Duan Xiaoling, March 20, 2020

Statistics

On January 14, 2020, China’s National Intellectual Property Administration (CNIPA) released the annual statistics of 2019: a total of 1.401 million patent applications for inventions are filed, of which 157,000 are filed by foreign applicants, accounting for 11.2% (up 6% year-on-year). The CNIPA’s monthly statistics indicates that the numbers of patent applications for inventions, utility models and designs are 164,538 (up 4.1% year-on-year), 300,529 (up 31.8%) and 67,393 (down 3.1%) in January 2020. However, against the backdrop of coronavirus pandemic, the application numbers tumbled in February to 60,203 (down 31.6% year-on-year), 91,276 (down 30%) and 21,013 (down 49.4%). Likewise, the number of patent applications for inventions filed by foreign applicants in the first two months of 2020 decreased 22.3% from the same period of last year.

In response to the growing concerns over the quality of domestic patent applications in the international patent community, CNIPA has been ramping up efforts to encourage applicants focus more on the quality rather than the number of patents they file. In 2019, the total number of applications for inventions has witnessed a 9% decrease from 2018. The average granting rate also drops 9% to 44.3% in 2019. Among the 453,000 patents for inventions granted by CNIPA, 20.3% are filed by foreign applicants, which is much higher, as compared to their proportion (11.2%) in the total filing number.

Updates on CNIPA’s Latest Patent Practice

The CNIPA has revised the “Patent Examination Guidelines” twice in 2019 in an attempt to promote quality and efficiency in patent examination, support technological innovations and cater to the patent protection needs in new industrial sectors. These revisions became effective as of November 1, 2019 and February 1, 2020 respectively.

The revisions brings notable changes to the patent prosecution practice in the biotechnology and computer program fields. For the technology involving stem cells isolated or obtained from human embryos within 14 days after fertilization (i.e., not developed in vivo), it should not be excluded from patent protection. For an invention comprising computer algorithm or business rule/method, if the claimed invention contains any technical feature, it shall be assessed as a whole to be eligible subject matter. In the assessment of novelty and inventiveness, the algorithm or business rule/method may be factored in to ascertain its contribution to the technical solution, provided that it is mutually supportive in function and is mutually interactive with the said technical feature.

The revisions also specifies the methodology of examiner’s prior art search and that of inventiveness assessment. The role of evidence in support of “common knowledge” used for raising objections or rejections is also elucidated, i.e., the examiner needs to produce evidence, if the applicant opposes the common knowledge used, or if the technical feature contributing to the technical solution of the claimed invention is objected as common knowledge.

The revisions adds more flexibility to the examination procedures, allowing the applicant to opt to accelerate or defer the process. Applicants or their agents (if such service is retained) may reach out to the examiner via telephone, email, and video conference, or request face-to-face interview with examiner, to discuss or clarify both formal and substantive issues in the patent applications where necessary.

It is worth noting that in practice, the examiner tends to raise more objections to inventiveness or non-obviousness of the claimed inventions, with Rejection Decision increasingly citing lack of inventiveness rather than other grounds that may result in rejection in substantial examination. It corroborates with the CNIPA’s shift of focus to assess substantive technical improvement of the claimed invention in examination procedure.

Takeaways of CNIPA’s 2020 Patent Objectives

On March 5, 2020, CNIPA released its 2020 Patent Objectives and vows to take below measures:

1) Continuing its efforts in the fourth amendment to the Patent Law, enhancing the role of administrative adjudication for handling patent infringement disputes and promoting routes such as arbitration, mediation, joint punishment, among others to solve disputes.

2) Improving examination quality of utility models and designs to promote user satisfaction and revoking the financial incentives tied to the applications of utility models and designs nationwide.

3) Facilitating the upgrading of smart patent examination and search system and catering to diversified demands in respect of patent examination through prioritized examination, patent prosecution highway (PPH), deferred examination, among others.

4) Shortening the examination period for “high value” patent applications within 16 months by the end of 2020.

5) Installing long-term regime to curb “abnormal” patent applications, such as copying existing technologies, or filing a large number of utility models or designs with identical or extremely similar technical contents or drawings, and the like.

6) Punishing patent agents filing “abnormal” patent applications on the applicants’ behalf or those patent agents enabling the applicants to swindle financial aids or subsidy by fraudulent means.

Apart from the aforesaid welcome practice and measures, also worth noting is that the examiner, for the sake of efficiency, may tend to close a case with less office actions. Without amendments, the examiner may issue rejection decision after the 2nd Office Action. Furthermore, the examiner may tend to apply stricter standards in the assessment of inventiveness. Under such context, applicants are advised to use the reexamination proceeding before the Reexamination and Invalidation Department of CNIPA (previously known as the Patent Reexamination Board) to seek remedy. Reexamination proceeding allows applicants to submit arguments, supplementary evidence or amend the claims as well as the description.

PTL: Patent Law of P.R.China

PDF file: n° 1 News: PTL∣CNIPA’s Latest Patent Practice and 2020 Patent Objectives