In order to meet the needs of the rapid development of new technologies, respond to the new demands of innovative entities on examination rules and examination modes, and improve the quality and efficiency of patent examination, The China National Intellectual Property Administration has decided to amend the Guidelines for Patent Examination, which is hereby promulgated and shall come into force on November 1, 2019.

 

Hereby Noticed.

China National Intellectual Property Administration

September 23, 2019

 

The Decision of the China National Intellectual Property Administration on Amending the Guidelines for Patent Examination

 

The China National Intellectual Property Administration decided to make the following amendments to the Guidelines for Patent Examination:

 

I.   Amendments to Section 5.1.1, Chapter 1, Part 1

Amend the 5th paragraph of Item (3) of Section 5.1.1 of Chapter 1 of Part 1 of the Guidelines for Patent Examination to read as follows:

 

However, if the examiner issues a divisional notice or the notice of examination indicating that the divisional application has a unitary defect, the applicant should submit a divisional application again in accordance with the examiner's examination opinions. The examination of the time for submitting the divisional application again shall be based on the divisional application with unity defects. If the requirements are not met, the division shall not be carried out on the basis of the divisional application, and the examiner shall issue a notification of regarding the divisional application as a non-submission and close the case. 

 

Amend the 5th paragraph of Item (4) of Section 5.1.1 of Chapter 1 of Part 1 of the Guidelines for Patent Examination to read as follows:

 

(4) Applicant and inventor of divisional application

The applicant for a divisional application shall be the same as the applicant who originally applied for the divisional application. The applicant who files a divisional application for a divisional application shall be the same as the applicant for the divisional application. If the requirements are not met, the examiner shall issue a notification of regarding the divisional application as a non-submission. 

 

The inventor of a divisional application shall be the same as the inventor of the original application or a part of its members. The inventor who files a divisional application for a divisional application shall be the same as the inventor for the divisional application or a part of its members. If the requirements are not met, the examiner shall issue a notice of correction to notify the applicant to make corrections. If no corrections are made at the expiration of the time limit, the examiner shall issue a notice of deemed withdrawal.

 

The rest of the section has not been modified.

 

II.  Amendments to Section 6.7.2.2, Chapter 1, Part 1

Amend the Item (2) of Section 6.7.2.2 of Chapter 1 of Part 1 of the Guidelines for Patent Examination to read as follows:

 

(2) If the applicant (or the patentee) requests for changes due to the transfer or gift of rights, the transfer or gift contract signed or sealed by both parties shall be submitted. If necessary, a subject qualification certificate should also be submitted, for example, a party has objections to the transfer or donation of the patent application right (or patent right), the parties have gone through the proceedings of the transfer of the patent application right (or patent right), and submit the documents multiple times that contradict each other, The signature or seal of the applicant or patentee in the transfer or gift agreement is inconsistent with the signature or seal recorded in the case. If the contract is concluded by the unit, it shall be affixed with the official seal of the unit or the contract seal. If the contract is concluded by citizens, it shall be signed or sealed by himself. If there are multiple applicants (or patentees), the evidential materials that indicate all patentees agree to the transfer or gift should be submitted. 

 

The rest of the section has not been modified.

 

III. Amendments to Section 4, Chapter 3, Part 1

Delete the Paragraph 4, Section 4.2, Chapter 3, and Item (7), Paragraph 3, Section 4.3, of Part 1 of the Guidelines for Patent Examination, and add Section 4.4, which reads as follows:

 

4.4 Registered design involving graphical user interface

Registered design involving graphical user interface refers to the key points of product design includes the design of graphical user interface.

 

4.4.1 Product name

The name of registered design containing the graphical user interface should indicate the main purpose of the graphical user interface and the product to which it is applied. Generally, there should be a keyword of "graphic user interface", and the product name of the dynamic graphical user interface should have a keyword of "dynamic". Such as "Refrigerator with temperature control graphical user interface", "Mobile weather forecast with dynamic graphical user interface", "Screen panel with video-on-demand graphical user interface".

 

"Graphic user interface" should not be only used as product name in general, such as: "software with graphical user interface" and "operational graphical user interface".

 

4.4.2 Design pictures or photos

The registered design containing the graphical user interface shall meet the requirements of Section 4.2 of Chapter 3 of this Part. If the design point is only the graphical user interface, at least one orthographic view of the display screen panel containing the graphical user interface should be submitted.

 

If you need to clearly show the size, position and proportion of the graphical user interface design in the final product, you need to submit an orthographic final product view of the surface involved in the graphical user interface.

 

If the graphical user interface is a dynamic pattern, the applicant should submit at least one state of the orthographic view of the surface involved in the graphical user interface as the main view. The view of the key frame of the graphical user interface can be submitted as the change state diagram for the rest of the state. The view submitted should be able to uniquely determine the complete change process of the animation in the dynamic pattern. The change state diagram should be marked according to the sequence of the dynamic change process.

 

For the graphical user interface used to operate the projection device, in addition to the view of the graphical user interface, at least one view that clearly shows the projection device should also be submitted.

 

4.4.3 Brief description

The registered design containing the graphical user interface shall clearly state the purpose of the graphical user interface in the brief description, which shall correspond to the purpose reflected in the product name. If only submitting the orthographic view of the display screen panel containing the graphical user interface, the final products to which the graphical user interface display screen panel will be applied should be exhaustively listed, for example, "This display screen panel is used for mobile phones and computers". If necessary, explain the area of ​​the graphical user interface in the product, the way of human-computer interaction, and the process of change.

 

The rest of the section has not been modified.

 

IV. Amendments to Section7.4, Chapter 3, Part 1

Amend the Item (11) of Section 7.4 of Chapter 3 of Part 1 of the Guidelines for Patent Examinationto read as follows:

 

(11) Patterns displayed on the game interface and display devices that are not related to human-computer interaction, such as electronic screen wallpapers, switch screens, and graphic layout of web pages that are not related to human-computer interaction.

 

The rest of the section has not been modified.

 

V.  Amendments to Section3.1.2, Chapter 1, Part 2

A new paragraph is added after the second paragraph of Section 3.1.2, Chapter 1, Part 2 of the Guidelines for Patent Examination which reads as follows:

 

However, if the invention is based on the use of human embryos that have not undergone in vivo development within 14 days of fertilization to isolate or obtain stem cells, it cannot be denied a patent on the grounds of "violating social morality."

 

The rest of the section has not been modified.

 

VI. Amendments to Section 3.2.1.1, Chapter 4, Part 2

Amend the “then determine the technical problem actually solved by the invention based on the technical effect that the distinguishing feature can achieve” of the second sentence of the first paragraph of the Item (2) of the Section 3.2.1.1 of the Guidelines for Patent Examination to "then determine the technical problem actually solved by the invention based on the technical effect that the distinguishing feature can achieve in the claimed invention". Meanwhile, add a sentence at the end of paragraph 3 of item (2), which reads as follows:

 

For technical features that functionally support and interact with each other, the technical effects achieved by the technical features and their relationship in the claimed invention shall be considered as a whole.

 

The rest of the section has not been modified.

 

VII.     Amendments to Section 2, Chapter 7, Part 2

Amend the Section 2 of Chapter 7 of Part 2 of the Guidelines for Patent Examination to read as follows:

2. Search Resources for Examination

2.1 Patent Literature Resources

 

Patent Literature Resources shall be searched in the procedure of substantive examination of invention patent applications, including patent documents in Chinese and foreign languages. 

 

Examiners mainly use computer search systems to search patent literature resources databases. patent literature resources mainly include patent abstracts database, patent full-text database, and patent classification database, etc.

 

2.2 Non-patent literature resources

In addition to searching in patent literature resources, examiners should also search non-patent documents. The non-patent documents available in computer retrieval systems and the Internet mainly include domestic and foreign scientific and technological books, journals, dissertations, standards/protocols, indexing tools and manuals, etc.

 

VIII.    Amendments to Section 5.3, Chapter 7, Part 2

Amend the first paragraph of Section 5.3 of Chapter 7 of Part 2 of the Guidelines for Patent Examination to read as follows:

 

Generally, the examiner conducts searches in the technical field to which the subject of the application belongs, and if necessary, extend the search to technical fields with similar functions or applications. The technical field is determined according to the content defined in the claims, especially according to those specific functions and uses clearly pointed out and corresponding specific embodiments. The classification number indicating the invention information determined by the examiner represents the technical field to which the subject of the application belongs. The technical fields with similar functions or applications are determined based on the essential functions or purposes of the applied subject disclosed in the application documents, rather than based on the name of the subject of the application, or the specific functions or applications clearly indicated in the application documents. 

 

The rest of the section has not been modified.

 

IX. Amendments to Section 5.4.2, Chapter 7, Part 2

Amend the second paragraph of Section 5.4.2 of Chapter 7 of Part 2 of the Guidelines for Patent Examination to read as follows:

 

After determining the basic search elements, we should determine the expression form of each of these basic search elements in the computer search system based on the characteristics of the technical field of the search.

 

Delete the third paragraph of Section 5.4.2 of Chapter 7 of Part 2 of the Guidelines for Patent Examination. 

 

The rest of the section has not been modified.

 

X.  Amendments to Section 6, Chapter 7, Part 2

Amend the Sections 6.2 to 6.3 of Chapter 7 of Part 2 of the Guidelines for Patent Examination to read as follows:

 

6.2 Search process

The examiner usually conducts searches in the order of preliminary search, regular search, and extended search according to the characteristics of the application. The examiner browses the search results and judges the novelty and inventiveness until they meet the conditions for suspension of search as described in Section 8 of this chapter.

 

6.2.1 Preliminary search

The examiner should use the applicant, inventor, priority, and other information to search for the family application, parent/division application, and other applications submitted by the applicant or inventor in the same or similar technical field of the subject of the application. He can also use semantic search to quickly find reference documents that can have an impact on the novelty and creativity of the subject of the application.

 

6.2.2 Regular search

Regular search is a search conducted in the technical field of the subject of the application.

 

The technical field is the main technical field in which the subject of the application is located. Searching in these fields is the most likely to find closely related reference documents. Therefore, the examiner should first search the patent documents in these fields.

 

For other subjects that should be searched for the application, similar methods should be used for searching in the fields to which the application belongs or relates.

 

If the determined technical field is found to be incorrect through the search in this section, the examiner shall redefine the technical field and conduct a search in that technical field.

 

6.2.3 Extended search

Extended search is a search conducted in a technical field with similar functions or applications.

For example, the independent claim of an application defines a hydraulic printer using silicon-based hydraulic oil. The invention uses silicon-based hydraulic oil to solve the corrosion problem of moving parts. If no reference documents can be found in the technical field of the hydraulic press, you should go to technical fields with similar functions, such as the field of general hydraulic systems that have corrosion problems of moving parts, or to fields of similar applications, such as specific application technical fields of hydraulic systems, to conduct an extended search.  

 

6.3 Search strategy

The formulation of a search strategy usually includes selecting a search system or database, expressing basic search elements, constructing a search formula, and adjusting a search strategy.

 

In the search process, the examiner can carry out a follow-up search for citing documents, cited documents, inventors, and applicants based on relevant documents at any time to find further relevant documents.

 

6.3.1 Select search system or database

When selecting a search system/database, examiners generally need to consider the following factors:　　

(1) The technical field of the subject of the application.

(2) Expect the country and year of the document to be retrieved.

(3) The functions that the search field and search system/database to be used in the search can provide. 

(4) Characteristics of applicant and inventor.

 

6.3.2 Expression of basic search elements

The expression form of the basic search elements mainly includes classification number and keywords, etc. Generally, the basic search elements that reflect the subject of the application should be expressed in priority with classification numbers.

 

It is usually necessary to choose an appropriate classification system based on the characteristics of the subject of the application and the classification system when using a classification number to express. When a certain classification system is selected, use the most accurate and lowest classification number to search first, but if there are multiple classification numbers relevant closely at the same time, you can also search together.

 

When using keywords to express, usually first use the most basic and accurate keywords, and then gradually improve the expression of keywords from three levels of form, meaning, and perspective. In the level of form, various forms of keyword expression should be fully considered, such as different parts of speech in English, singular and plural forms of words, common misspelling forms, etc.; In the level of meaning, full consideration should be given to various synonyms, synonyms, antonyms, upper and lower concepts of keywords, etc. In the level of form, full consideration should be given to the technical problems to be solved and the technical effects recorded in the manual.

 

6.3.3 Constructing a search query

The examiner can construct different expressions of the same basic search element into blocks, combining the characteristics of the subject of the application and the search situation, to construct a search formula by use logical operators to combine the blocks. The combination methods of blocks include full element combination search, partial element combination search and single element search.

 

6.3.4 Adjust search strategy

Examiners generally need to adjust their search strategies according to the search results and the expected direction of novelty and inventiveness evaluation.

 

(1) Adjust the selection of basic search elements

The examiner needs to change, increase, or decrease the basic search elements based on the existing technology and his further understanding of the invention.

 

(2) Adjust the retrieval system/database

When the examiner does not obtain a reference file in a certain search system/database, he needs to re-select the search system/database according to the available search fields and functions, and the characteristics of the expected reference file.

(3) Adjust the expression of basic search elements

The examiner needs to adjust the expression of the basic search elements at any time according to the search results. For example, when adjusting the expression of the classification number, the most accurate lower group is usually used first, and then gradually adjusted to the upper group, the large group or even the small category. The examiner can also find a new suitable classification number based on the search results, or the connection within or between the classification tables. When adjusting the expression of keywords, usually first use the most basic and accurate keywords, and then gradually improve the expression of keywords from three levels of form, meaning, and perspective.

 

The rest of the section has not been modified.

 

XI. Amendments to Section 8.1, Chapter 7, Part 2

Add a paragraph at the end of the Sections 8.1 of Chapter 7 of Part 2 of the Guidelines for Patent Examination, with the following content:

 

Under this principle, when the examiner decides to suspend the search without obtaining the reference documents, he should at least conduct a search in the minimum database. The minimum database should generally include the Chinese patent abstract database, the Chinese patent full-text database, the foreign patent abstract database, the English patent full-text database, and the Chinese periodicals full-text database. For applications in some specific fields, the database dedicated to the field (for example, a chemical structure database) should also be included. If necessary, adjust the scope of the English full-text database and add other non-patent literature databases, such as standards/protocols according to the characteristics of the field. 

 

The rest of the section has not been modified.

 

XII.     Amendments to Section 10, Chapter 7, Part 2

Add a paragraph at the end of the Sections 10 of Chapter 7 of Part 2 of the Guidelines for Patent Examination, with the following content:

 

It should be noted that, as to whether all the subjects of the application belong to the circumstances mentioned above, the examiner still needs to understand the relevant background technology through appropriate ways if necessary, so that a person skilled in the art can make a judgment.

 

The rest of the section has not been modified.

 

XIII.    Amendments to Section 12, Chapter 7, Part 2

Amend the first paragraph of Section 12 of Chapter 7 of Part 2 of the Guidelines for Patent Examination to read as follows:

 

The search report is used to record the results of the search, especially the documents that constitute the relevant prior art, and the search record information related to the search process. The search report uses the form prescribed by the Patent Office. The examiner should clearly record in the search report the main search formula retrieved that is closest to prior art, including the database searched and the search expressions (including expressions of basic search elements and logical operators) executed in the database. The examiner should accurately list the reference documents obtained by the search and the degree of relevance between the reference documents and the subject of the application, and complete other items in accordance with the requirements of the search report form.

 

The rest of the section has not been modified.

 

XIV.    Amendments to Section 3.4, Chapter 8, Part 2

Delete the content of Section 3.4 of Chapter 8 of Part 2 of the Guidelines for Patent Examination. 

 

XV.     Amendments to Section 4.2, Chapter 8, Part 2

Amend the Section 4.2 of Chapter 8 of Part 2 of the Guidelines for Patent Examination to read as follows:

 

After starting the substantive examination, the examiner must first carefully read the application documents, fully understand the overall status of the background technology, and strive to understand the invention accurately. The point is to understand the technical problem to be solved by the invention, to understand the technical solution to the technical problem and the technical effect that the technical solution can bring, and to clarify all the necessary technical features of the technical solution, especially the ones that are different from the background technology. In this way, they can then clarify the improvements made by the invention over the background technology. The examiner may make necessary records while reading and understanding the invention to facilitate further examination.

 

XVI.      Amendments to Section 4.10.2.2, Chapter 8, Part 2

Amend the last paragraph of the Item (4) of the Section 4.10.2.2 of Chapter 8 of Part 2 of theGuidelines for Patent Examination to read as follows:

 

The common knowledge in this field quoted by the examiner in the notice of examination shall be conclusive. If the applicant raises an objection to the common knowledge quoted by the examiner, the examiner shall be able to provide corresponding evidence to prove or explain the reason. In the notice of examination, when the examiner determines the technical features in the claims that contribute to the solution of technical problems are common knowledge, they should usually provide evidence to prove it.

 

The rest of the section has not been modified.

 

XVII.    Amendments to Section 4.11.1, Chapter 8, Part 2

Amend the Item (1) of the Section 4.11.1 of Chapter 8 of Part 2 of the Guidelines for Patent Examination to read as follows:

 

(1) According to the examiner’s opinion, the applicant makes amendments to the application to eliminate defects that may lead to rejection to make the revised application may be granted patent rights. If there are still some defects in the application, the examiner should notify the applicant again to eliminate these defects. If necessary, the review can be accelerated through meetings with the applicant, telephone discussions and other methods (refer to the Sections 4.12 and 4.13 of this chapter). However, except for the case in which the examiner makes official amendments to obvious errors (refer to the Section 5.2.4.2 and Section 6.2.2 of this chapter), no matter what method is used to propose amendments, the written amendment formally submitted by the applicant must be based on.

 

The rest of the section has not been modified.

 

XVIII. Amendments to Section 4.12, Chapter 8, Part 2

Amend the first paragraph of the Section 4.12 of Chapter 8 of Part 2 of the Guidelines for Patent Examination to read as follows:

 

During the substantive examination process, the examiner may invite the applicant to meet to speed up the examination process. The applicant can also request a meeting. At this time, as long as the meeting can achieve beneficial goals, help clarify issues, eliminate divergence, and promote understanding, the examiner should agree to the applicant's request for meeting. In some circumstance, the examiner can refuse the meeting request, for example, the condition that the opinions of both parties have been fully expressed and the relevant facts have been clearly identified through written or telephone discussions, etc. 

 

Amend the title of Section 4.12.1 of Chapter 8 of Part 2 of the Guidelines for Patent Examination from "Conditions for the initiation of a meeting" to "Initiation of a meeting", and delete the following content in this section: 

 

The conditions for holding a meeting are:

(1) The examiner has issued the first notice of examination, and

(2) The applicant requests a meeting at the same time or after responding to the notice of examination, or the examiner sends an invitation to the applicant according to the needs of the case.

 

The rest of the section has not been modified.

 

XIX.    Amendments to Section 4.13, Chapter 8, Part 2

Amend the Section 4.13 of Chapter 8 of Part 2 of the Guidelines for Patent Examination to read as follows:

 

4.13 Telephone discussion and other methods

In the process of substantive examination, the examiner and the applicant can have telephone discussions on the understanding of the invention and the prior art, problems in the application documents, etc. The examiner can also discuss with the applicant through other methods such as video conferences, e-mails, etc. When necessary, the examiner shall record the content of the discussion and save it in the application file.

 

If the content of the amendments agreed by the examiner during the discussion falls within the circumstances described in Section 5.2.4.2 and Section 6.2.2 of this chapter, the examiner can modify these obvious errors ex officio. Except for the content that can be modified by the examiner ex officio, all amendments agreed by the examiner require the applicant to formally submit a written document that has undergone the modification, by which the examiner shall make an examination conclusion. 

 

XX.     Amendments to Section 9.1.1, Chapter 10, Part 2

Delete the Section 9.1.1 of Chapter 10 of Part 2 of the Guidelines for Patent Examination. 

Amend the Section 9.1.1.2 to Section 9.1.1.1 and add a sentence at the end of the paragraph, which reads as follows:

 

Human embryonic stem cells do not belong to the human body at various stages of formation and development.

Amend the Section 9.1.1.3 to Section 9.1.1.2.

 

The rest of the section has not been modified.

 

XXI.    Amendments to Section 3.3, Chapter 3, Part 4

 

Amend the fourth sentence of Section 3.3 of Item (5) of Chapter 3 of Part 4 of the Guidelines for Patent Examination " If it is a combined comparison, and there are two or more combination methods, the specific combination method should be specified." to "If it is a combined comparison, and there are two or more combination methods, the most important combination method should be compared and analyzed first. If the most important combination method is not clear, then default the combination method of the first set of comparison documents is the main way of combining."

 

The rest of the section has not been modified.

 

XXII.  Amendments to Section 7, Chapter 2, Part 5

 

Amend the sentence "It can be supplemented by fax or e-mail on the day of remittance. If complete payment information is added, the remittance date shall be the payment date." in the first paragraph of the Section 7 of the Chapter 2 of the Part 5 of the Guidelines for Patent Examination " to " It should be supplemented by the method and requirements prescribed by the Patent Office on the day of the remittance.” And delete the second paragraph.

 

The rest of the section has not been modified.

 

XXII.    Amendments to Chapter 2, Part 5

Amend the title of Chapter 7 of Part 5 of the Guidelines for Patent Examination "Time Limit, Restoration of Rights, Suspension" to "Time Limit, Restoration of Rights, Suspension, and Examination".

Add the Section 8 to the Chapter 7 of Part 5 of the Guidelines for Patent Examination with the content as follows:

 

8. The order of review

8.1 General principles

For invention, utility model and design patent applications, the preliminary examination shall generally be initiated in the order of the submission of the applications. For invention patent applications, on the basis of subjecting to other conditions for initiating the substantive examination procedures, the substantive examination generally shall be initiated in the order of submission of the substantive examination request and the pay of the substantive examination fees, unless otherwise specified.

 

8.2 Priority review

The applications that involve the industries developed or encouraged by the state or local government, or those are of great significance to the national or public interest, or that have certain needs in market activities shall be examined and processed priorly in the subsequent review process after the applicant submit a request and receive an approval. Where other relevant entities submit a priority review request in accordance with regulations, they shall be dealt with in accordance with regulations. The specific circumstances under which priority examination is applicable are stipulated in the Administrative Measures for Priority Examination of Patent.

 

However, if the same applicant applies for utility model and invention for the same invention and creation on the same day (referring to the filing date only), the patent application for the invention will generally not be given priority review.

 

8.3 Delayed review

The applicant may file a request for delayed examination of patent applications for inventions and design patents. The request for delayed examination of a patent for invention shall be filed by the applicant at the same time as the request for substantive examination. However, the request for delayed examination of a patent for invention shall take effect on the effective date of the request for substantive examination. The request for delayed examination of a design shall filed by the applicant at the same time as the application. The delay period is one year, two years or three years from the effective date of the delayed review request. After the expiration of the delay period, the application will be reviewed in order. When necessary, the Patent Office may initiate the examination procedure on its own and notify the applicant that the delayed examination period requested by the applicant has expired.

 

8.4 Patent Office self-launched

Priority can be given to the patent applications that the Patent Office initiates substantive examination.

 

The rest of the section has not been modified.

 

This decision will take effect on November,1, 2019.