Patent prosecution strategies under the new implementing regulations and examination guidelines



The China National Intellectual Property Administration (“CNIPA”) announced the latest amendments to the Patent Examination Guidelines (hereinafter referred to as the “Guidelines”), part of which became effective as of November 1, 2019 and the rest as of February 1, 2020. This article aims to provide some practical advice on the highlights of the revisions.


1.Further Divisional Application 

The amended Guidelines explicitly clarifies that the timing for filing a further divisional application based on a pending divisional application which is objected to for lack of unity of invention, shall be examined according to the status of this divisional application lacking unity of invention (section 5.1.1 (3), Chapter I, part I), so as to avoid such occurrence of "infinite divisional applications".


Divisional applications are often used by patent applicants strategically to have strong and comprehensive protection.  For some essential patent applications, it might be necessary to file multiple divisional applications, in order to keep the application in a "pending" status strategically. Typically, people can file divisional applications only while the parent case is pending. The only exception is that a unity rejection is issued in a divisional application. Then, people can file divisional applications while the divisional application is pending. Here are some strategies for filing divisional applications. 
1.1 Delay the Allowance of the Parent Application
If the applicant projects that they might file divisional applications after the parent application gets allowed, we would advise to change the plan by filing a divisional application in advance and try to obtain the patent right (e.g. via filing PPH request) of the divisional application while keeping the parent application in “pending” status.  It is also achievable to make good use of the reexamination stage, which starts from the receipt of Notification of Rejection to the parent application to the period of administrative litigation, assuming the applicant is against the Reexamination Decision, to ensure that the parent application remains in the "pending" state and earn more time to be able to file a further divisional application.
1.2 File Divisional Application deliberately with Unity Defect
If it can be foreseen that there is the possibility of submitting a further divisional applications, the applicant may include two sets or more of claims that obviously do not comply with the requirements of unity on purpose when filing a first-generation divisional application (based on the parent application) to try to trigger a Unity of Invention Rejection. In this way, it is highly likely that the first-generation divisional application would receive the Notification of Lack of Unity during the examination stage, which enables the applicant to file a second-generation divisional application. 


2.Deferred Examination for Invention and Design Applications

According to official statistics in the first half of 2019, the average examination period of invention is 22.7 months, that of utility model is 6.2 months. For design patent, the period is 4.0 months.  In the next four years, the examination period of invention will be reduced by 1/3 on average.  However, in practice, some technology fields need to obtain more time via deferred examination in order to see the market and adjust protection scope of claims. In consideration of the merchandising process in coordinate with design applications, some applicants do not to want the designs to be published before launching the relevant products.  Due to the above reasons, the amendments of the Guidelines introduce deferred examination or invention and design applications.


Taking an invention application as an example, if the applicant wants to file a request for deferred examination, it has to be filed at the same time of requesting substantive examination. The request for deferred examination shall take effect from the effective date of substantive examination. The examination can be deferred by 1, 2 or 3 years from the effective date of substantive examination. Since people can use deferred examination in divisional applications, the applicant can request the deferred examination in both the divisional application and the parent application. 
The amendments to Guidelines do not mention whether and how the applications that applies for deferred examination are published, nor do they mention when the applicant would expect to receive the Notice of Entering into Substantive Examination or whether there is still an opportunity for voluntary amendments (as provided for cases without deferred examination)to the applications under deferred examination. Obviously, these details missing from the amendments will directly affect the results for deferred examination, since the request for delayed examination needs to be submitted at the same time with the request for substantive examination.  


3.Relevant Provisions on Examination of Invention Applications relate to Algorithm, Business Methods

In April 2017, the Guidelines was amended to incorporate claims related to business method as patentable subject matters.  However, in practice, the amendments only contribute to the fact that the examiner no longer directly rejects the patent applications including both the business methods and the technical features according to Article 25 of the Chinese patent law.  If the invention is related merely to the technical features which cannot meet the provisions according to Article 2 and Article 22 of patent law, the patent application will not be granted based on the contribution of its non-technical features.  Putting it differently, the amendments to the Guidelines in 2017 did not really serve the purpose to incorporate the subject matters related to business method or artificial intelligence etc as patentable subject matter.


In the revised Guidelines, which came into effect on February 1, 2020, newly added the part of “the relevant provisions on the examination of invention applications containing algorithmic features or business method features”, emphasizing the principle of overall consideration of claims, and clarifying that in the examination, the technical features and algorithm features or business method features should not be simply separated.  Instead, all the limitations recited in the claims shall be considered as a whole.  In addition, in the process of determination of inventiveness, the Guidelines further clarifies the principle of relevance consideration, that is, the algorithm features or business method features that are functionally mutually supportive and interactive with technical features should be considered as  a whole, taking into account of the contribution of algorithm features or business  method features to the technical solution.

In view of the above, we would suggest that for the invention applications involving algorithm features or business method features, special attention should be paid to that the case should describe the technical field it is applied to.  By combining abstract algorithmic features with specific technical areas to make technical solutions include technical features, the solution of the invention application accordingly falls into the patentable subject matter. 

In addition, by describing the combination process, it is easier to describe the technical effects in the specification.  By explaining how such technical effects resulting from the technical features and the algorithm features or business method features that are functionally mutually supportive and interactive with technical features, as well as by stating how algorithm features or business method features contribute to technical solution, it is very helpful for the examiner to correctly understand the respective contribution of the technical features and algorithmic features to the technical solution, and so as to ensure the invention containing algorithm features or business method features be successfully protected by the patent law.

In addition, revisions of the Guidelines are also related to search, interview with the examiner, design patents involving graphical user interface, invalidation procedure and so on.  It is recommended that applicants carefully look into the amendments and adapt patent filing strategy accordingly.


4. Amendments regarding tele-communications between examiner and applicant

The amendments have relaxed the restraints on the timing and the scope of contents of the communication, which can be initiated as long as necessary.  The tele-communication can be set up on the request of either the examiner or the applicant at any time during the substantive examination proceeding, not only to clarify and address minor or formality issues under the current practice, but also to eliminate discrepancies and promote understanding of the application and the prior art, or problems in the application documents.  In addition, video conferencing, e-mail, etc. are added as formats for examiners to discuss with the applicants, facilitating communication between the two parties.


According to our experiences, more and more examiners are willing to discuss novelty and inventiveness issues via tele-communication.  Such communication can help the examiner to accurately understand the technical solution of the invention; meanwhile, it is also beneficial for the applicant to understand the factual basis and reasons for the examination comments to be presented.   Thus, it promotes both parties to be on the same page on how to overcome the defects raised by the examiner, which consequently expedites the Office Action response and the prosecution of the case.  
Furthermore, the amended Guidelines alleviates the clerical burden of examiners engaging in telephone discussion by amending the portion of "examiner should record" into "only if necessary, the examiner should record the contents of the telephone discussion and put them in the application file records."  Accordingly, as for the applications which aim to obtain the maximum protection scope, or applications in some emerging or cutting-edge technical fields, we would suggest grasping this opportunity and communicating with the examiner via telephone discussion before formally responding to the Office Action, so as to lower the probabilities of issuance of another OA, the cost of service fees and the risk of "file wrapper estoppel" brought by responses.

Simon Tsi
Managing Partner | Attorney at Law
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