2021-08 CNIPA Solicits Comments On Revisions To CN Patent Exam Guidelines

• Published date: 04 August 2021
• Subject Matter: Intellectual Property, Food, Drugs, Healthcare, Life Sciences, Patent, Food and Drugs Law
• Law Firm: Toby Mak
• Author: Mr Toby Mak

The deadline to submit comments is 22 Sep 2021. This was just announced earlier today (3 Aug 2021) at the link below:

www.cnipa.gov.cn/art/2021/8/3/art_75_166474.html

Upon a quick glance, the major changes are as below (in my view):

Those following drugs issues, you may wish to jump to point 8. and 11.

Those interested in designs, you may wish to jump to points 14 and 15.

1. Allow submission of colored figures (Part 4.3, Chapter 1; and Part 7.3, Chapter 2; Part I)
2. Incorporation by reference from priority document - stipulations on time limit (two months from CN application date, or deadline specified by CNIPA) and mechanism (e.g. need to provide Chinese translation of priority document) (Part 4.7, Chapter 1 Part I), and for PCT applications entering China (Part 5.3 Chapter 1, Part III)
3. Restoration, addition, and correction of priority - correction and addition within 16 months from priority date or 4 months of CN filing date; restoration with 2 months from priority deadline (Part 6.2.1, 6.2.3, 6.2.6.2 Chapter 1; Part I), and for PCT applications entering China (Part 5.2.5, Chapter 1, Part III)
4. Stipulation on "bad faith" applications (Part 7.9 Chapter 1; Part I. Part 5, Chapter 1; Part 1. Part 6.1.2, Chapter 8; Part II)
5. Software related invention (Chapter 9, Part II) - add examples and how to determine inventiveness of inventions involving deep learning.
6. Provide leeway for the Re-examination and Invalidation Department (RID) to "adjust" objections in rejection decision during re-examination of an application (Part 4.1 Chapter2; Part IV)
7. Stipulation on participation of party with ownership dispute at invalidation proceedings (Part 3.7, Chapter 3; Part IV)
8. Handling of invalidation petition in light of type 4.1 declaration under the patent linkage mechanism, i.e. generic drug application considers that the drug patent should be invalidated (Part 8, Chapter 3; Part IV) [Note Does not appear to say that the RID would prioritize these petitions]
9. Specify that if a corresponding utility model exists, the corresponding invention patent application would be delayed for examination for 4 years (Part 8.3, Chapter 7; Part V))
10. Specifications on patent term adjustment PTA (Part 2, Chapter 9; Part V) [Note; only specify what do not count as delay that could lead to PTA. No mentioning of whether the relevant PTA decision could be appealed if the patent is not satisfied]
11. Specifications on patent term extension PTE of drug patents (Part 3, Chapter 9...