Patent prosecution strategies under China’s new Implementing Regulations and Examination Guidelines

On January 20 2024, the newly revised Implementing Regulations of the Patent Law of the People’s Republic of China and Guidelines for Patent Examination came into effect, subsequent to the fourth revision of the Patent Law, which took effect about two and a half years earlier. This article outlines some key changes under these new provisions and relevant strategies that can be adopted during the prosecution of patent applications to better serve the needs of applicants.

Partial design became eligible for patent protection in China from June 1 2021 through the fourth revision of the Patent Law. The new Implementing Regulations and Guidelines provide further guidance as to the requirements for partial design applications.

The new Guidelines stipulate that the claimed part shall constitute a relatively independent region or a relatively complete design unit. Based on this rule, in practice, the examiners typically require the claimed part to be demarcated as a closed area, having a closed outer boundary shown in solid and/or dash-dot lines.

A limitation to the timing of amendments is also stipulated. In the case of filing a Chinese design application claiming priority, the following amendments from the priority application are allowed at the time of filing the application without affecting the priority claim:

• Converting a full product design (integral design) to a partial design;

• Converting a partial design to a full product design; and

• Shifting protection from one part to another part of the same product.

The same amendments are also allowed within the time window for voluntary amendment –i.e., within two months from the filing date of the design application – but they will not be allowable when responding to an office action or filing divisional applications. Thus, applicants seeking to change the claimed part after filing a design application should adhere to the deadline for voluntary amendment to ensure that the replacement drawing is filed within the two-month window.

The new Guidelines make it clear that a design related to a graphical user interface (GUI) can be filed in various forms based on practical need.

The most consequential benefit brought by this amendment is that the product on which the GUI is displayed can be omitted from the drawing(s), thus minimising product-related limitations. Moreover, the underlying product may simply be described as “an electronic device” in the brief description without being restricted to a particular type of product. Understandably, submitting drawings exclusively depicting the GUI has emerged as a preferred filing strategy for applicants seeking broad protection, especially among internet-based enterprises for which the GUI itself embodies the core design concept.

The Hague Agreement Concerning the International Registration of Industrial Designs (the Hague System) came into force in China in May 2022. The examination standards set forth in the new Guidelines for international design applications designating China generally align with those for China’s national design applications. Analogous to the brief description of national applications, an international design application designating China shall include a statement of the characteristic features of the design, such as in the manner of “the characteristic features of the design lie in the shape”.

However, while the Hague System allows up to 100 designs belonging to the same Locarno class to be included in a single international design application, the Chinese practice imposes stricter limitations, allowing only a maximum of ten similar designs in a single application.

For similarity determination, the Guidelines state that two designs will be deemed similar if the differences between the two are simply minor changes, a conventional design of the type of product, a repetitive arrangement of design units, conventional changes in the position and/or proportion of the partial design in the whole product, or an alteration only in the colour, etc.

Where the designs in an international application are not considered similar, a divisional application (or applications) may be required. However, filing similar designs across multiple applications may involve the risk of double-patenting rejections. Thus, it is advisable that applicants strategically group designs by similarity in the initial filings to optimise protection and minimise procedural hurdles.

The new Guidelines recognise a “computer program product” – which shall be understood as a software product that primarily implements its solution through computer programs – as an eligible subject matter for invention patents. This amendment makes it possible to protect software transmitted, allocated, and downloaded in the form of a signal through the internet.

More detailed criteria are provided in the new Guidelines for determining whether a solution qualifies as a “technical solution” eligible for patent protection. Specifically, a claimed solution meets the eligibility requirements if it involves improvements to AI or big data algorithms that demonstrate a specific technical linkage to the internal architecture of a computer system, and can solve the technical problem of how to improve the hardware computing efficiency or execution performance. Regarding this point, an example relating to “a training method for a deep neural network model” has been added for applicants’ reference.

Furthermore, claims involving field-specific big data applications may meet the eligibility requirements if they employ classification, clustering, regression analysis, neural networks, etc. to uncover inherent data correlations governed by laws of nature, thereby resolving technical problems related to improvement of reliability or accuracy of big data analysis within a specific field of application and achieving corresponding technical effects. Two positive examples involving “a method for analysing the usage trend of electronic vouchers” and “a method for knowledge graph reasoning” and a negative example involving “a method for predicting the price of financial products” have been added to provide specific guidance.

To optimise the chance of success during patent examination, applicants should clearly articulate how the claimed solution leverages laws of nature to achieve field-specific technical advancements. A detailed description of the mechanisms driving improvements in aspects such as hardware efficiency, data processing accuracy, and system performance will help examiners to recognise the compliance of the invention with statutory requirements for patent eligibility.

Deferment of examination for invention and design patent applications was first introduced in 2019 through an amendment to the Guidelines. The new Implementing Regulations extend the application of deferment to all kinds of patent applications, including utility models, and the new Guidelines provide more details on the subject. For invention patent applications, a deferment of one year, two years, or three years may be requested at the time of requesting a substantive examination; for utility model applications, a deferment of one year may be requested at the time of filing the application; for design applications, the period of the deferment can be selected on a monthly basis from one to 36 months, and the deferment request has to be made at the time of filing the application.

It is noteworthy that under current practice, granted deferment requests do not postpone the issuance of the Notification of Entering Substantive Examination Procedures and thus do not extend the statutory deadline for voluntary amendments for invention patent applications. For utility model and design applications, the two-month window for voluntary amendments from the filing date also remains unchanged.

The new Guidelines also provide for flexibility in withdrawing a deferment request before the expiry of the deferment period, thereby reinstating the application into the examination queue. Notably, deferment requests incur no official fees.

For applicants, deferment of examination can be adopted as a cost-effective strategic tool for adapting to evolving business needs. For instance, it affords additional time to refine products, conduct market analyses, or monitor competitor activities before finalising patent claims, ensuring that the protection aligns with commercially viable iterations. Additionally, as divisional applications can only be filed during the pendency of the parent application, with few exceptions, deferring the examination of the parent application may prolong the period during which divisional applications can be filed voluntarily.

The new Implementing Regulations make available the restoration of the right of priority for invention and utility model applications if the request is filed within two months from the expiry of the 12-month priority period. This remedial procedure requires that the right of priority is claimed at the time of filing the application, and that the applicant provide a “justifiable reason” for making the restoration request, which, in practice, may lean towards a low standard, including unintentional omission of the deadline.

This mechanism could be a critical remedy in the case where the 12-month priority period was unintentionally missed. It also provides strategic flexibility, allowing additional time to decide whether to file a Chinese application.

Notably, filing an application with a restored right of priority extends the term of patent protection by up to two months, as the term of protection is calculated from the Chinese filing date. This extension may be of particular value for pharmaceutical applicants seeking to maximise market exclusivity.

Incorporation by reference is provided in the new Implementing Regulations as an additional remedy for applicants to rectify missing or erroneous elements in the initially filed application by referencing the priority document within a two-month window. This process mandates a right of priority claimed at the time of filing the application, accompanied by a statement of incorporation by reference.

Restoration of the right of priority and incorporation by reference cannot be utilised simultaneously. Furthermore, once the deadline for requesting restoration of the right of priority or incorporation by reference has expired, the opportunity to invoke these remedies is permanently lost and cannot be restored.

The revised Patent Law provides that where an invention patent is granted after a lapse of four years from the filing date and after a lapse of three years from the date of the request for substantive examination, the term of the patent can be extended, upon request of the patentee, to compensate for the unreasonable delay in the granting process of the invention, except for an unreasonable delay caused by the applicant.

In the new Guidelines, some typical circumstances affording no compensation are stated, including delays caused by:

• Failure to respond to a notification issued by the patent office in a timely manner;

• Deferment of examination;

• Incorporation by reference; and

• A re-examination proceeding during which the application is amended.

The new Implementing Regulations abolish the 15-day mailing grace period for presumed receipt of patent office communications transmitted via electronic channels.

Given the prevailing adoption of electronic filing systems by a vast majority of applicants, this change necessitates more immediate attention to official correspondence and timely responses to meet the shortened deadlines.

The new Guidelines require that in addition to determining whether a utility model or design application obviously lacks novelty, the examiner shall also determine whether the utility model or design application is definitely not inventive over the prior art or not “significantly different from prior design or combination of prior design features”.

This change reflects the commitment of the patent office to enhancing patent quality through more rigorous examination protocols. Applicants may anticipate intensified scrutiny of utility model and design applications throughout the prosecution proceedings.

In the new Guidelines, circumstances where a disclosure does not destroy the novelty of an invention, a utility model, or a design are expanded to include a first-time disclosure made in the public interest during national emergencies or extraordinary circumstances. This amendment takes into consideration urgent societal needs while safeguarding intellectual property rights under critical conditions.

Additionally, the definition of “specified academic or technical conferences” permitting non-prejudicial disclosures has been updated. Beyond academic or technical conferences hosted by relevant competent departments of the State Council or national academic organisations, academic or technical conferences hosted by international organisations recognised by relevant competent departments of the State Council are now explicitly included. This revision harmonises domestic patent frameworks with globally recognised collaborative platforms, which helps to foster cross-border innovation while maintaining rigorous novelty standards.

In re-examination proceedings, the interlocutory review phase was historically conducted by the same examiner responsible for the initial decision on rejection. Under the new Guidelines, this task may be assigned to a different examiner. This procedural modification allows applicants an opportunity for fresh scrutiny of rejected applications by examiners potentially possessing alternative technical or design perspectives.

The latest amendments to China’s patent practice demonstrate continued efforts in balancing robust intellectual property protection with public interest. On the part of the applicants, close tracking of evolving examination standards and early-stage consultation with local counsel will remain critical in adapting to these developments. By proactively adjusting prosecution strategies in response to these updates, applicants can mitigate risks while maximising patent value.