SIPO's New Revision to Guideline for Patent Examination Comes into Effect on April 1, 2017

- 2017-03-16


The Chinese Guideline for Patent Examination was revised recently by SIPO and the new Guideline will come into effect on April 1, 2017. The new revision brings important changes, especially to the examination of software related patents and chemical related patents, and to the patent invalidation practice.  The revised contents are introduced briefly hereunder.
1. Regarding software related patent examination
1) Patentable subject matter, Section 4.2 of Chapter 1 of Part II
The revised Section adds the content “[For example] For a claim relating to commercial mode, if the claim contains not only matter of commercial rule or method, but also technical features, then the claim should not be excluded from patentability under Article 25 of the Patent law”.
2) Patentable subject matter and protection format, Sections 2, 3 and 5.2 of Chapter 9 of Part II
The revision introduces a new patentable subject matter or a protection/claim format of "medium plus the steps of a computer program," and confirm that a product claim involving computer program may take the format of "means plus function (program)", or of "hardware plus the steps of a computer program." And the sample 9 in item (3) of Section 3 is deleted as of no guidance anymore.
2. Regarding chemical related patent examination
The revision confirms that the supplemental experimental data submitted after filing date should be examined. But whether or not the Description has sufficiently disclosed is judged on the basis of the disclosure of original Description and Claims.
The Item (2) of Section 3.4 of Chapter 10 of Part II is revised into Section 3.5, reading as:
"3.5 Regarding the supplemental experimental data
Whether or not the Description has sufficiently disclosed is judged on the basis of the disclosure contained in the initial Description and Claims. For the experimental data submitted after the filing date, the examiner should examine such experimental data. The technical effects demonstrated by the supplemental experimental data should be able to be obtained by the skilled in the art from the disclosure of the present application”. 
3. Regarding patent invalidation examination
1) Ways of amendment to claims, Section 4.6.2 of Chapter 3 of Part IV
The revision broadens the ways of amending the patented claims by specifying that in invalidation proceedings, the granted claims can be amended in three ways: deletion of claims, further limitation to claims, and correction to obvious errors. The further limitation to claims means addition of one or more technical features as recorded in other claims to a claim, to narrow the protection scope.
2) Procedural matters, Section 4.2, Section 4.3.1 and Section 4.6.3 of Chapter 3 of Part IV
As of the revision to the ways of amendment to claims, the related procedures, particularly the time limits for making the amendments, for adding new invalidation reasons and for submitting additional evidences, are specified adaptively. 
4. Regarding Reading and Copying of File Wrapper Documents
The revision to Section 5.2 of Chapter 4 of Part V allows more documents in the file wrapper for reading and copying by the public.
5. Regarding Time Limits in relation to suspension procedures
In response to the revision of Civil procedural law, adaptive revision is made to  the relevant parts of the time limits to suspension due to execution assistance of property preservation in Section 7.4.2 of Chapter 7 of Part V, and of the time limit concerning invalidation procedure in Section 7.4.3 of Chapter 7 of Part V.