can also be used as a strategy for improving protection of the innovations. A set of claims in the divisional application may not be limited to the scope of original claims in the parent application, it can be derived from the contents recited in the description. In general, the timing for filing a divisional application shall be allowable while the parent application is pending, and the latest time shall be within 2 months from the date of receipt of the notification to grant the patent right. According to local practice, it is also allowable to file a divisional application within three months from the date that the applicant receives the Decision on Rejection issued on the

The reexamination procedure usually takes 12-14 months from filing the request to receiving a Decision of Reexamination. Under the local statutes, if the applicant is not satisfied with the conclusion or comments in the Decision, he or it may institute legal proceedings in the Beijing IP Court within three months from the date of receipt of the Decision.


ISA) or the positive Written Opinion of International Preliminary Examination Authority (WO/IPEA) or International Preliminary Examination Report (IPER), indicating that at least one claim in the PCT application is patentable/allowable (from the aspect of novelty, inventive steps and industrial applicability), the applicant may request the OSF to accelerate examination during the corresponding national/regional phase. It should be noted that the ISA/IPEA which issues the WO/ISA, WO/IPEA and the IPER is limited to the OFF.

Until now, the SIPO has reached bilateral arrangements with 19 offices of other countries for the PPH: Japan, United States, Germany, Korea, Russia, Denmark, Finland, Mexico, Austria, Poland, Singapore, Canada, Portugal, Spain, Sweden, United Kingdom, Iceland, Israel and Hungary. In September 2013, the world’s five largest Intellectual Property Offices (USPTO, EPO, JPO, KIPO and SIPO) jointly agreed to launch a comprehensive IP5 PPH pilot

program called “IP5 PPH”, to improve the acceleration of patent applications before the offices. IP5 PPH turns the bilateral agreements to one multilateral agreement, which provides for the sharing of the search and/or examination results among the five offices, which is convenient and resource saving.

Taking the advantages of PPH, it needs to keep in mind that the accelerating procedure upon request shall be proceeded upon approval by the SIPO after being subjected to formality check. In practice, the formality requirements are quite strict and the following can be useful for understanding the key points.

1. Before a PPH request may be filed with SIPO, the patent application must have been granted, or at least, must have received a positive search report or examination report from the OFF. And all claims in the SIPO application, as originally filed or as amended, must sufficiently correspond to one or more of those claims determined/indicated

parent application, regardless of whether the applicant requests for reexamination or not. A divisional application can even be filed during administrative litigation against the reexamination decision. It is worth noticing that the status of aforesaid parent application refers to the

earliest one of the patent family. If the timing of the earliest patent application expires, there will be no opportunity to file any divisional application. However, filing a divisional application upon examiner’s request is excluded from the above limitations.

Q5: Is there any way for accelerating granting procedure?

The Patent Prosecution Highway (hereinafter referred to as PPH) is a framework by the agreements reached between patent offices of different countries. Under such framework, the claims of an application which have already been determined to be patentable by the Office of a first country (hereinafter referred to as the “Office of First Filing” or OFF) is eligible to go through an accelerated examination procedure, when it is filed in the Office of a second country (hereinafter referred to as the “Office of Second Filing” or OSF), upon the applicant’s request.

Judging from the basic framework, the PPH can be d iv ided into the Conventional PPH (also known as Common PPH) and PCT-PPH. With respect to the Conventional PPH, the application (either via Paris Convention or PCT national phase) filed in the OSF may use the national work products from the OFF to accelerate examination. As for the PCT-PPH: when an applicant receives, from the International Search Authority or International Preliminary Examination Authority (ISA/IPEA), the pos i t ive Wri t ten Opin ion o f International Search Authority (WO/


Q6: How to handle the innovations from China R&D center or subsidiary of multinational companies?

For the innovations from China R&D center or subsidiary (employer), one issue is the ownership, i.e., who has the right to apply for and own a patent. The Chinese Patent law stipulates some provisions relating to employee’s inventions. For innovations made in duty by employees, the right to apply for and own a patent belongs to the employer. For innovations made mainly by using physical and technical means of the employer, such a right in general belongs to the employer, but in this situation, the agreement on ownership between the employee and the employer shall prevail.

Another issue is the reward and remuneration for the above defined employee’s inventions. In the recent years, the SIPO is making effort to enhance the protection of inventor’s right., which is reflected in the two versions of “Draft of Regulations on Service Invention” published in 2012

and 2014, making the remuneration of employee’s invention a hot topic and attracting a lot of comments and disputes. In addition, the Shanghai Higher People ’ s Court i ssued the Guideline of Hearing Disputes regarding Reward and Remuneration for Inventor/Designer of Service Invention in 2013, which also drew the public’s attentions.

However, til l the present, the above draft Regulations by the SIPO has not been approved yet. In the current practice, the reward and the remuneration of employee’s invention is governed under the Implementing Regulations of the Patent Law. The basic principle is “agreement shall prevail”. The employer can sign a contract with the employee or introduce a company policy for the reward and remuneration in advance. If there is no contract or company pol icy, the s tatutory compensation shall apply, in which the

to be patentable/allowable in the OFF/the WO/ISA, WO/IPEA or IPER of the corresponding application. The wording “sufficiently correspond” means, accounting for differences due to translations and claim format, the Chinese claims in the SIPO are of the same or similar scope as the claims in the OFF, or narrower in scope than the claims in the OFF.

2. The Chinese application with e lectronic f i l ing must have been published and entered into substantive e x a m i n a t i o n s t a g e . I t i s u s u a l l y suggested that after the application is published, the applicant should file a request for substantive examination and simultaneously PPH. The applicant can take the opportunity to make voluntary amendments so tha t “ su f f i c ient ly correspond” of the two sets of claims

(OFF and SIPO) can be satisfied. There are only two chances to file a request for PPH for one application and any minor defect may lead to the failure of the PPH request. Therefore, in order to make sure that a PPH request is processed smoothly, it is advisable for the applicant to be well prepared in advance.

3. Ever since 2012, our firm has helped our clients to request for PPH for 200-plus applications, with a passing rate of over 80%. The majority of applicants come from such IP developed countries like US, Japan, Korea and Germany. For each application with request for PPH, once SIPO issues the first Office Action, our agent will pay close attention to the examination procedure so that the application may be granted quickly and smoothly.


Q7: In what situation that Confidentiality Examination shall be necessary?

Under the local patent practice, for innovations made in mainland China, if the applicant intends to file an application of such innovations with other Patent Offices (before or after filing a CN application), it or he shall file a request for confidentiality examination with the SIPO. In general principle, the aforesaid innovations refer to the substantive contents of the technical solution of an application for invention or utility model have been made within the territory of mainland China.

After the application passes the conf ident ia l i ty examinat ion , the applicant may file it with other Patent Offices outside China. In general, there are three ways of filing the request for confidentiality examination.

1) If one of the applicants is Chinese or has a habitual residence or business office in China, the applicant can file

a PCT international patent application with the SIPO (as the Receiving Office). Under this circumstance, it shall be deemed to have filed a request for confidentiality examination with no need of a separate request.

The receipt of the Form PCT/RO/105 means that the confidentiality examination has been gone through. It usually takes about 3-4 weeks.

2) If the applicant intends to file an application for patent directly with a Patent Office aboard, it or he shall file the request for confidentiality e x a m i n a t i o n i n c l u d i n g d e t a i l e d description of the technical solutions, with the SIPO in advance.

The foreign filing license can be obtained within one month, if the technical solution obviously does not need to be kept secret.

reward is no less than RMB 3000 or RMB 1000 (depending on the type of patent), and the amount of a yearly remuneration is 2% and 0.2% of the profits derived from the exploitation of the invention (depending on the type of patent) or 10% of licensing fee.

For the employer, it is recommended to sign a contract in advance or stipulate a company policy directing to issues of ownership as well as the remuneration in order to avoid the risk of future disputes. Beside the statutory compensation, there is no rules for the minimum amount of compensation in the situation of reaching agreement or stipulating company policy. The employer may consider the general situation of its industry and different factors to set up the remuneration policy. Important aspect lies in that the relevant terms in the agreement or company policy shall not be obviously unfair or unreasonable to the employee inventors.

The third issue is transfer of the

technologies or patents of China R&D center or subsidiary to its relevant company aboard. In addition to the transferring contract between the two parties, it shall meet relevant Chinese laws, including the Foreign Trade Law and the Regulations of the People's Republic of China on Technology Import and Export Administration, and Chinese patent law.

For the innovations derived from China R&D Center or subsidiary, there are different routes to file patent applications, including: (i) filing a patent application in China first, and then claiming the priority and filing in other countries, (ii) filing a patent application directly in foreign countries, and (iii) filing a PCT application before the SIPO (as the Receiving Office). There is a provision in the Patent Law that the inventions, made in the territory of mainland China, shall be subjected to confidentiality examination, if they need to file aboard. Relevant information can be found in the following Q7.


3 ) I f t h e a p p l i c a n t f i l e s a n application for patent with the SIPO first, it or he can file a request for confidentiality examination with the SIPO at any time before filing aboard.

If the applicant files the request for confidentiality examination at the time of filing the application, the foreign filing license can be obtained in 1-3 working days except that the technology needs to be kept secret.

For both (2) and (3), if a conclusion cannot be made based on a preliminary conf ident ia l i ty examinat ion , the examiner shall issue a Notification of Confidentiality Examination. After further examination, the examiner shall

issue the Decision of Confidentiality Examination. If the applicant has not rece ived the Not i f i ca t ion o f Confidentiality Examination within four months , o r the Dec i s ion o f Confidentiality Examination within six months, from the filing date of the request, the applicant can file a patent application in respect of the technical solutions abroad.

A t t e n t i o n m u s t b e p a i d t h a t violation of confidentiality examination provisions shall result in no Chinese patent right, and even if it has been granted, it can be invalidated on such grounds.


Patent Prosecution Practice in China3PART

Patent Prosecution Practice in China ● 33Essentials for Patent Applications in China ● 32

1) Method of pathological anatomy practiced on a dead human or animal body,

2 ) T h e i m m e d i a t e p u r p o s e only to obtain information from the living human or animal body as an intermediate result rather than to obtain the diagnostic result or health condition, or method of processing such information (e.g., physique and body parameters, physiological parameters, or other parameters), or

3) The immediate purpose is only to treat or test the body tissues, body fluids, or excrements that have been removed from the human or animal body in order to obtain information as an intermediate r e su l t r a ther than to ob ta in the diagnostic result or health condition, or method of processing such information.

As for the above items 2) and 3), only if the obtained information per se cannot immediately reach the diagnostic result of a disease and health condition, can the information be regarded as an

intermediate result.

Particularly, a method of processing medical parameters does not belong to diagnostic methods if the immediate purpose thereof is not to obtain the diagnostic result or health condition. For example, a method of calibrating pressure value for increasing the accuracy of electronic sphygmomanometer, or an imaging method, the immediate purpose of which is to improve the image-forming condition or increase the imaging quality (including eliminating noise and constructed defect, increasing image contrast and resolution, etc.) so as to obtain an improved image and process it.

In the situation that a method has a possibility of being used for diagnosis or treatment of diseases and such a method can be used for non-diagnosis or treatment purpose, a disclaimer may be introduced in a claim to limit the method by “non-diagnosis or treatment purpose”.

Eligible Subject Matters for Patent Protection

Q1: What are the criterions for judging that a method belongs to diagnostic methods of diseases?

If a method involving diagnosis of a disease meets the following conditions, it shall be deemed to be a diagnostic method:

1) It is practiced on a living human or animal body, and

2) Its immediate purpose is to obtain the diagnostic result of a disease or health condition.

The following are examples of diagnostic methods excluded from patent protection:

X-ray diagnostic method, ultrasonic diagnostic method, gastrointestinal r a d i o g r a p h y d i a g n o s t i c m e t h o d , endoscopy diagnostic method, isotope

tracing diagnostic method, infrared noninvasive diagnostic method, method of evaluating the risk of suffering from diseases, method of predicting the therapeutic efficacy for diseases, and gene screening diagnostic method.

To avoid rejection as a diagnostic method, for some inventions, it may be feasible to redraft them as a Swiss-type claims, for example, a substance or material in the manufacture of a kit or agent for the diagnosis of a disease. Alternatively, the applicant may argue that the immediate purpose of the method is not to obtain the diagnostic result of a disease or health condition. The following are examples which do not belong to diagnostic methods:


Q3: In the field of biotechnology, what types of subject matters are excluded from patent protection?

The following are examples of the subject matters that are excluded from patent protection:

1) Invention-creations contrary to social morality, for example, an artificial sexual organ or its substitute not for medical use, a process for modifying the germ line genetic identity of human beings or a human being thus modified, a process for cloning human beings or a cloned human being, use of human embryos for industrial or commercial purposes;

2) Embryonic stem cell of human beings;

3) Human body at the various stages of its formation and development, including a germ cell, an oosperm, an embryo and an entire human body;

4) Inventions-creations where acquisition or use of the genetic resources, on which the development of the invention-creation relies, is not consistent with the provisions of the Chinese laws and administrative regulations,

5) A microorganism existing in the nature without the involvement of any artificially induced technical treatment,

6) A gene or DNA fragment found in the nature and existing in its nature state, and

7) Animal and plant varieties, for example, an embryonic stem cell of an animal, an animal at the various stages of its formation and development, such as a germ cell, an oosperm, and an embryo; a single plant and its reproductive material (such as seed); a transgenic animal or plant, such as a transgenic seed; or a seed

Q2: What are the criterions for judging that a method belongs to methods for treatment of diseases?

I f a method serves treatment purpose or is of treatment nature, it belongs to methods for treatment of diseases. In patent practice, a method of treatment for a disease may often be redrafted as a Swiss-type claim which can be allowable, for example, expressed in the format of ”Use of a compound or composition in the manufacture of medicament for the treatment of a disease”. Please be advised that a product having the second medical use cannot be protected in a form of a product claim.

The following are some exceptions which can be eligible subject matters:

1) Methods of treating dead human or animal bodies, such as methods of anatomy, beautification, antisepsis, or making specimen,

2) Methods of purely cosmetic

nature which are no invasive to human body or do not produce wounds , including methods of deodorization, protection, decoration or beautification for non-treatment purpose practiced partially on such directly visible parts as skin, hair, nail, and teeth externals; for example, a cosmetic method for preventing the skin from tanning, comprising the use of a sun screener,

3) Methods for making a human or animal not in a morbid state feel comfortable or pleased, or methods for supplying oxygen, negative oxygen ions, or moisture under a special condition such as for diving or for shielding from toxic gas; and

4) Methods of killing bacteria, viruses, lice, or fleas on a human or animal body (on the skin or in the hair, excluding wounds and infected sites.


Q4: Business method - eligible subject matter or not?

In the most recent change of the Guidelines for Examination, a business method can be an eligible subject matter provided that it includes technical features therein. In other words , combination of a business method with technical feature(s) in one technical solution of a claim is important for making it patentable.

Example

A method in relation to a trading interactive system may be patentable through a solution of combining both business model and technical features together. Such a solution can realize the purpose of the invention for customers to complete a trade by a POS terminal and a POS platform by a Mobile terminal.

Claims

A method for trading, characterized in that it includes:

1) A POS terminal reading card information from a trade card,

2) The POS terminal sending the card information to a Mobile terminal X which creates a communication with the POS terminal, and the Mobile terminal X further sending the information to a POS sever platform, and receiving a verification result returned from the POS platform by the Mobile terminal X; upon passing the verification, then performing step C,

3) The POS terminal sending the trade information received to the Mobile terminal X, and the Mobile terminal X further sending the information to the POS sever platform, completing the trade, and receiving a trade result from the POS platform by the Mobile terminal X.

treated by a pesticide.

T o m a k e t h e s u b j e c t m a t t e r patentable, (1) as to inventions-creations relying on genetic resources , the applicant should indicate the direct and original source of such genetic resources in the application documents, and if necessary, submit evidence proving that the acquisition of the genetic resources is consistent with the provisions of the Chinese laws and administrative regulations; (2) as to microorganism, if it is isolated from pure culture and has particular industrial use, it constitutes a

patentable subject matter; and (3) as to gene or DNA fragment, if it is isolated or extracted for the first time from the nature, its base sequence is unknown in the prior art and can be definitely characterized with industrial application, it constitutes a patentable subject matter. In addition, a somatic cell, a tissue and an organ of an animal (except an embryo) do not belong to ineligible subject matters; and if a cell, a tissue and an organ of a plant cannot differentiate and develop into an entire plant, they do not belong to ineligible subject matters.


Q5: Computer program - eligible subject matter or not?

Though computer languages and computer programs per se as rules and methods for metal activities cannot be granted a patent right, an invention relating to computer program may be patentable if the invention satisfies relevant drafting requirement e.g., claiming for a device which includes the improvement of the software, the combination of hardware and software (including expressed in a way of ‘media + computer program flow’). As for an invention of method relating to computer program, it needs to be drafted in the way of program modules in claims.

Example 1

For the so lu t ion o f ‘med ia + computer program flow’, the claim can be drafted in the form of the followings:

1) ‘A computer readable storage media, wherein a computer program ( i n s t r u c t i o n s ) s t o r e d t h e r e o n , characterized in that the computer

program (instruction) performed by a processor realizes the following steps……’,

Or

2) ‘A computer readable storage media, wherein a computer program ( i n s t r u c t i o n s ) s t o r e d t h e r e o n , characterized in that the computer program (instruction) performed by a processor realizes the steps of said method as mentioned in claim X’.

Example 2

Existing mobile computing devices, e . g . , portable computer , mobile telephone, etc. , usually use small-storage-capacity flash memory card as storage medium due to its size and the requirement of portability, hence, the mobile computing devices cannot process multimedia data which need large storage capacity due to storage capacity limits, and multimedia technology

Comments

This solution relates to the field of payoff by means of E-commerce, and specifically refers to a method for completing a trade by POS trading system. Although the subject matter of ‘method for trading’ refers to a business model, its solution comprises a series of technical features, such as ‘a POS terminal reading card information’, ‘a Mobile terminal X

creates a communication with the POS terminal’, and ‘interaction of the Mobile terminal and the POS platform’. By using the technical means, the business model can make the trade to succeed, so as to improve the user experience, thus it cannot be excluded from patent protection. It is still worth noticing that a pure business method as rules and methods for mental activities cannot be granted a patent right.


Specific Issues in the Fields of Chemicals, Bio-technology, and Pharmaceuticals

Q6: Can a set of relevant inventions be included in one application?

According to the local practice, it is allowable to put some relevant inventions in the same patent application if satisfying the unity requirements. In general, a product, its preparation method, use of the product, and the apparatus specifically used for preparing the product can be included in one application.

Specifically, for a set of different compounds, it can be included in one application, with the proviso that they meet the following standards:

(1) All alternative compounds possess a common property or activity;

and

(2) All alternative compounds possess a common structure, which constitutes the distinguishing feature between the compounds and those in the prior art, and is essential to the common property of activity of the compounds of general formula ; or under the circumstances that they do not have a common structure, all of the alternative elements belong to the same class of compounds recognized in the technical field to which the invention pertains.

The above principle may also be applicable for the relevant inventions of

cannot be applied in mobile computing devices. The invention provides a method of enlarging storage capacity of mobile computing devices using virtual device file systems, so that mobile computing devices can use large storage space on servers for local applications.

Claims

A method for enlarging storage capacity of mobile computing devices us ing v i r tua l device f i le sys tems characterized in that it includes the following steps:

1) building up a virtual device file system module on a mobile computing device, and hanging it on the operating systems of the mobile device,

2) providing virtual storage space to applications on the mobile computing device through the virtual device file system module, and sending read/write request on the virtual storage space to the remote server through network,

3) converting read/write request from the mobile computing device to read/write request on local storage devices on the remote server, and

4) sending read/write result back to the mobile computing device through network.

Comments

The technical problem solved is how to increase effective storage capacity of mobile computing devices, e. g., portable computers. It is solved by the method of internal operating performance of mobile computing devices with improvement through execution of computer programs. Therefore, what it reflects is to build up virtual storage space on local computers through virtual device file system module and convert access to local storage devices into access to storage devices on servers. Such a method includes the technical means and brings the technical effect, which makes the invention patentable.


Q7: Which technical information should be included in the description?

(1) As for the invent ion of a chemical product

The description should describe the identification, preparation and use of the chemical product.

I f the chemica l p roduc t i s a compound, said identification includes its chemical name and chemical structure by which those skilled in the art can identify the compound. Chemical/physical property parameters which are necessary for the identification of the compound should also be described in the description (for example, molecular weight and the distribution of molecular weight o f a po lymer) . When the compounds are of a general formula, at least several specific compounds in the scope defined by such a formula shall meet the aforesaid requirements.

I f the chemica l p roduc t i s a

composition, besides its components, the description should describe the chemical and/or physical state of each component, the selection of each component, the range of content of each component and its effect on the property of the composition.

At least one preparation method of the chemical product should be described, including the raw materials, procedures and conditions. A specially adapted equipment if used for carrying out the method should also be indicated.

Usage and/or use effect of the chemical product should be disclosed. For a new pharmaceutical compound or pharmaceutical composition, not only its specific medical use or pharmacological action, but also its effective amount and the method for using it need to be described.

compositions.

As for an intermediate and a final product, they need to meet the following two conditions for combining in one application.

(1) The intermediate and the final product have the same basic structure unit, or their chemical structures are technically closely related, and the basic structure unit of the intermediate is

incorporated into the final product;

(2) The final product is prepared or separated directly from the intermediate.

As to several processes for preparing the same f ina l product f rom the different intermediates, if these different intermediates possess the same basic structure unit, these processes may be claimed in one application.


Q8: How to obtain relatively broad scope of claim protection?

Claims are generalized from the description, and often, from one or more embodiments or examples as set forth in the description. If those skilled in the art can reasonably predict that all the equivalents or obvious variants of the embodiments would have the same properties or uses, it is allowed to generalize the claim to cover all the equivalents or obvious variants. Thus, to obtain relatively broad scope, it is recommended that features mentioned in the claims, especial ly those in independent claims, be described in detail and provided with sufficient options.

Chemistry is an experimental science, and most inventions in this field need to be verified by experimentation. Thus, it is generally required that the description may include some examples as well as experimental data when

necessary. The number of examples may be determined in accordance with the nature of the invention, the specific technical field, the state of the prior art, and the claimed scope of protection. The description may give only one example if the example is sufficient to support the claims, however, for a board scope of protection of the claim, more than one examples may be needed.

Where the improvement involves a numerical range, the description shall usually give examples for the values near the both ends (preferably the both end values), and, where the range is broad, at least one example for an intermediate value. As for a claim of compounds with a general formula, whether it can be supported by the description is generally examined based on the preparation examples and working examples

(2) As for the invent ion of a chemical process

Regardless of a process for preparing a substance or any other process, the raw materials, procedures and processing conditions adopted in the process may also need to be described. Where necessary, the effect of the process on the property of the aimed substance should be described so as to enable those skilled in the art can solve the problem the invention intends to solve.

(3) As for the invention of use of a chemical product

The description should describe the

chemical product to be used, the method for using the product and the effect to be achieved. As for a new use of a known compound, experimental evidence may generally be required to validate the new use and effects thereof.

In addition, concerning the above (1)-(3), as for property parameter to show the result of the invention, the method used to measure it needs to be specified when various measuring methods in the prior art yield different results. If it is a specific method, it shall be explained to enable those skilled in the art to carry it out.


different preferable values of the groups be described in the description for suitable amendments in response to the examiner’s objections.

Example B

A synerg i s t ic compos i t ion as claimed comprising component A and component B is claimed. It defines that component A is a known compound A1, and component B can be selected from known compounds B1, B2, B3 or B4. The examples only show a composition comprising A1 and B1 and a composition comprising A1 and B2.

Comment

Compositions in which component B is compound B1 or B2 in the claim are supported by the description. As synergistic effect could be unpredictable, for compound B3 and B4, the related embodiments to prove such effect might be necessary for supporting the whole claim. In this situation, other factors or evidence need also be considered, such as similarity of B1, B2, B3 and B4 or the mechanism of resulting in synergistic effect. Lack of examples for compound B3 and B4 might result in narrowed scope of the claimed invention.

If a new compound is claimed, it is generally allowed to claim its salt though not exemplified in examples, with the proviso that the compound is supported by the description and there is no reason to doubt the formation of the salt or the same effect as the compound. On the contrary, it would be not be easy for solvate, prodrug, metabolite, and other compounding form (such as ester or N-oxide) of the compound to be considered as being supported by the description without their working examples. If a crystal form of a compound is claimed, it generally shall refer to the crystal form proven as having been prepared in the description.

To obtain a relatively broad scope of the claims, it is recommended that the description sufficiently provide examples or data when necessary to the extent that those skilled in the art can be convinced of the claimed effect of the invention. Also, evidence of the background technology can be used in

support of the generalized scope of the claimed invention.

Example A

The compounds of a general formula are claimed, which define group G in the general formula as “alkyl, alkoxy or aryl”. In the examples, group G is exemplified as methyl and phenyl.

Comment

Since “alkoxy” is not exemplified in the examples, it would generally be questioned as lacking support by the description. Moreover, alkyl and aryl are each exemplified by only one specific group, restriction by proper number of carbon atoms in the claim might be required, depending on the application case. In the event that the description failed to recite a suitable subclass of alkyl and aryl, the limited examples might lead the protection of group G narrowed. It is recommended that the


Q10: What features are excluded from Swiss type claims?

Swiss type claim is commonly used for protecting a second medical use of a known compound. However, it cannot be understood as directly protecting a method of us ing the compound for treating disease. Accordingly, examination of this type of claim is conducted on the use itself, without consideration of the process of treating diseases. As for a Swiss type claim comprising features relating to using method, such as the object, mode, route, usage amount, and interval of administration, such features may not necessarily be deemed as defining the

pharmaceutical use per se.

In particular, dosage regimen are generally closely related to the doctor’s treatment plan, but not necessarily re lated to the preparat ion of the medicine itself. Thus, the difference merely present in dosage regimen might not enable the claim to be patentable. Nevertheless, if difference in administration led to difference in the use, such as in the form of the medicine, the difference might render the claim patentable.

Q9: How to use supplementary data after the filing date?

I n t h e p r e v i o u s p r a c t i c e , supplementary data after the filing date cannot be used for supporting sufficient disclosure of an invention if the examiner raises objections in this regard. Supplementary data are mostly used for proving inventiveness of the claimed invention. By such experimental data, advantageous effect achieved by the invention over the closest prior art, which may be difficult to determine without relevant comparison, can be clearly demonstrated. In the most recent change of the Guidelines for Examination, a door opens for the post-filing data in the situation of insufficient disclosure of the description in a patent application.

Thus, with respect to the issues of insufficient disclosure, claim support and/or inventiveness of the claimed invention, filing supplementary data may

be used as a way to obviate the related objections raised by the examiner. For the issue of insufficient disclosure, the examiner should examine the supplementary data provided after the filing date instead of absolute rejection as the previous practice. Attention needs to be paid that the substantive standards of sufficient disclosure have not been changed, and the examiner still needs to look at original disclosure in relation with the supplemented data to make judgment. As for the supplementary data for the issues of claim support and inventiveness, no change is involved in the new rule of the Guidelines.

Nevertheless, making use of filing supplementary data, it is required that the technical effect proven by them can be obtainable by those skilled in the art in relation with and on the basis of the disclosure of the original application.


Designs for the Protection of Products

Q12: Can GUI be eligible for design protection in China?

“GUI” is the abbreviation of “Graphic User Interface”. It is a type of interface that allows user to interact with electronic devices through graphical icons and visual indicators. GUI can be protected in China since May 1, 2014 in the form of GUI embodied in articles/products. The following illustrates GUI protection.

-Product with GUI of an operation system

(Mobile Phone with GUI)

Q11: How to protect nucleotide /amino sequence?

As for nucleotide/amino sequence, it is generally considered that difference in nucleotide sequence may lead to change or loss of function of the nucleotide molecule, and small change of amino sequence may lead to great change of its spatial configuration, and in turn lead to change of its function. Thus, based on an exemplified sequence, it would be difficult to expect that another sequence having high homology with

the exemplified sequence could also have the same function. In practice, the claimed sequences having even very high homology with those exemplified in examples may also be considered as lacking support by the description. Therefore, to get relatively broad scope of sequences to be protected may, it is recommended that more sequences may be exemplified in the examples in the application.


- Special-purpose equipment with GUI

(Patient Monitor with GUI)

Q13: Should a design patent in China bear absolute novelty?

The design patent in China requires absolute novelty since October 1, 2009, in this regard, prior design disclosed worldwide can be used to challenge novelty of the design patent. This requirement is applied to Chinese design applications filed after October 1, 2009

or having priority dates later than October 1, 2009. The design for which patent right may be granted shall not be identical, or substantially identical with prior design, and shall be significantly differ from prior design or combination of prior design features.

-Product with GUI of software

(Mobile Phone with GUI)

-Product with GUI of Web App

(Computer with GUI)


It is the same case for multiple designs in one application of “products in set”. The protection scope for “products in set” shall be understood that every design in the “products in set” should be deemed as an independent product. In this case, an accused product will be found infringing as long as it is identical or similar with either one of the designs

in the patent.

It needs to be noted, there is another form of design, i.e., the “component product” which is under protection as a whole. Thus, the accused product will only be found infringing if it reproduces each and every design of the patent.

Q14: Can pure pattern be protected by design patent in China?

Q15: Can multiple designs be filed in one Chinese application? Whether designs for the same product filed in one application can be enforced individually?

A design to be protected in China shall be the design of a product. Designs in classification 32-00 (i.e. decorative patterns) are rarely accepted by the

SIPO. It is the product incorporating the patterns that can be protected as a design patent in China.

Multiple designs may be filed in one application if these designs are:

- two or more similar designs for the same product; or

- two or more designs which are incorporated in products belonging to the same class and sold or used in sets (for example, a coffee set consisting of coffee cup, coffee pot, milk pot and sugar pot).

To include more similar designs

in one design application will help the applicant to obtain a broader protection scope. Each design in one application can be enforced individually. As long as the potential infringer infringes one of the embodiments, the patentee can sue this infringer. More similar designs will make it more difficult for potential infringers to design around in order to avoid infringement, but similar designs in one design application should not exceed 10.


Q17: Is there any opportunity to amend claims/description and submit new evidence?

The application may be amended at the time of submitting the request for reexamination, responding to Notification of Reexamination, or oral proceedings. Submission of observations and/or new evidence can a l so be allowable.

For the amendments, the basic principle is no introduction of new matters. There is some limitations for the claim amendments as follows:

1) where a claim amended extends the scope of protection as compared with the claim rejected in the decision of rejection,

2) where a claim in the amendment is derived from the technical solution that lacks unity with the claims rejected in the decision of rejection,

3) where the type of a claim is altered, or the number of claims is increased, or

4) where the amendments are directed to the claims or the description that were not involved in the decision of rejection, unless they are intended merely to correct obvious clerical errors or to amend the defects of the same nature with that indicated in the decision of rejection.

Reexamination FocusQ16: In what situation a request for reexamination be submitted?

Upon receipt of a decis ion of rejection made by the examiner, within three months from the date of receipt of the decision, the applicant may request the Patent Reexamination Board (PRB) to make a reexamination. Such a case shall be examined by a panel consisting of three or five members (usually three) if interlocutory examination made by the previous examiner finds the request

fails to address the rejections. After reexamination, the PRB shall make a decision of revoking or upholding the decis ion of re ject ion. During reexamination, oral hearing can be available upon request by the applicant and approval of the panel, or the panel decides to have an oral hearing. In actual practice, oral hearing seldom occurs in reexamination proceeding.

Essentials for Patent Applications in China ● 58

Q18: How many times would the panel issue a reexamination notification? What may trigger termination of the reexamination procedure?

In most of the cases, the panel issues a reexamination notification only once if it intends to have a negative opinion toward the case. In a few rare cases, it is issued twice or more. Therefore, it is important to prepare very carefully the observations and/or evidence or make claim amendment upon receipt of such a notification to avoid final rejection by the PRB.

The reexamination procedure is terminated in the following cases:

1 ) w h e r e t h e r e q u e s t f o r reexamination is deemed withdrawn for lack of response within the time limit,

2 ) w h e r e t h e p e t i t i o n e r h a s withdrawn the request for reexamination before a reexamination decision is made, and

3) where the accepted request for reexamination is rejected due to inconformity with the requirements of acceptance.


Insight on Chinese Patent Practice4PART

Insight on Chinese Patent Practice ● 63Essentials for Patent Applications in China ● 62

Tip two: drafting a defense claim with more specific features as possible

According to the previous Chinese Guidelines for Patent Examination, patentees could amend claims of a patent during an invalidation proceeding only via three manners: claim combination, claim deletion and technical solution deletion, and were NOT allowed to freely choose features of the claims of the patent into a claim.

In light of the latest amendments to the Guidelines for Patent Examination, patentees can be relatively flexible to amend claims of a patent during an invalidation proceeding by adding one feature or more of all the claims to form a new claim, provided that the amended claim meets other legal requirements such as “being NOT beyond the original scope as recorded in the originally filed specification and claims” and the like. Still, it is NOT allowed to add features from the description (but not

in the claims) during an invalidation proceeding.

Thus, in order to better defend the validity of a patent, it may be a good way to draft a defense claim to recite more specific features so that one or more of the specific features may be added into a claim during an invalidation proceeding to enhance the stability of the patent.

Tip three: drafting a product claim without process features as possible

A c c o r d i n g t o t h e J u d i c i a l Interpretation issued by the Supreme People’s Court of China, a patent infringement conclusion based on a patent claim against an accused product can be established only when the accused product contains features identical with or equivalent to the recited features of the claim, respectively.

Generally it is relatively easy to obtain infringing evidence on structure

Tips on patent claim drafting from the perspective of patent invalidation and lawsuit

Tip one: drafting claims to cover more direct infringers as possible

A l t h o u g h t h e l a t e s t j u d i c i a l interpretation issued by the Supreme People’s Court of China in 2016 firstly touched and regulated two indirect infringement principles: inducing i n f r i n g e m e n t a n d c o n t r i b u t i o n infr ingement pr inciples , the two principles basically may have the direct infringement precondition, and compared with the direct infringement principle, have additional requirements, e.g. infringer’s intended mind for direct infringement, which apparently increases patent owners’ evidence burden in patent enforcement.

In order to avoid the potential indirect infringements to the greatest extent, it may be a good way to avoid

using only system claims covering the subject matter carried out by different entities as possible. For example, when an invention refers to a system which, for example, includes several associated components that can be made separately, it is highly recommended to firstly value whether each of the components of the system can be patentable, and then use different patent applications or different groups of claims in a patent application to protect the components separately, in addition to claims to cover the system.

In this way, the above-mentioned system and component claims may cover more potential direct infringement acts than the only system claims, and the invention can be fully and well protected.


Rebutting objections to inventiveness

Since early 2015, patent examiners at the State Intellectual Property Office of China have been increasingly focusing on patentability issues, especially inventiveness. For instance, with respect to apparently broad claims, examiners used to raise objections that the claims were not supported by the description under article 26.4 of the Patent Law. N o w a d a y s , i n s i m i l a r s c e n a r i o s , examiners raise inventiveness objections under article 22.3 on the grounds that not all the technical solutions encompassed in the claims are inventive over the prior art.

Also, in ra is ing object ions to invent iveness , examiners usual ly emphasize obviousness of the claims. This trend poses new challenges to patent attorneys and applicants. To address inventiveness object ions ,

practitioners may consider using the following strategies.

Formulating arguments highlighting non-obviousness

I n r e b u t t i n g i n v e n t i v e n e s s objections, it is important that the arguments highlight the non-obviousness of the claims, in addition to the superior technical ef fects disclosed in the description. For instance, applicants may prove that the two or more references cited by the examiner are mutually exclusive in terms of working principles, and accordingly cannot remedy each other or be combined—a fact proving that the references would not prompt those skilled in the art to arrive at the claimed invention.

or component features of a claim because such features may be found in the product on the market, but very hard to get infringing evidence on process features of a claim because the process features are basically made in infringers’ factories or the l ike and are NOT available in the product on the market.

Thus, in order to facilitate patent enforcement, it is a good way to draft a product claim without any process features or the like when possible as all the features should be found in the

accused infringing product.

In addition, during the prosecution of a patent, arguments made to get the patent granted generally constitute estoppels which affect not only the scope of the patent but also the scope of the Chinese patent family of this patent. It is advised NOT to clarify or argue structure or component features of a claim based on process features to avoid construing the claim based on the process features during patent enforcement.


Amending the claims

If the above two strategies do not work for lack of prior art or further experimental data (as mentioned, examiners usually do not consider further experimental data intended to support the claims in terms of protection scope)—or because the line of argument based on the submitted prior art will negatively affect the claims in terms of patentability—applicants may consider narrowing the scope of the claims. This strategy applies especially to applications where examiners object that not all the

technical solutions encompassed in the claims are inventive over the prior art—in essence, such an objection amounts to the former objection that the claims were not supported by the description under article 26.4 of the Patent Law. By doing so, the claims are amended to include a technical solution which is inventive over the cited prior art.

Understandably, in view of the specific circumstances surrounding the claims, the above strategies may be used in combination.

Submitting prior art evidence or further experimental data

In support of inventiveness of the claims, applicants may consider submitting prior art evidence, provided t h a t t h e e v i d e n c e w o u l d n o t b e detrimental to the claims. For instance, if examiners raise inventiveness objections on the grounds that not all the technical solutions encompassed in the claims are inventive over the prior art, applicants may submit prior art showing that all the claimed embodiments are supported by the same theory and are expected to produce the intended technical effect, thus proving that all the claims cover embodiments that are inventive over the cited prior art.

In addition, applicants may consider submitting further experimental data to support the claims in terms of inventiveness. It must be noted that examiners usually do not consider

further experimental data intended to support the claims in terms of protection scope, and the data to be submitted is preferably collected by repeating the experiments disclosed in the applicant’s description with the technical solution of the prior art. For instance, in an application directed to a medicament, if the description recites an experiment where a medicament is used to treat a patient and produces an unexpected effect, such data are preferably collected by repeating the experiment with a medicament specifically disclosed in the cited prior art and is considered the closest to the claims.

It is expected that the medicament specifically disclosed in the cited prior art produces an effect inferior to that produced by the inventive medicament, thus proving the inventiveness of the claimed invention in an indirect and roundabout way.


In the reexamination decision, the panel of the Patent Reexamination Board states that if those skilled in the art , based on the descr ipt ion and the prior art, could perform the claimed technical solution, solve the corresponding technical solution and produce expected technical effect, then the description sufficiently discloses the invention. The panel notes that plant genetic transformation research has developed rapidly since a first transgenic plant was obtained in 1983 and the methods involved in producing an exogenous protein in a transgenic plant, including the design of DNA construct for transforming plant, the constructing method and the method for obtaining a transgenic plant, are conventional in the art and described in the specification of the patent application. The panel further notes that the examples of the application specifically describe the preparation of construct containing exogenous gene, transformation of plant cells with construct, screen of positive

transformant, and cultivation of a plant from positive transformant. On this basis, the panel concludes that based on the disclosure of the application and the prior art, the claimed invention can be carried out and can solve the technical problem intended to be solved.

The panel deems that the present invention has successfully obtained the transgenic plants based on the statement in the specification that the aloe plant in figure 1 is a transgenic plant in which a genetic construct has been stably integrated and expressed and the fact that there is no counterevidence. The panel also deems that those skilled in the art, based on the specification and the conventional technical means, could obtain a transgenic aloe with active exogenous protein in its leaf gel, now that the specification has recited that the expressed protein is secreted into the leaf gel of aloe plant and it is conventional technical means to use a signal peptide to direct protein translocation. The panel

Issue of insufficient disclosure in biotechnology: case study Case Brief

In Reexamination Decision No. 68977 (case No. 1F137820), a rejection of lacking sufficient disclosure is overturned by the PRB. The concerned patent application No. 200680043903.1 relates to a transgenic aloe plant for production of protein and the related method. In particular, claim 1 asks for a method for producing in a plant a protein exogenous to the plant, said method comprising:

prov id ing a t ransgenic p lant c o m p r i s i n g a r e c o m b i n a n t D N A construct comprising a promoter, a sequence encoding the exogenous protein, a termination sequence and a translocation sequence encoding a secretion signal peptide;

propagat ing the plant so that the exogenous protein from the DNA

construct becomes expressed; and

extracting the protein from the plant wherein the plant is aloe, the DNA construct contains a secretion signal peptide so that at least a portion of the exogenous protein becomes translocated into gel of the aloe leaves, and the exogenous protein is extracted in the leaf gel.

This appl icat ion was re jected for insuff icient disclosure during substantive examination on the grounds that the description failed to provide any experimental evidence showing that the aloe plant transformed by the vector or construct of this invention could be successfully obtained and stably expressed exogenous protein. A reexamination request was filed and finally a reexamination decision revoking the rejection decision was issued.


also confirms that a post-filing document showing that the exogenous protein is expressed in the aloe plant could support the sufficient disclosure.

Comments

In this case, although the specification of the application did not include examples directly showing that the transgenic aloe plant could be successfully prepared and stably expressed exogenous protein, the applicant utilizes the combination of the figures which show a photograph of the aloe plant and the prior art knowledge to successfully overcome the objection of

insufficient disclosure. Thus, when facing the objection of insufficient disclosure, if the description indeed failed to provide examples directly showing the effect of the invention, the applicant could try to find support from the whole application documents and the prior art knowledge. Posting-filing experimental data cannot be used as the only basis of proving sufficient disclosure, but can be submitted in support of arguments based on the disclosure of the application and the prior art.

The professionals of our firm have successfully represented the applicant to obtain its patent right for this application.

Patent Legislative Development in ChinaPART5

Patent Legislative Development in China ● 75Essentials for Patent Applications in China ● 74

“functional definition”. The amendments in this part reflect a tendency that the SIPO is becoming open to protecting computer program under the Patent Law.

The provisions about post-filing data (Chapter 10, Part II) are also amended. The current provisions that any embodiment and experimental data submitted after the filing date shall not be taken into consideration are deleted. Instead, a new section about post-filing data is introduced to specify that the examiner shall have to examine the experimental data submitted after the filing date, but the technical effect shown by the experimental data shall be obtainable based on the disclosure contained in the initial description and claims, from the viewpoint of a person skilled in the art. This amendment seems to be a sign that the SIPO has become more lenient to the applicant.

Regarding invalidation requests, Chapter 3, Part IV loosens the way to

amend a patent document, specifying that it is allowed to incorporate one or more technical features recited in other claims into a claim so as to limit the protection scope and that it is allowed to correct obvious errors in the claims. The provisions about the introduction of new invalidation grounds and new evidence are also amended to specify that new grounds concerning the claims that have been amended by incorporating technical features recited in other claims or by correcting obvious errors, shall be limited to responding to such amended contents. The provisions that the petitioner may present additional evidence within a specified time limit in response to amended claims by way of combination are deleted. As a result of such amendments, the patentee will stand in a more advantageous position in a patent invalidation procedure.

Regarding accessibility to patent application documents, Chapter 4, Part V broadens the scope of the contents accessible to the public. Anyone may

The new amendment to the Examination Guidelines effective as of April 1, 2017

On March 1 , 2017 , the S ta te Intellectual Property Office of China (SIPO) issued a decision to amend its Patent Examination Guidelines. The amendments took effect on April 1, 2017, involve provisions about business method, software- related inventions, post-filing data, invalidation procedure, accessibi l i ty of patent documents and suspension procedure, which are summarized below:

A notab le amendment i s the introduction of a provision concerning the protection of business models. A new paragraph is added in Chapter 1, Part II which concerns unpatentable invention creations. This new paragraph stipulates that a claim involving business models shall not be excluded from patent protection if, apart from the description

of the business rule and method, it includes technical features. This provision opens a door for protecting a business model under the Patent Law.

Several amendments are introduced in Chapter 9 , Part I I concerning invention patent appl icat ions for computer programs. They intend to clarify that a computer program per se is different from an invention relating to a computer program, and thus it is allowed to draft a claim directed to a media plus computer program flow. The amendments also clarify that a claim directed to an apparatus may include a program as a component part. The expression “function module” is replaced by “program module”, in order to better reflect the technical nature and distinguish clearly from the expression


The draft of 4th amendment of the Chinese Patent Law (still pending)

After publication of the 1st version of the Draft of the amended Patent Law for public comments on the SIPO website at the end of 2012, there have been a lot of discussions and the disputes focus on significantly strengthening the protection of patent right by way of administrative authorities as well as some other issues. Till the present, the Draft is in the status of pending. According to “the Legislative Plan of State Council

in 2017” issued on March 20, 2017, the Draft of amended Patent Law is planned to be submitted for deliberation within this year. In the latest version of the Draft there are substantive amendments in 33 articles, including 14 new articles, 18 amended articles and 1 deleted article. The main points of the amendments are described from 4 aspects as follows for the reference.

consult and photocopy notifications, search reports and decisions issued during the substantive examination procedure for a patent application under examination as well as the priority documents for a patent.

Chapter 7, Part V brings the Guide-lines for Examination in compliance with the new Civil Procedure Law, specifying that the Patent Office shall

suspend relevant procedures for the period indicated by a civil order or notification on assistance in execution issued by a people's court, in relation to property preservation.

Generally speaking, the amend-ments reflect an attitude of the SIPO to be more friendly to the applicants and patentees and to provide better service for the public.


of infringing act etc. The statutory compensation (when actual loss, profits of infringer or appropriate license fee cannot be determined) is increased up to more than RMB 100,000 and less than RMB 5,000,000 according to the draft. It is also newly provided that the court may order the infringer to provide account books and materials related to infringing act for determining the amount of compensation if the infringing act has been determined and the right holder has endeavored to submit evidence The court may determine an amount of compensation by reference to the claim of the right holder and the evidence provided by the right holder if the infringer refuses providing account books and materials or provides a false one .

In Article 62 (new), the draft introduces provisions about indirect infringement in the Patent Law for the first time. It is provided that any person shall undertake joint liability with the infringer if that person is fully aware

that a product is a raw material, an intermediate, a spare part or a device specially used for carrying out a patent and provides the product with others for carrying out infringing act for business purpose without the authorization of the patentee. It is also provided that any person shall undertake joint liability with the infringer if that person is fully aware that a product or process is a patented product or process and induces others to carry out act of infringing the patent for business purpose without the authorization of the patentee.

In art icle 63 (new), the draft introduces provisions about the liability of Internet service provider in the Patent Law for the first time. It is provided that an Internet service provider shall undertake joint liability with an Internet user if it knows or should know that the user infringes a patent or passes off a patent via Internet service it provides and does not take necessary actions like deletion, blocking or disconnection of the links of an infringing product. It is

1. Strengthening protection of the patent right

A c c o r d i n g t o A r t i c l e 6 0 , paragraph 3 (new) of the draft, the patent administration department may vo lunta r i ly inves t i ga te and prosecute willful infringements like collective infringement and repetitive infringement, order the infringer stopping the infringing act immediately, and confiscate the infringing products, and spare parts , tools , molds and devices that are specially prepared for manufacturing the infringing products or for using the infringing process. The patent administration department could impose a fine for collective infringement of not more than five times of illegal turnover if it is more than RMB 50,000, or not more than RMB 250,000 if the illegal turnover is less than RMB 50,000. Article 67, paragraph 1 (amended) of the draft stipulates that the patent administration department may investigate and collect evidence for the suspected act of infringing, like for

the suspected act of passing off a patent as provided in the current Patent Law. As for the fine for passing off a patent, the higher limit is increased up to RMB 250,000 if there is no illegal turnover according to Article 66 (amended) of the draft. According to Article 61 (new) of the draft, once mediation agreement about compensation for the damage caused by patent infringement is reached, a party may request the court for confirmation and compulsory execution of the agreement if the other party refuses fulfilling the agreement totally or in part.

T h e d r a f t a l s o p e r f e c t s t h e provisions about compensation for patent infringement in article 68 (amended). For willful infringement, it is newly provided that the court may determine an amount of compensation for the damage caused by the infringement within a range of one to three times of actual loss, profits of infringer or appropriate license fee according to the circumstances, scale and result of damage


license of right shall not be affected by the withdrawal. In Article 83 (new), it is provided that anyone may implement a patent under license of the right by sending a written notice to the patentee and paying license fee, and the patentee may not issue exclusive license or sole license and request a pre-judgment of temporary injunction for the patent during the period of license of the right. Article 84 (new) stipulates that a party may request patent administration department under the State Council to rule on a dispute about license of right and may appeal to the court if the party is not satisfied with the ruling of patent administration department.

In Article 85 (new), the draft stipulates implied license for standard essential patents. It is provided that a patentee involved in formulating a national standard shall be presumed to issue license for standard essential p a t e n t s i t / h e o w n s t o o t h e r s implementing the standard i f the

patentee fails to disclose the patents. The license fee may be determined by consultation of both parties or by ruling of patent administration department under the State Council and any party may appeal to the court if the party is not satisfied with the ruling.

It is stipulated in Article 81 (new) that an inventor or designer of a service invention-creation in a national research i n s t i t u t i o n o r a h i g h e r l e a r n i n g inst i tut ion may consult with the institution to implement the patent owned by the institution or issue a license for implementing the patent and enjoy corresponding rights and interests in accordance with the agreement.

It is provided in Article 86 (new) that pledger and pledgee shall attend to pledge registration with patent administration department if a patent is used for pledge and the pledge shall be effective on the date of registration.

also provided that an Internet service provider shall undertake joint liability with an Internet user for the further damage if it does not take the above necessary actions in time after receiving an appropriate notice of the patentee or any interested party or a notice from patent administration department.

The draft also specifies that patent administration department shall establish a patent protection credit information file and incorporate the file into the national credit information sharing and exchanging platform in Article 74 (new).

2. Enhancing protection of design patent

The draft notably enhances the protection of patented design. According to Article 2 (amended), a partial design is a patentable subject matter for the first time. The draft also specifies a domestic priority of six months for a design application filed in China for the first time in Article 29 (amended). The term

of design patent is extended to 15 years according to Article 42 (amended).

3. Promoting patent implemen-tation and exploration

T h e d r a f t i n t r o d u c e s s o m e new provisions to promote patent implementation and exploration.

In Articles 82-84, the draft stipulates license of patent right. According to Article 82 (new), a patentee may submit a written statement with patent administration department under the State Council to declare that anyone may be licensed to implement its/his patent by paying a particular license fee and the patent administration department shall announce the license of right. A statement of license of patent right for a utility model or design patent shall be accompanied with an evaluation report of the patent. A statement of license of right may be withdrawn by filing a written statement, which shall be announced, and validity of the previous


4. Encouraging innovation and upgrading the quality of patent

The draft makes some amendments to encourage innovation and upgrade the quality of patent.

The provi s ions about serv ice invention-creations are amended to encourage innovation in Article 6 (amended). Service invention-creations are limited to those made in execution of tasks of an entity, not including the invention-creations made by using materials and technical means of the entity, and the inventor or designer shall have the right to file an application for the invention-creations made by using materials and technical means of the entity if no agreement about the ownership of the right is reached between the inventor or designer and the entity.

In Article 30 (amended), the time limit of three months for submitting copy of priority documents has been

deleted, providing the possibility of loosening the formality requirements.

According to Articles 41 and 46, both reexamination request and invalidation request may be examined ex officio, that is, the Patent Reexamination Board may examine, when necessary, whether the application or patent in issue complies with the provisions of the Patent Law in addition to the grounds mentioned in the request.

The draft also stipulates that principle of good faith should be obeyed in the course of filing a patent application or enforcing a patent and a patent shall not be misused to impair public interest and eliminate or limit competition inappropriately.

The proposed amendments to the Patent Law serve the object of the Chinese government of building an innovation-oriented country by strengthening the protection of patent right and encouraging innovation.

Appendix: Updated Patent Statistics

before SIPOPART6

Appendix: Updated Patent Statistics before SIPO ● 87Essentials for Patent Applications in China ● 86

Domestic and Foreign Patent Grants for Three Kinds of Patents Accumulated till 2016

Domestic and Foreign Patent Applications for Three Kinds of Patents Accumulated till 2016


Domestic and Foreign Applications for Three Kinds of Patents in 2016

Note: “Applications” refers to the accepted applications for patents.

Amount of Patent Applications in past Past 10 Years (2007-2016)


Comparison for Three Kinds of Domestic Patent Applications between 2015 and 2016

Comparison for Three Kinds of Foreign Patent Applications between 2015 and 2016


Comparison for Three Kinds of Foreign Patent Grants between 2015 and 2016

Domestic and Foreign Patent Grants for Three Kinds of Patents in 2016

Note: “Grants” refers to the granted patents.


Comparison of Patent Applications for Invention from Major Foreign Countries and Regions between 2015 and 2016

Note: “Total” means all the foreign patent applications for invention, not only the amount of the 10 major countries.

Comparison for Three Kinds of Domestic Patent Grants between 2015 and 2016


Comparison of Patent Applications for Invention from Major Provinces of China between 2015 and 2016

Note: “Total” means all the domestic patent applications for invention, not only the amount of the 10 major provinces.

Comparison of Patent Grants for Invention from Major Foreign Countries and Regions between 2015 and 2016

Note: “Total” means all the foreign patents for invention, not only the amount of the 10 major countries.


Patent Applications for Invention according to IPC classification in 2016

Comparison of Patent Grants for Invention from Major Provinces of China 2015 and 2016

Note: “Total” means all the domestic patents for invention, not only the amount of the 10 major provinces.

Essentials for Patent Applications in China ● 100

Patent Grants for Invention according to IPC classification in 2016

insight on chinese patent practice patent granting ...en.wanhuida.com › public › upload › file...

Documents