Jurisdiction - China
Reports and Analysis
China – Proposed Amendments On Patent Examination Guidelines.

25 April, 2013

 

Legal News & Analysis – Asia Pacific – China – Intellectual Property

 

China State Intellectual Property Office (“SIPO”) recently issued a proposal for amendments on the Patent Examination Guidelines and seeks public opinion.

 

The proposed amendments mainly concern the examination of patent applications for utility models and designs, and the purpose of such amendments is to improve the quality of granted patents.  Under the current practice, the examiner does not conduct any search in the preliminary examination.  In this way, a patent may be granted even if the invention or design is not new, or the same invention/design may be repeatedly granted, thus seriously affecting the quality of granted patents.

 

In the proposed amendments, wordings like “generally does not conduct any search” or “not through search” have been deleted and the examiner is encouraged to conduct searches so as to determine whether the patent application for utility model or design obviously lacks novelty.

 

Although SIPO emphasizes or strengthens the search function, such search concentrates on identical invention or existing design (i.e. novelty issue instead of inventiveness issue), which does not change the principle of preliminary examination on patent applications for utility model or design. If the proposed amendments are approved, certainly there will be more office actions regarding the novelty issue for these two types of patent applications.

 

The following are details of the proposed amendments:

 

Relevant Parts

Before any amendments

Proposed amendments

Section 11, Chapter 2, Part I

In the preliminary examination, the examiner generally does not determine on search whether a utility model obviously lacks novelty, but may determine on the information of related prior art or conflicting applications within the Examiner’s own knowledge but without searching.

In the preliminary examination, the examiner conducts examination as to whether a utility model obviously lacks novelty on the basis of any information concerning related prior art or conflicting applications.

Section 13, Chapter 2, Part I

In the preliminary examination, whether or not a patent application for utility model may obtain a patent right according to Article 91 shall not be examined through search. However, if the examiner knows that there a previously filed patent application for identical invention, he shall conduct examination.

In the preliminary examination, the examiner may, on the basis of a patent application for any identical invention, conduct the examination as to whether or not a patent application for utility model complies with Article 9.

Section 8, Chapter 3, Part I

In the preliminary examination, the examiner usually does not conduct any search, and determines whether the design application obviously does not meet the requirement of Article 23.12 only on the basis of the content of the application document and common sense of the normal consumer.

The examiner, however, may determine whether the design obviously does not meet the requirement of Article 23.1 on the basis of the information, not from searching, concerning prior design or conflicting application.

In the preliminary examination, the examiner conducts examination as to whether the design application obviously does not meet the requirement of Article 23.1 on the basis of any information concerning prior design or a conflicting application.

 

Section 11, Chapter 3, Part I

In the preliminary examination of a patent application for design, the examiner normally does not take the initiative to search and examine as to whether or not a patent application for design can be granted the patent right according to Article 9. However, where the examiner knows that one or more applicants have filed patent applications for the identical design, examination shall be conducted.

In the preliminary examination, the examiner may, on the basis of a patent application for any identical design, conduct examination as to whether or not a patent application for design complies with Article 9.

 

 1 China Patent Law, Article 9: Only one patent can be granted for the same invention. However, where the same applicant applies for a utility model patent and an invention patent with regard to the same invention on the same day, if the utility model patent acquired earlier is not terminated yet and the applicant declares his waiver of the same, the invention patent may be granted. If two or more applicants apply for a patent for the same invention separately, the patent right shall be granted to the first applicant.

 

2 China Patent Law, Article 23.1: A design for which the patent right is granted is not an existing design, where no application has been filed by any unit or individual for an identical design with the patent administration department under the State Council before the date of application for any patent right and no identical design is recorded in the patent documentations announced after the date of application. 

 

 

 

For further information, please contact:
 
Wu-Bin Yan, Director, Ella Cheong (Hong Kong & Beijing)
yanwb@ellacheong.com
 

Comments are closed.