SIPO’s New Examination Guidelines

China’s State Intellectual Property Office (SIPO) has released the new guidelines to patent the software, business methods along with the chemical inventions. With the enactment of the new guidelines, it is anticipated that the SIPO will become more transparent and flexible in the procedures of examining, granting and invalidating the patents/applications than before.

In effort to further enhance protection of Intellectual Property Rights, the State Intellectual Property Office (SIPO) of China has revised its examination guidelines for Patents, which will come into force as of 1st April, 2017.

The proposed amendments to the Guidelines include the patent eligibility of computer software and business method, the acceptability of post-filing experimental data for chemistry inventions, the rules of claim amendments during patent invalidation procedures, and the availability of public access to patent documentations. Notably, the proposed revisions may lift the long standing curbs on software patents.

The proposed revisions to the current Guidelines for Patent Examination include:

1. Software patents

“Computer program per se” is different from “inventions relating to computer program”. The former belongs to rules and methods for mental activities and is ineligible for patent protection, while the latter is patentable. A software claim maybe drafted in a form of “medium plus computer program process” or as an apparatus claim including a component implemented by a computer program.

2. Business method

If a claim relating to business model includes not only business rules or method, but also a technical feature, it should not be excluded from being patentable under Article 25 of the Chinese Patent Law.

3. Chemistry inventions

Experimental data submitted after the filing date shall be considered and examined, though it can only be used to prove technical effects that are obvious for those skilled in the art from the original disclosure.

4. Claim amendment in invalidation procedure

Applicant is allowed to amend claims by incorporating one or more limitations from other claims and to correct obvious errors in the claims.

5. Public accessibility to patent application documents

The public are allowed to review and copy application documents including Office Actions, Search Reports and Decisions issued by the SIPO before the application is granted.

6. Suspension asked by court

The SIPO will suspend a procedure for a patent application or patent for a time period as asked by the court, not limited to six months per suspension or one year in total.