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Examination Guidelines Overhauled

作者:Stephen Yang 浏览:69 发表时间:2010-01-01 00:00:00 来源:Published in China IP Focus, 2010

After the third amendment to the Chinese Patent Law came into effect on October 1 2009, the Implementing Regulations of the Chinese Patent Law and the Guidelines for Examination came into force together on February 1 2010. The Guidelines give detailed provisions and include changes to SIPO’s practice in many aspects.

 

Security examination for filing overseas

 

For inventions or utility models made in China, the Patent Law no longer requires Chinese applicants to file a patent application first in China. Instead, it requires all applicants – domestic or foreign – to go through security examination before they proceed to file patent applications outside of China. To this end, technical solutions of the inventions or utility models must be provided to SIPO. This is similar to the foreign filing licence system in the United States.

 

The Guidelines prescribe in detail the document requirement and the examination process for the three ways of requesting security examination.

 

First of all, if an applicant requests security examination  for filing overseas before or without filing a Chinese patent application, the technical solutions must be provided to SIPO in Chinese, and must be consistent with those in the foreign patent application(s). The Guidelines also suggest that the technical solution sub- mitted for security examination be drafted in the form of a description of a patent application.

The examiner shall issue an office action concerning security examination for filing overseas, which may include one of three opinions: (1) request is deemed to have not been made; (2) filing overseas is allowed; or (3) further security examination is needed and filing overseas shall be deferred. If the applicant does not receive such an office action within four months of filing the request, it may file an application overseas. If the examiner tells the applicant to defer his or her overseas filing, the examiner will conduct further examination and issue a security examination decision on filing overseas. If the applicant does not receive such a decision within six months from filing the request, it may file an application overseas.

 

Second, if an applicant requests security examination on or after filing a Chinese patent application, it does not need to provide the technical solution again. Examination is conducted in the same way as above.

 

Normally SIPO will issue an office action when it receives a request for security examination for filing over- seas. However, this may take some time. On the other hand, practice showed that if an applicant files a Chinese patent application and at the same time requests security examination for filing overseas, SIPO issues the office action together with the filing receipt for the patent application. In other words, the applicants’ waiting times may be much shorter if they choose to file a Chinese patent application and request security examination for filing overseas rather than file a separate request for security examination without filing a Chinese patent application. At the least, by taking this fast track, an applicant could be assured of an office action, whatever the opinion may be, shortly after filing its Chinese application.

 

The third option for an applicant to request security examination for filing overseas is to file a PCT international application, which is deemed as filing a request for security examination at the same time. The application will either follow the regular procedures in PCT international phase, or within three months, receive notification from SIPO that for national security reasons the application will not be processed as an inter- national application, that is the international phase terminates. If the applicant receives such a notification, it is not allowed to file an application overseas.

It is to be noted that SIPO as PCT receiving office accepts PCT applications in either Chinese or English. According to examiners from relevant departments in SIPO, a Chinese language version of the technical solution is not necessary even if the PCT application is filed in English. This means no extra work for those who choose to file PCT applications in English.

 

Hence, since the applicant must prepare a Chinese text of the technical solution if it chooses not to file any application with SIPO, it may be better off simply to file a Chinese patent application, not necessarily as the first filing. In this way, there is no extra work involved and the applicant has the possibility of getting a Chinese patent. For the same reason, filing a PCT application in either Chinese or English is also a better strategy than preparing a Chinese version solely for the purpose of fulfilling the document requirement for security examination. Even if the applicant’s practice is to file PCT applications, filing a separate Chinese application may still be preferred, as in practice, the applicant could get the filing receipt sooner. As mentioned above, requesting security examination for filing overseas at the same time as filing a Chinese patent application results in getting an office action, or even an approval for filing overseas when the filing receipt is issued, which is often earlier than otherwise.

 

PCT national phase application

 

According to the Guidelines, filing Chinese national phase applications with SIPO via facsimile, which was previously allowed, is no longer possible. In the past, for urgent cases, filing via facsimile by midnight gave applicants a few extra hours, which could be vital for preparing the Chinese translation that must be provided at the time of national phase entry. Now the application must be filed during the office hours of SIPO.

 

The Guidelines also affirm SIPO’s position on rules in PCT Implementing Regulations with respect to incorporation by reference and restoration of priority rights. Specifically, the PCT Implementing Regulations allow applicants to add missing items, such as description, claims or drawings by incorporating by reference a previous application, and thus keep the original international filing date. In addition, it allows applicants to restore priority rights if the international filing date is between 12 and 14 months from the priority date. However, China does not recognise either of these rules. At the time of entering Chinese national phase, applicants have a chance to choose either to change the filing date for China and keep the parts incorporated by reference, or to delete those parts. If the applicant does not change the filing date for China upon national phase entry, it is not allowed to maintain the added parts in later proceedings by changing the filing date for China. The only option then for the applicant is to delete the added parts.

 

Hence, applicants who have to rely on incorporation by reference have to carefully evaluate the options before entering Chinese national phase. On one hand, changing the filing date for China and keeping the added parts may risk losing priority. On the other hand, deleting the added parts may result in the application not meeting the sufficiency or enabling requirement, especially considering the Chinese practice is extremely strict in this respect.

 

Voluntary amendment

 

According to Rule 51.3 of the Implementing Regulations, applicants only have limited chances to file voluntary amendments during  prosecution of invention  applications, one at the time of requesting substantive examination and the other within three months from receiving the Notification of Invention Application Entering Substantive Examination Procedure. When an applicant responds to an office action, it cannot introduce any voluntary amendment and can only make amendments to address the issues raised by the examiner.

 

According to the Guidelines, the following amendments to claims are not allowed in response to an office action: voluntarily deleting features to broaden the scope; voluntarily changing features to broaden the scope, such as changing spring to elastic member; voluntarily taking technical solution only found in the description and lacking unity  with  initial  claims as revised claims; voluntarily adding new independent claims which define technical solutions not present in the initial claims; and voluntarily adding new dependent claims which define technical solutions not present in the initial claims. The last scenario is newly added to the Guidelines. This further limits the options for applicants when making amendments to claims.

 

If an unallowable amendment is filed, the examiner will issue an office action to notify the applicant that the amendment is not allowed and request the applicant to submit amendment in compliance with Rule 51.3. If further amendment is still not allowable, the examiner will directly conduct examination on the text prior to amendments and issue the next official communication, that is another office action, a decision of grant or rejection, without giving the applicant further chances to file observations.

Examination ex officio

 

The Guidelines affirm that the Patent Reexamination Board (PRB), which is responsible for handling reexamination (appeal) and invalidation cases, may conduct examination ex officio, which is not limited to the targeted claims, grounds and evidence raised by the relevant party. Unlike the previous version, the new Guidelines further prescribe that for invalidation cases, even if the request for invalidation is withdrawn - for example due to settlement between the concerned parties, the PRB will continue examination and decide to entirely or partially invalidate a patent when it considers such decisions can be made on the basis of the examination that has been conducted. The idea is to remove patents that should not have been granted for public interest.

 

This change may affect the strategy of relevant parties in invalidation proceedings. It is often the case that both the patentee and the opponent take an aggressive approach until the end of the oral hearing before they con- sider the option of settlement. Given this change, either party, especially the patentee, may want to take a less aggressive approach and consider the possibility of settlement before oral hearing. Otherwise, a patentee may end up settling with the opponent but still losing the patent.

 

In addition, since Chinese Patent Law does not pro- vide a post-grant procedure to correct or limit the scope of a granted patent, some patentees may consider partially invalidating their own patents to get a desired scope. In light of this revision, this practice is simply too dangerous and hence not recommended at all.

 

Design patents

 

Patentability standard

First, an absolute novelty standard is adopted: the design must not belong to a prior design. Second, the concept of conflicting applications – an application including an “identical design” and filed by anyone before the filing date of the present application and published on or after its filing date – now extends to design patents. In addition, an inventive step-like standard is added, which requires a design application to be distinctly different from a prior design or combination of features in prior designs.

 

The Guidelines abandon the concept of same or similar designs that was formerly used for both the patentability standard and for judging double patenting. Instead, the concept of the same or essentially the same designs and the concept of distinctly different are used. Specifically, the concept of identical design for the purpose of judging double patenting means the “claimed” designs are the same or essentially the same. The design not belonging to prior design means there is no prior design the same or essentially the same as the present design. The concept of “identical design” in a conflicting application means the same or essentially the same design being disclosed. The Guidelines list examples where designs are considered the same or essentially the same or not distinctly different, to give further explanation of these concepts.

 

Unity

The Patent Law and Implementing Regulations allow up to 10 multiple similar designs for the same product to be put in a single application. To this end, the Guidelines give the definition of similar designs and prescribe that one of the designs should be designated as a basic design and the other designs should be com- pared with the basic design separately for judging similarity.

 

It is to be noted that designs for products in a set may also be filed in a single application. However, the Guidelines clarify that multiple similar designs for products in a set are not allowed in a single application. In this case, applicants are advised to file divisional/separate applications for different products but not for different sets. Otherwise, the applicant may end up with design patents covering similar product sets which may lead to double patenting issues.

 

It is further to be noted that once a design patent is granted for multiple similar designs for the same product or for products in sets, each design in a design patent is independent, which means invalidation of one of them does not necessarily lead to invalidation of the others. In other words, it is possible for a design patent to be partially invalidated.

 

Brief description

The Patent Law prescribes that a design application must include a brief description of the design, which formerly was optional. In addition, the brief description should be used to determine the scope of design patents.

 

The Guidelines prescribe that the brief description should include, among other things, the main design points, which means the distinguishing features of the present design from the prior design. This imposes a challenge to applicants as it remains uncertain how this is used in future litigation to interpret the scope of the design. It is said that examiners are unlikely to impose strict requirements on how this should be drafted and that statements such as “the front view embodies the main points of the design” may suffice.

 

Interestingly, Article 33 of the Patent Law prescribes that amendment to a design application cannot go beyond the scope shown in the initial drawings or photographs. This means contents in the brief description cannot serve as the basis for amendment.

 

Patent right evaluation report

 

As opposed to the old provisions that the court may ask a patentee to provide a search report done by SIPO to the court when it wants to sue someone for infringing its utility model patent, the Patent Law allows the court to require a patentee to provide a patent right evaluation report if it wants to enforce its utility model or design patent.

 

The Guidelines prescribe that the evaluation report should consist of a list of references and a section of comments, which cover all prescribed grounds for invalidation except violation of security examination for filing overseas and conflict of design right with another’s prior right.

 

Unfortunately, the patentee is not given a chance to file its own observations before SIPO issues the evaluation report, which can only happen once. The Guidelines also clarify that the evaluation report is evidence to be used by relevant enforcement bodies and hence the patentee cannot appeal or launch a lawsuit if it is not satisfied with the evaluation report. Instead, the Guidelines allow the evaluation report to be corrected either at the initiative of SIPO or at the request of the patentee. In most cases, the corrected evaluation report can only be issued once. Hence, the patentee is advised to file its grounds for correcting all at once.

 

It is to be noted that the huge number of design patents in China imposes a great challenge to SIPO as on one hand they may receive a high volume of requests for evaluation report for design and, on the other hand, it is very difficult to conduct an accurate search for designs. It is said that SIPO is adopting new systems, possibly one similar to the trade mark search system, to cope with this situation.

 

Genetic resources

 

The Patent Law has provisions with respect to genetic resources in two aspects. First, it prescribes that if an invention relies on certain genetic resources acquired or used illegally, the patent application will be rejected, and if granted, will be invalidated. China is the first country in the world that has such provisions expressly in the patent law. Second, it also requires that the direct source and the original source of the genetic resource shall be indicated in a patent application, if the invention relies on genetic resources. If the applicant cannot provide the original source, it must give reasons.

 

The Guidelines repeat the definition of genetic resource and “rely on” given in the Implementing Regulations and define many terms used to interpret these terms, such as genetic function, genetic function unit, using genetic function, as well as direct source and original source. They also define illegal acquisition and exploitation of genetic resource. The Guidelines further prescribe that for the purpose of disclosing direct source and original source, information such as date, location, method of procurement and details of the provider of the genetic material shall be provided by the applicant.

 

With the definitions given in the Guidelines, it may become clear to many applicants whether their genetic material-related applications are subject to these provisions, as their inventions may or may not use the genetic function of the genetic material. The  applicants are required to indicate on their patent application request form upon filing whether their invention relies on genetic resource and submit a genetic resource disclosure form if it does. The difficulty is that it may not be clear if one particular application falls into this category. Fortunately, the Guidelines allow applicants to provide this information at a later stage in prosecution upon request from examiners.

 

It is worth noting that content in the genetic resource disclosure form is not part of the original disclosure of a patent application and hence cannot be used to evaluate whether the sufficiency requirement is met. Likewise, it cannot be used by the applicant as the basis of amendment to the description or claims of its patent application.

 

More friendly formality and procedural requirements

 

The Guidelines make practice more friendly to applicants in some aspects. For example, applicants are given an opportunity to correct priority claims. Some of the fee items, such as the application maintenance fee and fee for restoration of rights for force majeure, are removed. The way to calculate deadlines is also revised to avoid confusion.

 

This article has highlighted important changes in the 2010 Guidelines. Since some of the changes are brand new, they still need to be tested in practice. It is almost certain that SIPO will in the future revise parts of the Guidelines to make them more reasonable and practical, as it did in the past.

After the third amendment to the Chinese Patent Law came into effect on October 1 2009, the Implementing Regulations of the Chinese Patent Law and the Guidelines for Examination came into force together on February 1 2010. The Guidelines give detailed provisions and include changes to SIPO’s practice in many aspects.

 

Security examination for filing overseas

 

For inventions or utility models made in China, the Patent Law no longer requires Chinese applicants to file a patent application first in China. Instead, it requires all applicants – domestic or foreign – to go through security examination before they proceed to file patent applications outside of China. To this end, technical solutions of the inventions or utility models must be provided to SIPO. This is similar to the foreign filing licence system in the United States.

 

The Guidelines prescribe in detail the document requirement and the examination process for the three ways of requesting security examination.

 

First of all, if an applicant requests security examination  for filing overseas before or without filing a Chinese patent application, the technical solutions must be provided to SIPO in Chinese, and must be consistent with those in the foreign patent application(s). The Guidelines also suggest that the technical solution sub- mitted for security examination be drafted in the form of a description of a patent application.

The examiner shall issue an office action concerning security examination for filing overseas, which may include one of three opinions: (1) request is deemed to have not been made; (2) filing overseas is allowed; or (3) further security examination is needed and filing overseas shall be deferred. If the applicant does not receive such an office action within four months of filing the request, it may file an application overseas. If the examiner tells the applicant to defer his or her overseas filing, the examiner will conduct further examination and issue a security examination decision on filing overseas. If the applicant does not receive such a decision within six months from filing the request, it may file an application overseas.

 

Second, if an applicant requests security examination on or after filing a Chinese patent application, it does not need to provide the technical solution again. Examination is conducted in the same way as above.

 

Normally SIPO will issue an office action when it receives a request for security examination for filing over- seas. However, this may take some time. On the other hand, practice showed that if an applicant files a Chinese patent application and at the same time requests security examination for filing overseas, SIPO issues the office action together with the filing receipt for the patent application. In other words, the applicants’ waiting times may be much shorter if they choose to file a Chinese patent application and request security examination for filing overseas rather than file a separate request for security examination without filing a Chinese patent application. At the least, by taking this fast track, an applicant could be assured of an office action, whatever the opinion may be, shortly after filing its Chinese application.

 

The third option for an applicant to request security examination for filing overseas is to file a PCT international application, which is deemed as filing a request for security examination at the same time. The application will either follow the regular procedures in PCT international phase, or within three months, receive notification from SIPO that for national security reasons the application will not be processed as an inter- national application, that is the international phase terminates. If the applicant receives such a notification, it is not allowed to file an application overseas.

It is to be noted that SIPO as PCT receiving office accepts PCT applications in either Chinese or English. According to examiners from relevant departments in SIPO, a Chinese language version of the technical solution is not necessary even if the PCT application is filed in English. This means no extra work for those who choose to file PCT applications in English.

 

Hence, since the applicant must prepare a Chinese text of the technical solution if it chooses not to file any application with SIPO, it may be better off simply to file a Chinese patent application, not necessarily as the first filing. In this way, there is no extra work involved and the applicant has the possibility of getting a Chinese patent. For the same reason, filing a PCT application in either Chinese or English is also a better strategy than preparing a Chinese version solely for the purpose of fulfilling the document requirement for security examination. Even if the applicant’s practice is to file PCT applications, filing a separate Chinese application may still be preferred, as in practice, the applicant could get the filing receipt sooner. As mentioned above, requesting security examination for filing overseas at the same time as filing a Chinese patent application results in getting an office action, or even an approval for filing overseas when the filing receipt is issued, which is often earlier than otherwise.

 

PCT national phase application

 

According to the Guidelines, filing Chinese national phase applications with SIPO via facsimile, which was previously allowed, is no longer possible. In the past, for urgent cases, filing via facsimile by midnight gave applicants a few extra hours, which could be vital for preparing the Chinese translation that must be provided at the time of national phase entry. Now the application must be filed during the office hours of SIPO.

 

The Guidelines also affirm SIPO’s position on rules in PCT Implementing Regulations with respect to incorporation by reference and restoration of priority rights. Specifically, the PCT Implementing Regulations allow applicants to add missing items, such as description, claims or drawings by incorporating by reference a previous application, and thus keep the original international filing date. In addition, it allows applicants to restore priority rights if the international filing date is between 12 and 14 months from the priority date. However, China does not recognise either of these rules. At the time of entering Chinese national phase, applicants have a chance to choose either to change the filing date for China and keep the parts incorporated by reference, or to delete those parts. If the applicant does not change the filing date for China upon national phase entry, it is not allowed to maintain the added parts in later proceedings by changing the filing date for China. The only option then for the applicant is to delete the added parts.

 

Hence, applicants who have to rely on incorporation by reference have to carefully evaluate the options before entering Chinese national phase. On one hand, changing the filing date for China and keeping the added parts may risk losing priority. On the other hand, deleting the added parts may result in the application not meeting the sufficiency or enabling requirement, especially considering the Chinese practice is extremely strict in this respect.

 

Voluntary amendment

 

According to Rule 51.3 of the Implementing Regulations, applicants only have limited chances to file voluntary amendments during  prosecution of invention  applications, one at the time of requesting substantive examination and the other within three months from receiving the Notification of Invention Application Entering Substantive Examination Procedure. When an applicant responds to an office action, it cannot introduce any voluntary amendment and can only make amendments to address the issues raised by the examiner.

 

According to the Guidelines, the following amendments to claims are not allowed in response to an office action: voluntarily deleting features to broaden the scope; voluntarily changing features to broaden the scope, such as changing spring to elastic member; voluntarily taking technical solution only found in the description and lacking unity  with  initial  claims as revised claims; voluntarily adding new independent claims which define technical solutions not present in the initial claims; and voluntarily adding new dependent claims which define technical solutions not present in the initial claims. The last scenario is newly added to the Guidelines. This further limits the options for applicants when making amendments to claims.

 

If an unallowable amendment is filed, the examiner will issue an office action to notify the applicant that the amendment is not allowed and request the applicant to submit amendment in compliance with Rule 51.3. If further amendment is still not allowable, the examiner will directly conduct examination on the text prior to amendments and issue the next official communication, that is another office action, a decision of grant or rejection, without giving the applicant further chances to file observations.

Examination ex officio

 

The Guidelines affirm that the Patent Reexamination Board (PRB), which is responsible for handling reexamination (appeal) and invalidation cases, may conduct examination ex officio, which is not limited to the targeted claims, grounds and evidence raised by the relevant party. Unlike the previous version, the new Guidelines further prescribe that for invalidation cases, even if the request for invalidation is withdrawn - for example due to settlement between the concerned parties, the PRB will continue examination and decide to entirely or partially invalidate a patent when it considers such decisions can be made on the basis of the examination that has been conducted. The idea is to remove patents that should not have been granted for public interest.

 

This change may affect the strategy of relevant parties in invalidation proceedings. It is often the case that both the patentee and the opponent take an aggressive approach until the end of the oral hearing before they con- sider the option of settlement. Given this change, either party, especially the patentee, may want to take a less aggressive approach and consider the possibility of settlement before oral hearing. Otherwise, a patentee may end up settling with the opponent but still losing the patent.

 

In addition, since Chinese Patent Law does not pro- vide a post-grant procedure to correct or limit the scope of a granted patent, some patentees may consider partially invalidating their own patents to get a desired scope. In light of this revision, this practice is simply too dangerous and hence not recommended at all.

 

Design patents

 

Patentability standard

First, an absolute novelty standard is adopted: the design must not belong to a prior design. Second, the concept of conflicting applications – an application including an “identical design” and filed by anyone before the filing date of the present application and published on or after its filing date – now extends to design patents. In addition, an inventive step-like standard is added, which requires a design application to be distinctly different from a prior design or combination of features in prior designs.

 

The Guidelines abandon the concept of same or similar designs that was formerly used for both the patentability standard and for judging double patenting. Instead, the concept of the same or essentially the same designs and the concept of distinctly different are used. Specifically, the concept of identical design for the purpose of judging double patenting means the “claimed” designs are the same or essentially the same. The design not belonging to prior design means there is no prior design the same or essentially the same as the present design. The concept of “identical design” in a conflicting application means the same or essentially the same design being disclosed. The Guidelines list examples where designs are considered the same or essentially the same or not distinctly different, to give further explanation of these concepts.

 

Unity

The Patent Law and Implementing Regulations allow up to 10 multiple similar designs for the same product to be put in a single application. To this end, the Guidelines give the definition of similar designs and prescribe that one of the designs should be designated as a basic design and the other designs should be com- pared with the basic design separately for judging similarity.

 

It is to be noted that designs for products in a set may also be filed in a single application. However, the Guidelines clarify that multiple similar designs for products in a set are not allowed in a single application. In this case, applicants are advised to file divisional/separate applications for different products but not for different sets. Otherwise, the applicant may end up with design patents covering similar product sets which may lead to double patenting issues.

 

It is further to be noted that once a design patent is granted for multiple similar designs for the same product or for products in sets, each design in a design patent is independent, which means invalidation of one of them does not necessarily lead to invalidation of the others. In other words, it is possible for a design patent to be partially invalidated.

 

Brief description

The Patent Law prescribes that a design application must include a brief description of the design, which formerly was optional. In addition, the brief description should be used to determine the scope of design patents.

 

The Guidelines prescribe that the brief description should include, among other things, the main design points, which means the distinguishing features of the present design from the prior design. This imposes a challenge to applicants as it remains uncertain how this is used in future litigation to interpret the scope of the design. It is said that examiners are unlikely to impose strict requirements on how this should be drafted and that statements such as “the front view embodies the main points of the design” may suffice.

 

Interestingly, Article 33 of the Patent Law prescribes that amendment to a design application cannot go beyond the scope shown in the initial drawings or photographs. This means contents in the brief description cannot serve as the basis for amendment.

 

Patent right evaluation report

 

As opposed to the old provisions that the court may ask a patentee to provide a search report done by SIPO to the court when it wants to sue someone for infringing its utility model patent, the Patent Law allows the court to require a patentee to provide a patent right evaluation report if it wants to enforce its utility model or design patent.

 

The Guidelines prescribe that the evaluation report should consist of a list of references and a section of comments, which cover all prescribed grounds for invalidation except violation of security examination for filing overseas and conflict of design right with another’s prior right.

 

Unfortunately, the patentee is not given a chance to file its own observations before SIPO issues the evaluation report, which can only happen once. The Guidelines also clarify that the evaluation report is evidence to be used by relevant enforcement bodies and hence the patentee cannot appeal or launch a lawsuit if it is not satisfied with the evaluation report. Instead, the Guidelines allow the evaluation report to be corrected either at the initiative of SIPO or at the request of the patentee. In most cases, the corrected evaluation report can only be issued once. Hence, the patentee is advised to file its grounds for correcting all at once.

 

It is to be noted that the huge number of design patents in China imposes a great challenge to SIPO as on one hand they may receive a high volume of requests for evaluation report for design and, on the other hand, it is very difficult to conduct an accurate search for designs. It is said that SIPO is adopting new systems, possibly one similar to the trade mark search system, to cope with this situation.

 

Genetic resources

 

The Patent Law has provisions with respect to genetic resources in two aspects. First, it prescribes that if an invention relies on certain genetic resources acquired or used illegally, the patent application will be rejected, and if granted, will be invalidated. China is the first country in the world that has such provisions expressly in the patent law. Second, it also requires that the direct source and the original source of the genetic resource shall be indicated in a patent application, if the invention relies on genetic resources. If the applicant cannot provide the original source, it must give reasons.

 

The Guidelines repeat the definition of genetic resource and “rely on” given in the Implementing Regulations and define many terms used to interpret these terms, such as genetic function, genetic function unit, using genetic function, as well as direct source and original source. They also define illegal acquisition and exploitation of genetic resource. The Guidelines further prescribe that for the purpose of disclosing direct source and original source, information such as date, location, method of procurement and details of the provider of the genetic material shall be provided by the applicant.

 

With the definitions given in the Guidelines, it may become clear to many applicants whether their genetic material-related applications are subject to these provisions, as their inventions may or may not use the genetic function of the genetic material. The  applicants are required to indicate on their patent application request form upon filing whether their invention relies on genetic resource and submit a genetic resource disclosure form if it does. The difficulty is that it may not be clear if one particular application falls into this category. Fortunately, the Guidelines allow applicants to provide this information at a later stage in prosecution upon request from examiners.

 

It is worth noting that content in the genetic resource disclosure form is not part of the original disclosure of a patent application and hence cannot be used to evaluate whether the sufficiency requirement is met. Likewise, it cannot be used by the applicant as the basis of amendment to the description or claims of its patent application.

 

More friendly formality and procedural requirements

 

The Guidelines make practice more friendly to applicants in some aspects. For example, applicants are given an opportunity to correct priority claims. Some of the fee items, such as the application maintenance fee and fee for restoration of rights for force majeure, are removed. The way to calculate deadlines is also revised to avoid confusion.

 

This article has highlighted important changes in the 2010 Guidelines. Since some of the changes are brand new, they still need to be tested in practice. It is almost certain that SIPO will in the future revise parts of the Guidelines to make them more reasonable and practical, as it did in the past.


Examination Guidelines Overhauled
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地址:北京市海淀区知春路63号51号楼(卫星大厦)1506室 
邮编:100190
电话:010-62966619
传真:010-62983448
网址:www.ipmarch.cn
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