CNIPA Announced Amendments to Patent Examination Guidelines

By Han-Mei Tso and Jude Yi

繁體中文

The China National Intellectual Property Administration (“CNIPA”) recently announced the amendments to the Patent Examination Guidelines (“Guidelines”). The amendments took effect on November 1, 2019, which were the official amendments to the Guidelines after the CNIPA published its Draft Amendments to the Patent Examination Guidelines (Draft for Comment) (“Proposed Amendments”) in April this year. The official amendments are generally consistent with the Proposed Amendments. Apart from wording adjustment, only a few things were added to or removed from the Proposed Amendments.

The amendments mainly include: clarification of the time for filing a secondary divisional application in accordance with an office action, perfecting of the procedures for transferring patent applications and patents, amendments relating to designs involving graphical user interfaces, perfecting of the situations where a design patent is not to be granted, amendments relating to human embryonic stem cells, amendments relating to substantive examination of invention patent applications, amendments relating to search practice, amendments relating to in-person interview and telephonic interview with the examiner, amendments relating to the invalidation procedure, and amendments relating to the order of examination. (The original announcement of the amendments can be found at http://www.cnipa.gov.cn/zfgg/1142481.htm.)

In this year’s April issue of Osha Liang Insights, we discussed the Proposed Amendments relating to substantive examination. For the amendments relating to evaluation of an inventive step and evidence for common knowledge, please refer to our previous article. It should be noted that the Proposed Amendments relating to technical features that do not contribute to solving the technical problem were not adopted in the official amendments this time. This article will focus on the new rules in the amended Guidelines that relates to the time for filing secondary divisional applications and designs involving graphical user interfaces.

Divisional application practice under the Chinese patent system generally requires applicants to divide two or more inventions that do not belong to a general inventive concept into separate patent applications, that is, to address the so-called issue of unity. Typically, if a patent application does contain two or more inventions, the examiner will ask the applicant to file divisional application(s) claiming the additional invention(s) and cancel the claims relating to the additional invention(s) from the original application. However, the applicant may also file divisional applications on its own initiative as long as the divisional application is filed before expiration of the time period to submit the issue fee and complete the formality process of granting the patent for the original application. After the time period to submit the issue fee expired, the original application has been finally rejected, the original application has been withdrawn, or the original application is deemed to have been withdrawn and has not been restored, the applicant is generally not allowed to file a divisional application. Since a divisional application can be filed on the applicant’s own initiative, in practice, even if the original application is not rejected on the basis of unity, the applicant can use a divisional application to adjust the scope of claims in a more advantageous way or add to the claims other technical solutions disclosed in the specification. In the event that some of the claims are allowed, the rejected claims can be canceled so as to move toward grant as soon as possible. The canceled rejected claims can be pursued through a divisional application.

The time for filing a divisional application mentioned above is based on whether the “original application” is still pending. Differing from U.S. procedures, in China the meaning of “original application” must be the initial application instead of a previously filed divisional application. In other words, even if the applicant can file multiple divisional applications, the time to submit each divisional application should rely on pendency of the original application. One divisional application cannot be based on another divisional application. However, there is one exception: during prosecution of a divisional application, if the examiner raises a rejection for lack of unity, the applicant is required to file another divisional application to prosecute the additional invention rejected from the prior divisional application.

Until the recent amendment, the Guidelines addressed this exception but did not clearly specify the time limit for filing such a secondary divisional application. It is understandable that the time for filing the secondary divisional application is no longer limited by the status of the original application because it is required to be filed based on the office action issued during the prosecution of another divisional application. However, it was not clear whether the time to file was limited by the status of the prior divisional application, or if the applicant could file the secondary divisional application indefinitely as long as a unity rejection was raised during the prosecution of the prior divisional application. This absence of a clear time limit for filing the secondary divisional application created a significant gap or “loophole” in the procedures relating to divisional applications.

This problem was highlighted in an extreme case. On December 1, 1995, Intel Corporation filed an original patent application which was issued on November 20, 2002.  Before the first patent was granted, Intel filed a primary divisional application based on the original application and was granted a second patent on August 20, 2008. During prosecution of the primary divisional application, the examiner raised a lack of unity rejection. Nearly four years after the second patent was granted, Intel filed a secondary divisional application based on the primary divisional application and was granted a third patent on June 29, 2016. Since the secondary divisional application maintained the filing date of the original application (December 1, 1995), the third patent was actually already expired when it was issued in 2016.

Importantly, in the Intel case there was no pending related application when the secondary divisional application was filed. In order to address this situation, the amended Guidelines include new restrictions on the time for filing a secondary divisional application. According to the new rules, if the applicant files a secondary divisional application in response to an examiner’s rejection for lack of unity, the time for filing the secondary divisional application will be limited by pendency of the primary divisional application in which the lack of unity rejection was made. In other words, the secondary divisional application must be filed when the prior or primary divisional application is still pending. A secondary divisional application cannot be initiated by the applicant but may only be filed based on an office action issued by the examiner, as was the case before the amendments, as well.

The amended Guidelines also modify the requirements relating to designs of products incorporating a graphical user interface (GUI), ranging from the product name, the drawings or photographs of the design, to the brief description. For such designs, the amended Guidelines state that the product name should indicate the primary use of the GUI and the product to which it is applied and should generally have the keyword “Graphical User Interface.” If a dynamic GUI is involved, there should also be the keyword “Dynamic” in the product name, for example, “Fridge with Temperature Control Graphical User Interface,” or “Weather Forecasting Dynamic Graphic User Interface for Mobile Phones.” The generic name “Graphical User Interface” cannot be used as the product name; for example, “Graphical User Interface for Operations” is not acceptable. In short, the product name of a design incorporating a GUI should include three elements: product, use, and “(Dynamic) Graphical User Interface.”

Since currently there is no partial design right in the Chinese patent system, a design involving a GUI still needs to be attached to a whole product. That is, such a protectable design is still the design of a whole product that includes the GUI, for example, on one side of the product or a portion of that side. Therefore, for a design involving a GUI, it is necessary to submit six orthographic views of the product (or two orthographic views of a planar product). According to the amended Guidelines, for a design whose essential features reside in a GUI, only at least one orthographic view of the display screen panel containing the GUI should be submitted to meet the minimum requirement. Thus, the product name could be a display screen panel, such as “Display Screen Panel with Video-on-Demand Graphical User Interface.”

For software used on general-purpose computers, the design of its graphical user interface belongs to such category “whose essential features reside in a GUI.” According to the new rules, for such design involving a GUI, submission of an orthographic view of the “display screen panel” containing the GUI can meet the minimum requirement of the views. As a result, the other portions of the appearance of the product, such as a computer or mobile phone containing the display screen panel, will no longer limit the scope of the design, which essentially is focused on the graphical user interface only. This change of rule relaxes the limitations on protection of designs involving GUIs under the existing “product” design framework, and thus provides a better protection for innovation in GUI.

In addition, the amended Guidelines state that the use of the GUI should be clearly stated in the brief description of the design application and should be consistent with the use specified in the product name. If only an orthographic view of the display screen panel containing the GUI is submitted, the final products on which the display screen panel containing the GUI is used should be enumerated in an exhaustive manner. For example, “the display screen panel is used for mobile phones and computers.” According to the Chinese Patent Law, although the scope of a design patent is based on the design of the product as shown the drawings or photographs, the brief description can be used to explain the design of the product represented by the drawings or photographs. Accordingly, because the amended Guidelines require that, in the brief description, the use of the GUI should be specified and the final products on which the display screen panel containing the GUI is used should be exhaustively enumerated, these two requirements will still set limitations to the scope of the design involving the GUI.

We will continue monitoring the implementation and effect of CNIPA’s recent amendments to the Patent Examination Guidelines.