Main changes in the revised "Guidelines for Patent Examination" (Mar-2017)

SIPO promulgated the decision on the revision of "Guidelines for Patent Examination," and the revised "Guidelines for Patent Examination" came into effect as of April 1, 2017.

Main points in this revision:

1. Protection to the technical solutions of business model patents (Part II, Chapter 1, Section 4.2)

A provision was added such that "regarding business model claims, if a claim contains not only a matter of business rule or method but also a technical feature, the claim shall not be excluded from patentability under Article 25 of the Patent Law".

2. Some provisions on the examination of patent invention applications relating to computer programs (Part II, Chapter 9)

It was clarified that computer programs per se are not to be protected under the Patent Law, but inventions relating to computer programs are to be protected under the Patent Law.  At the same time, it was also clarified that a program (combination of software and hardware) may be included as a constituent element of an apparatus claim.  Thus, a manner of drafting a "medium + computer program flow" claim has become possible.

3. Provisions on experimental data submitted after the filing date (Part II, Chapter 10, Section 3)

The provision "no embodiment or experimental data submitted after the date of filing shall be taken into consideration" was cancelled and replaced with a newly added provision such that "any experimental data submitted after the date of filing shall be examined by the examiner.  The technical effect to be proven by supplementary experimental data shall be sufficiently obtained by those skilled in the art from the published contents of the patent application".

4. Appropriate relaxation of the amendment to the patnet documents in the Request for an Invalidation Trial (Part IV, Chapter 3, Section 4.2)

Regarding claim amendment in the invalidation trial procedure, the provision "the specific manners of amendment are generally limited to deletion of a claim, combination of claims, and deletion of a technical solution" was replaced with "the specific manners of amendment are generally limited to deletion of a claim, cancellation of a technical solution, further limitation to a claim, and correction of an obvious error."  In addition, further limitation to a claim was defined as adding to a claim one or more technical features recited in other claims so as to reduce the scope of protection thereof.

5. Expansion of the range of patent documents allowed for consultation and photocopying (Part V, Chapter 4, Section 5.2)

For the file of a patent application for invention which has been published and whose grant of patent right has not been announced, consultation of notifications, search reports, and decisions sent to the applicant in the substantive examination procedure has been allowed.  For the file of a patent application for which grant of patent right has been announced, the extent allowed for consultation and photocopying was expanded to include priority documents, search reports, and the text of the response submitted by the applicant or parties concerned in response to the notifications (including explanation of amendment and written amendments).

(SIPO, revised version)