On September 23, 2019, the National Intellectual Property Administration (CNIPA) released an amendment to the Patent Examination Guidelines (PEG) and announced that the amended PEG will be effective from November 1, 2019.

The key points of the amendments to the PEG are summarized below for your reference.

1. Time of filing further divisional applications

The previous PEG only specified that, where a divisional application has a unity defect and a further divisional application is filed at the request of the examiner, the applicant should submit a copy of the office action specifying the unity defect or the office action requesting a divisional application issued by the examiner. But the previous PEG did not clearly define the time of filing the further divisional application, which caused different interpretations in practice.

The amendment stipulates that, where the applicant files a further divisional application at the request of the examiner after the divisional application is objected to as lacking unity in a notice requesting a divisional application or a unity objection office action, the time of filing the further divisional application should be examined on the basis of the divisional application that has the unity defect. Hence, it is made clear that the further divisional application can be filed as long as the divisional application with the unity defect is pending. In addition, according to the amendment, a copy of the unity objection office action or the notice requesting a divisional application is no longer required when the further divisional application is filed.

2. Requirements for description of graphical user interface (GUI) designs

In the amendment, more specific requirements on the product name, design images or photos of GUI designs are made. The amendment also simplifies requirements on the views submitted.

(1) Product name The name of a product design having a GUI should indicate the main purpose of use of the GUI and the product it is applied to. Generally, the name should contain keywords of “graphical user interface”. The name of a product design having a dynamic GUI should have keywords of “dynamic". Such names may be, for example, "fridge with temperature control graphical user interface", " dynamic graphical user interface for weather forecast in mobile phone", "display screen panel with graphical user interface for video on demand".

(2) Design pictures or photos

• For designs whose essential features lie only in the GUI, at least one orthographic view of the display panel that contains the GUI should be submitted.

• When it is necessary to clearly show the size, position, and scale relationship of the GUI design in a final product, an orthographic view of the side that involves the GUI of the final product should be submitted.

• If the GUI involves dynamic patterns, the applicant shall submit the orthographic view of the side that involves at least one state of the GUI as the main view; for the other states of the GUI, only the views of key frames of the GUI may be submitted as a state changing map.

• For GUIs for operating projection devices, besides the view of the GUI, at least one view that clearly shows the projection device should be submitted.

(3) Brief description

• The purpose of use of the GUI should be clearly stated in the brief description and correspond to the purpose of use indicated in the product name.

• Where only the orthographic view of a display screen panel containing the GUI is submitted, final products to which the screen panel containing the GUI is applicable should be listed exhaustively.

3. Eligibility of stem cells from human embryos

Industrial or commercial use of human embryos has long been excluded from patentability in China on social morality grounds. The amendment adds an exception for inventions involving stem cells isolated or obtained from human embryos within 14 days after fertilization that have not developed in vivo. Such inventions must not be rejected solely as contrary to social morality.

4. Inventiveness test

In China, a "three-step test" is generally employed to judge whether a claimed invention is inventive in view of the prior art.

Step 1: Determining the closest prior art.

Step 2: Determining the distinguishing features of the invention and the technical problem actually solved by the invention.

Step 3: Determining whether or not the claimed invention is obvious to a person skilled in the art.

In this amendment, when determining the technical problem in the above second step, it is emphasized that the technical problem should not be determined solely on the basis of general technical effects of the distinguishing features or the role of the distinguishing features in the cited reference, but should be determined primarily on the basis of the technical effects achieved by the distinguishing features in the claimed invention. It is also stipulated that, for technical features functionally supporting each other and having functional interactions, technical effects generated by the technical features and their coordination in the claimed invention should be considered as a whole.

5. Burden of proof for common knowledge raised by examiner

This amendment specifically strengthens the examiner's burden of proof, and further clarifies requirements for the examiner's evidence. First, a fundamental principle is that, where the examiner considers technical features which make contributions to solving the technical problem in a claim as common knowledge, corroborative evidence shall generally be provided. Second, another principle is clarified which prioritizes the examiner’s evidence over reasoning where the applicant objects to the examiner's citation of common knowledge, and the examiner should provide evidence where such evidence is possible.

6. Relaxed restrictions on telephone and in-person interviews

This amendment relaxed restrictions on telephone interviews to improve the communication efficiency between the examiner and the applicant, to promote the examiner's understanding of the invention and the prior art, and to improve the examination quality and efficiency.

・In the PEG before the amendment, an interview can be requested only after the first office action has been issued by the examiner. This amendment removes the time limitation, that is, as long as the patent application enters substantive examination, an interview can be initiated regardless of whether or not an office action has been issued.

・In addition to in-person interviews and telephone interviews, the examiner can also discuss with the applicant through video conferences, emails, or other means.

・Telephone interview is no longer restricted to discussions on formality issues. The examiner can also conduct telephone discussions regarding understanding of the invention and the prior art, defects in the application documents, and the like.

・In this amendment, both the examiner and the applicant may initiate an interview. The examiner shall accept the applicant's request for interview as long as the interview can yield beneficial results, conducive to problem clarification, dispute settlement, and mutual understanding. The examiner may refuse the interview request if the opinions of both parties have been fully expressed and relevant facts are clearly identified through written forms, telephone discussions, etc.

7. Invalidation Action

This amendment clarifies that, where a petitioner submits multiple reference documents in the invalidation procedure and specifies the reference documents are used in combination, when there are two or more combinations, the most important combination shall be used in the comparative analysis first, to alleviate the burden of the petitioner to fully explain various combinations of various items of evidence, highlight the focus of the case, improve the examination quality and efficiency, and quickly resolve the disputes between the two parties. Where the most important combination is not specified, the combination of the first set of reference documents is regarded as the most important combination by default.

8. Introduction of deferred examination

This amendment introduces a deferred examination procedure for invention and design applications (except utility models) and stipulates clear time requirements for deferred examination requests and time limits of deferred examinations, to improve examination time management and meet the diversified needs of innovation entities.

・For an invention application, the request for deferred examination shall be submitted at the time of requesting substantive examination by the applicant; for a design application, the request shall be submitted at the time of filing the design application by the applicant.

・The request for deferred examination of an invention application becomes effective from the effective date of the substantive examination request.

・The examination can be deferred by one, two or three years from the effective date of the deferred examination request.

It should be noted that, an examiner from the CNIPA stated, during a presentation of the amended PEG, that the request for deferred examination could not be withdrawn once submitted. Therefore, applicants are advised to make prudent decisions on whether or not to request the deferred examination.