Key Amendments in the Guidelines for Patent Examination, 2019
I. Broadening the patentable subject matters related to human embryonic stem cells
Previously, neither an embryonic stem cell of human beings nor a preparation method thereof can be granted a patent right (Part 2, Chapter 10, 188.8.131.52), and no such relevant descriptions can be put into the Description.
In the amended Guidelines, this regulation is removed and it is clearly stated:
"However, if the invention is to use human embryos that have not undergone in vivo development and are within 14 days of fertilization to separate or obtain stem cells, it cannot be rejected on the ground of ‘violation of social morality’."
It is also added in the amended Guidelines that: human embryonic stem cells do not belong to human body at the various stages of its formation and development.
Note that human body, at the various stages of its formation and development, cannot be granted a patent right, because it violates social morality. Meanwhile, an embryonic stem cell of an animal, an animal at the various stages of its formation and development, such as a germ cell, an oosperm, an embryo and the like, belong to the category of "animal variety" and cannot be granted a patent right either.
It can thus be concluded that, a stem cell, separated or obtained from human embryos that have not undergone in vivo development and are within 14 days of fertilization, and the method of separating or obtaining such a stem cell, should be patentable.
This is a major amendment in the biological field and is definitely a good news for related bioenterprises.
II. Emphasizing the entirety of the technical solution in the inventiveness evaluation
In Chinese patent practice, usually the three-step approach is used to evaluate the inventiveness of an invention, that is, first, determining the closest prior art; second, determining the distinguishing features of the invention and the technical problem actually solved by the invention; and third, determining whether or not the claimed invention is obvious to a person skilled in the art.
In the amended Guidelines, this part is not substantially changed. However, it specifies that “the technical problem actually solved by the invention” should be determined based on “the technical effect achieved by the distinguishing features in the claimed invention”, and emphasizes that:
“For the technical features that functionally support each other and interact with each other, said features and their relatioship should be considered as a whole for evaluating the technical effect achieved thereby in the claimed invention.”
This amendment certainly provides basis and a good point for the applicant to argue against the examiner’s objection when the objection is made by isolating each distinguishing technical feature, determining the technical problem based on the technical effect achieved by each distinguishing technical feature separately and arriving at the conclusion of obviousness.
As for the examiners, this requires them to take one claim as one complete technical solution by sufficiently considering the correlation between technical features for evaluating the inventiveness of a claim.
III. Strengthening the examiner's burden of proof of common knowledge
It is added in this amendment that:
In the Office Action, if the examiner considers a technical feature that contributes to the solution of the technical problem of a claim as a common knowledge, the examiner usually shall provide evidence.
This limits to a certain extent the abuse of common knowlege by examiners to object to the inventiveness of an invention, especially for key technical features.
IV. Refining requirements on product design applications involving graphical user interface (GUI)
A new section is added into the Guidelines providing detailed requirements on product design applications involving GUI, making it more operable for both applicants and examiners.
It is clearly set out in this section that a product design that involves GUI refers to the design of a product, of which the key point includes GUI. That is to say, the carrier of the design must be a product, and the product has a limiting effect on it.
Specifically, the amended Guidelines stipulates, inter alia: (1) the name of the product design that involves GUI should indicate the main purpose of the GUI and the product it is applied to, (2) the submitted pictures or photos should meet certain requirements, and (3) if only the orthographic view of the display screen panel containing the GUI is submitted, the final product to which the display screen panel containing the GUI is applied should be exhausted.
V. Introducing delayed examination
A new section is added into the amended Guidelines, describing the order of examination, including standard examination, prioritized examination, and delayed examination.
For detailed requirements on prioritized examination, reference should be made to MEASURES FOR THE ADMINISTRATION OF THE PRIORITIZED EXAMINATION OF PATENTS (2017).
The amended Guidelines states that the invention application in a pair of invention application and utility model application that involve the same inventive concept and are submitted the same day normally cannot be preferentially examined.
Further, the amended Guideline introduces delayed examination which allows the applicant to request a delayed examination for invention and design patent applications. For an invention application, such a request should be filed when filing the request for substantive examination. For a design application, such a request should be filed at the filing date. The applicant can request a 1-, 2-, or 3-year postponement of the examination.
VI. Relaxing restrictions on the timing for holding an interview
Before the amendement, the Guideline required that the interview between an examiner and an applicant can only take place after the examiner had issued the First Office Action, then either the examiner may invite the applicant to have an interview or the applicant may request an interview at the time of or after filing the responses to the Office Action.
The amended Guidelines removes this restriction and allows more flexibility for applicants and examiners conducting necessary interviews.