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March 2013
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SIPO to Revise the Guidelines for Patent Examination

Recently, the State Intellectual Property Office (SIPO) published the Draft Amendments to the Guidelines for Patent Examination for public opinion.

The amendments relate to Sections 11 and 13 of Chapter 2 of Part 1, and Sections 8 and 11 of Chapter 3 of Part 1 of the Guidelines for Patent Examination, covering some principles guiding the preliminary examination on utility model and design patents. 

Section 11 of Chapter 2, Part 1 of the Guidelines for Patent Examination states: "In the preliminary examination, the examiner generally does not determine on search whether a utility model is obviously lack of novelty, but may determine on the information of related prior art or conflicting applications obtained not through search."  The Draft Amendments deletes the "generally does not determine on search" and "obtained not through search".  Some similar phrases in Section 13 of Chapter 2, Sections 8 and 11 of Chapter 3 of Part 1 have also been deleted.  

According to the current Guidelines for Patent Examination, the examiner generally does not conduct search during the preliminary examination on utility model or design patents, which made some patent applications of prior art or prior design and some identical applications being granted and increased the number of junk patents.  A lot of unnecessary patent disputes also occurred.

Therefore, in the year of 2010, China revised its Implementing Regulations of the PRC Patent Law to increase the scope of preliminary examination on utility model and design patents by regulating that a patent for utility model shall have novelty and a patent for design shall not be a prior design nor has any conflicting designs.  In the same year, the Guidelines for Patent Examination also stipulated that the examiner generally does not conduct search when examining the utility model or design patents, but should conduct search in certain circumstances.  Now, the SIPO will once again revise the Guidelines for Patent Examination.  This move is intended to strengthen the preliminary examination on utility model and design patent applications and reduce the number of junk patents.

The Draft Amendments, once approved, will encourage the examiners of SIPO to search for related prior art when conducting preliminary examination on utility model and design patents.  It can avoid double patenting and the increase of junk patents, and improve the patent quality of China which has long been criticized by foreign countries.  This move, however, will also probably prolong the time spent on the preliminary examination of utility model and design patents.  The time needed for granting a utility model or a design patent application will also be increased.

An interview from Nancy Qu --

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