CNIPA Publishes Proposed Amendments to Patent Examination Guidelines

By Han-Mei Tso

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On April 4, 2019, the China National Intellectual Property Administration (the “CNIPA”) published its Draft Amendments to the Patent Examination Guidelines (Draft for Comment) (the “Proposed Amendments”) to solicit public comments.[1] This amendment follows the previously amended Patent Examination Guidelines (the “Guidelines”) that took effect on April 1, 2017. The Proposed Amendments aim to improve efficiency and quality of patent examination. Therefore, most of the changes in the Proposed Amendments relate to formal and procedural issues, such as: (1) amendments with respect to preliminary examination of patent applications, (2) the product name for a design of graphical user interface, (3) patent searching, and (4) procedures for prioritized examination and deferred examination.  These amendments would be conducive to improving efficiency of patent examination. In addition, the Proposed Amendments present important modifications to substantive examination, e.g., improving evaluation of an inventive step. This article will focus on the Proposed Amendments with respect to substantive examination.

Changes to the “Three-Step Method”

The method for evaluating an inventive step as prescribed in the Guidelines is called the “three-step method”, which includes: (1) determining the closest prior art; (2) determining the distinguishing features of the claimed invention and the technical problem actually solved by the claimed invention; and (3) determining whether or not the claimed invention is obvious to a person skilled in the art.

The Proposed Amendments have made certain changes to the second part of the three-step method. Specifically, under the second part of the three-step method, the examiner should objectively analyze and determine the technical problem actually solved by the claimed invention.  For this purpose, the examiner must first determine the distinguishing features of the claimed invention as compared with the closest prior art. Subsequently, the examiner must then determine the technical problem that is actually solved by the claimed invention on the basis of the technical effect(s) of the distinguishing features. The Proposed Amendments further clarify that the examiner should “determine the technical problem that is actually solved by the claimed invention on the basis of the technical effect(s) of the distinguishing features as in the claimed invention.” In other words, the technical problem is determined from the technical effect(s) of the distinguishing features, and not the general effect(s) of the distinguishing features or their effect(s) in the prior art references. Objectively, this change can help prevent examiner subjectivity when determining the technical problem.

Further, at the end of the second part of the three-step method, the Proposed Amendments add a sentence that, “[f]or technical features that are functionally mutually supportive and have interactive relationships, the technical effect(s) achieved in the claimed invention should be considered from said technical features and their relationships as a whole.” This instruction should guide the examiner regarding how to determine the technical effect(s), as this change requires the examiner to pay attention to the interrelationship between distinguishing features and other features of the claimed invention.  As such, this change may help examiners avoid analyzing features in isolation.

In general, the changes to the “three-step method” in the Proposed Amendments will help examiners correctly understand improvements made over the prior art. Such changes will also provide one more option for applicants in rebutting an obviousness rejection. In particular, applicants may challenge the technical problem determined by the examiner based on the relationships between claimed technical features. For example, applicants may now prove a function or effect of a claimed feature is different from that function cited in a prior art reference disclosing a similar feature.

Changes to Technical Features that Do Not Contribute to Solving the Technical Problem

In regard to the evaluation of an inventive step in the Guidelines, specific principles are presented for the examiner to note during evaluation of the inventive step. One of the principles requires that the evaluation be directed to a technical solution defined in the claims as a whole rather than by individual technical features. The Proposed Amendments add a sentence to this principle stating that, “[h]owever, the technical features in the claims that do not contribute to the resolution of the technical problem have no effect on the evaluation as to whether the technical solutions defined in the claims involve an inventive step.” The “technical problem” here is usually the technical problem to be solved by the invention as described in the specification, or the technical problem determined during the examination.

One possible scenario is that there may be multiple distinguishing features of the claimed invention from the closest prior art, but some of the distinguishing features may not contribute to a solution of the technical problem described in the specification.  Likewise, the distinguishing features may belong to “common” features.  As such, “common” features are not as important as other features when the examiner identifies the technical problem. Thus, distinguishing features that contribute little to the solution may have minimal effect in evaluating an inventive step of the claimed invention.

Changes to Cited Common Knowledge

The Guidelines prescribe that “the common knowledge of the art cited in the office action by the examiner shall be accurate,” and “[w]here the applicant has objections to the common knowledge cited by the examiner, the examiner shall state the reasons or provide corresponding evidence for proof.” (Emphasis added.)  The response of the examiner to the applicant’s objections is changed in the Proposed Amendments as “the examiner shall provide corresponding evidence for proof or state the reason,” and adds that “when the examiner determines the technical features that contributes to the resolution of the technical problem in the claims to be common knowledge in the office action, the examiner usually shall provide evidence for proof.”  In other words, the Proposed Amendments emphasize that the examiner shall provide corresponding evidence to prove asserted common knowledge. In particular, when an examiner asserts the technical features contributing to solving the technical problem are common knowledge, such evidence shall be provided in the office action. This change helps prevent the examiner from abusing the weapon of “common knowledge” in rejecting patent applications.  For example, if the examiner does not provide evidence for the asserted “common knowledge,” the applicant can authoritatively require the examiner to present corresponding evidence.

The deadline for the public to submit comments to the CNIPA is May 5, 2019. After that date, the CNIPA will analyze and organize the public comments to produce a final draft amendment for internal deliberation. The new Guidelines are expected to be approved and to take effect within this year. Osha Liang Insights will follow up the development of this event and will provide timely reports accordingly.

[1] http://www.sipo.gov.cn/gztz/1137035.htm