On March 2, 2017, the State Intellectual Property Office of the P.R.C. (SIPO) issued a Decision on amending “Guidelines for Patent Examination” (Guidelines). In accordance with this Decision, the newly revised “Guidelines for Patent Examination” came into effect on April 1, 2017.

In the newly revised Guidelines, it is explicitly prescribed that an invention involving computer programs is not the same as the computer program per se, which broadens the scope of eligible subject matters in this field. An invention involving computer programs refers to a technical solution which is wholly or partly based on the processing flow of computer programs to control or process external or internal objects of a computer. But computer program per se refers to a coded instruction sequence, a symbolized instruction sequence, a symbolized statement sequence, source programs, and object programs, etc. For one acceptable format of claims in relation with computer programs, it can be drafted as “medium + computer program flow”.

For implementing the new provisions in the revised Guidelines, the SIPO announced that “there is no transitional period, and they are applied to all the pending applications”. In other words, the new provisions are applicable to all new applications filed on or after April 1, 2017 as well as all the pending applications under the examination stage.

Upon implementation of the newly revised Guidelines, it is suggested that the patent attorneys and the applicants should pay attention to those patent applications involving computer programs. When such applications for inventions are handled during the examination procedure, there will be opportunities to make appropriate amendments, provide statements and/or file divisional applications, in order that the related subject matter may obtain prospect of being granted and thus can be protected by China’s patent law.

We take a Chinese patent application for invention as an example and explain how the new patent practice in the computer related area works. In this application, the independent claim 11 asks for “a non-transitory computer readable medium having stored thereon software instructions that, when executed by a processor, cause the processor to generate control signals for controlling exterior lights of a controlled vehicle, by executing the steps comprising:…”, and claims 12-15 are dependent from the independent claim 11.

Concerning this application, the examiner issued a First Office Action on February 24, 2016, in which claims 11-15 are objected as belonging to the subject matter for which no patent rights shall be granted. The reason for such an objection is that all the contents defined in claims 11-15 merely relate to computer program per se. When responding to the First Office Action on July 8, 2016, the applicant deleted claims 11-15 to conform to the prescription of the Guidelines at that time.

Nevertheless, under the newly revised Guidelines, claims 11-15 can be eligible subject matters because they actually intend to protect the computer readable storage medium corresponding to the computer flow defined in each step of the method claims, and thus they relate to the inventions involving computer programs rather than computer program perse.

Taking the advantage of no transitional period for implementing the newly revised Guidelines, the applicant, as suggested by the patent attorney, took the opportunity of responding to the Second Office Action on May 23, 2017 to add back the deleted claims 11-15 into the application. To facilitate the granting procedure, the applicant also submitted convincing arguments in support of the inventiveness of these claims over the prior art cited in the First Office Action. As to these amendments and arguments presented by the applicant, the examiner did not raise any further objections except some formality issues in the following office action. Finally, all the claims including claims 11-15 of the above Chinese patent application have been allowed.

In another Chinese patent application, claim 15 asks for “a non-transitory tangible computer readable medium having stored thereon software instructions that, when executed by a processor within a vehicle, cause the processor to distinguish between tail lights of another vehicle and a flashing red stop light, by executing the steps comprising…”. With regard to this application, the examiner issued a First Office Action on December 29, 2016, in which the following was also pointed out: “claim 15 and its dependent claims 16-20 ask for a ‘non-transitory tangible computer readable medium’; nevertheless, all contents defined in these claims merely relate to a computer program per se and substantially relate to rules and methods for metal activities which do not belong to the subject matter under the patent protection”. Since the deadline for responding to the First Office Action was due on May 13, 2017, it would be possible to change the situation positive according to the newly revised Guidelines. The attorney advised the applicant to retain claims 15 as well as its dependent claims 16-20 by submitting the corresponding arguments. After the response, the examiner did not raise further objection regarding the issue of ineligible subject matter in the Second Office Action, and merely raised the inventiveness objections. Currently, this Chinese patent application is under examiner’s evaluation of inventiveness.

From the above, it can be seen that under the newly revised Guidelines, we have been successful in the patent application cases in which claims are drafted as “medium + computer program flow”.

In summary, under the newly revised Guidelines, when drafting claims involving technical solutions “wholly based on the process of computer programs”, the applicants are permitted to select one of the following claim formats: (i) method claims; (ii) apparatus claims including computer programs; (iii) program modular architecture claims; and (iv) “medium + computer program flow” claims. These types of claims may be allowable. However, attention needs to be paid regarding the clarity of the claims entitled “program products”. They may be construed as having different meanings, including programs per se, medium having programs stored thereon, electronic device running the programs, etc., which renders the claims unclear for their subject matter and thus may not be allowable.

The newly implemented provisions relax the restrictions as to the subject matter of the invention involving computer programs and provide a flexible route for filing patent applications. This will enhance the patent protection in China and be beneficial for both international and domestic applicants. In the future practice, as to patent applications for inventions in such field, the applicants need to pay more attention to the substantive issues, such as novelty, inventiveness and claim support, and especially inventiveness of the claimed invention.

Contributors: Ms. Guan Lili