The Greater China IP Updates

 By Lyndon 

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CNIPA Announces New Patent Examination Guidelines

The China National Intellectual Property Administration (CNIPA) recently released some new information about amending the Patent Examination Guidelines that relate to chemical and biotech patent applications.  Firstly, the applicant can now submit, after the initial filing, supplementary experimental data to support the inventive step concept.  CNIPA also provided two examination samples involving typical situations showing how supplementary experimental data in sufficient description disclosure can be evaluated for inventive step examination.  Secondly, for chemical compositions, the wording of the guidelines has been adjusted to be more flexible about the performance or usage limitations that need to be recited in the claims.  Also, a change has been made to clarify issues about the relationship between structural modification of a compound and the technical effect.  The new approach is to consider more thoroughly whether a person skilled in the art can carry out a structural modification that would solve the technical problem, thus implying that the prior art has provided technical teachings.  However, when determining the inventive step of a compound, if the change in the use and/or the improvement of the effect is unexpected, it reflects that the claimed compound is non-obvious and its inventive step shall be accepted.

CNIPA Updates Patent Evaluation Report of Design Patents Guidelines

The China National Intellectual Property Administration (CNIPA) has adjusted the rules regarding Patent Evaluation Reports for design patents.  Under the current Patent Law and Guidelines for Patent Examination, the local IP office may ask the patentee or licensee of a design patent to present a patent evaluation report from CNIPA to show as evidence if or when they need to enforce their patent rights.  According to Article 66 of the recently amended Patent Law, the accused infringer also has the right to take the initiative and present a patent evaluation report.  This amendment is intended to make the judicial proceedings more complete and fairer as well as giving concerned parties a chance to anticipate patent infringement proceedings and take action to avoid further legal difficulties.

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New Implementation Rules for Patent Law Issued by CNIPA

China has recently released some proposed Implementation Rules to support the upcoming and updated Patent Law due to be implemented on June 1st, 2021.  Firstly, concerning the abstract of invention, the accompanying drawing no longer needs to be limited to 4cm x 6cm and the word count is no longer restricted to 300 words maximum.  Also, restoration of priority is made possible.  For inventions and utility models beyond the 12 month period to file an application in China claiming priority to a first-filed foreign application, the applicant is able to restore the priority within 2 months from the expiration of the 12 month period after paying additional fees.  For erroneous or oblivious claim of priority at the time of filing an invention or utility model application, correction or addition of priority is available within 16 months from the priority date or 4 months from the Chinese application day.  In a PCT application that claimed priority but the international filing is made within 2 months beyond the expiration of the 12 month period for priority, the applicant is able to restore priority within 2 months from entering the Chinese national phase if the applicant fails to restore successfully during the international phase..

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