Newly Amended China Patent Examination Guidelines on Computer-Implemented Inventions (CII), Effective February 1, 2020
Guidelines Patent Examination
The China National Intellectual Property Administration (CNIPA) formally announced on December 31, 2019 the newly amended Patent Examination Guidelines will come into effect on February 1, 2020. The Guidelines were amended to clarify the patentable subject matter in patent applications relating to CII.
Most important amendments
The most important amendments are summarized below:
- Section 6 is added to Chapter 9 of Part II of the Guidelines, and regulates the examination of claims that include abstract features such as algorithm features or business method features.
- When examining a claim, abstract features such as algorithm features or business method features should not be simply separated from technical features. The claim should be examined as a whole to analyze aimed technical problems, utilized technical means, and achieved technical effects.
- If a claim merely includes abstract features without any technical features, the claim should be rejected as a rule or method of mental activity under Art. 25 of the Patent Law.
- If a claim includes any technical features besides abstract features such as algorithm features or business method features, and as a whole does not constitute a rule or method of mental activity, the claim should not be excluded under Art. 25 of the Patent Law and should be examined to see whether the claim constitutes a technical solution under Art. 2.2 of the Patent Law.
- When examining whether a claim including algorithm features or business method features constitutes a technical solution, all features in the claim should be considered as a whole. If the claim aims at technical problems, utilizes natural laws as technical means, and achieves technical effects, the solution of the claim is determined as constituting a technical solution under Art. 2.2 of the Patent Law.
- When assessing novelty or inventiveness of a claim, all features including both technical features and algorithm features or business method features should be considered as a whole.
- Nine examination examples of claims that include algorithm features or business method features are provided.
- The specification including algorithm features or business method features should clearly and completely describe the solution used to solve technical problems. On the basis of technical features, algorithm features or business method features should support each other and interact with the technical features.
- Claims of patent applications involving algorithm features or business method features should recite the algorithm features or business method features that support each other and interact with technical features.
Source: www.cnipa.gov.cnRead More
Patent Cooperation Treaty (PCT)
At their annual meeting in Suzhou on 12 November 2019, EPO President António Campinos and the Commissioner of the China National Intellectual Property Administration (CNIPA), Shen Changyu, agreed to enhance their bilateral co-operation in the framework of the Patent Cooperation Treaty (PCT). The aim is to give patent applicants filing an international patent application in English at the CNIPA as Receiving Office the choice to opt for the EPO as their International Searching Authority (ISA).
It is expected that this new option will be offered in the course of next year, and be implemented as a two-year pilot programme.
EPO AND CNPIA
CNIPA Commissioner Dr. Shen Changyu said: “The EPO and CNIPA are comprehensive strategic partners. For more than 30 years, the two offices have maintained a long-term close co-operative relationship. The fruitful cooperation results greatly benefited users and the public both in Europe and China. The two offices reached consensus on the designation of EPO as an ISA of the PCT international patent application in English filed at the CNIPA as Receiving Office. It will further benefit PCT applicants in China and even around the world. It is also a solid step for China to further enhance its international co-operation on IP protection”.
“This is a significant step forward in our strategic co-operation with China in the area of patents,” said EPO President Campinos. “The EPO is truly honoured by this sign of trust put in its PCT products, and we are committed to delivering the best possible services to patent applicants from China and around the world. This development reflects the longstanding and close bilateral relations with CNIPA, a co-operation which benefits not only our offices, but also companies and inventors seeking to protect their inventions in international markets.”
For Chinese applicants, this step will offer an additional option to optimise their international patent strategy, especially when considering protection in Europe. As a result, Chinese users interested in accelerating the prosecution of their applications will, by selecting the EPO as their ISA, gain up to one year by entering into the European phase earlier and getting direct examination of their files, without the need for a European supplementary search.
EPO-CNIPA co-operation, comparative study on computer-implemented inventions
Bilateral co-operation between the EPO and CNIPA dates back more than 30 years to the signing of a first memorandum of understanding between the two patent offices in 1985. In 2017 the EPO and Chinese office elevated their co-operation to a comprehensive strategic partnership, the first such agreement between two major patent offices.
In recent years, technology related to computer-Implemented inventions (CII) has evolved rapidly, and CII-related patent applications have increased significantly. National IP offices and patent applicants around the world face new challenges as these technologies play a larger role in other areas of innovation. In response to these challenges, CNIPA and the EPO worked together to produce a joint study outlining the similarities and differences of examination practices specific to software-related inventions. The heads of the EPO and CNIPA launched this joint report at a public IP event in Nanjing on Monday. The findings are expected to provide practical guidance to applicants about what to expect when filing CII applications at the two offices.
CNIPA received more than 1.5 million applications for invention patents in 2018. China is now the fifth most active country of origin for European patent applications, with strong growth from Chinese applicants at the EPO in recent years (+8.8% in 2018).
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Itellectual Property Conference of China
The “X Annual Intellectual Property Conference of China” held in Hangzhou, eastern Zhejiang Province, brought important developments in intellectual property for the Asian global power. The director of the ¨National Copyright Administration of China¨, Shen Changyu, said last September 2nd, that the country is working to implement a strict system of intellectual property protection. The purpose is to continue with the development of a satisfactory innovation and business environment in the territory.
New system of compensation
Among the planned measures, in the case of trademarks, the aforementioned director explained that China will apply a very strict new punitive system of compensation. The objective is to fight trademark violations and it will intensify efforts to deal with malicious trademark registrations.
On the other hand, in the case of patents, a patent law review is planned. It is also thought the development of a compensation system for the protection of drug patents. Moreover, the country will also extend the period of protection of designs, and improve the quality and efficiency in intellectual property review.
Consequences of the changes
Within the global context where China is waging a commercial battle against the United States, these changes to be implemented will have consequences not only in the Asian country. They will also have a worldwide impact. This is because China currently occupies the first world place in the number of Patents and trademarks applications filed.
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