Revisions to Patent Examination Guidelines in China

By Al W. Vredeveld, Shumaker & Sieffert, P.A.

New revisions to the Examination Guidelines[1],[2] issued by the State Intellectual Property Office (SIPO) of the People’s Republic of China (PRC) went into effect on April 1, 2017.  The revised Examination Guidelines significantly change how SIPO examines software-related and business method inventions to expand patent eligibility.

Previously, SIPO allowed software-related inventions to be patented using method claims, apparatus claims defined in terms of means-plus-function elements, and system claims comprising a memory and processor configured to perform functions.  However, similar to US practice, means-plus-function claims are interpreted in China as being limited to embodiments described in the specification.  The restriction of software-related inventions to method and means-plus-function claims may present difficulties during assertion of patents.  Furthermore, defining a system in terms of a memory and processors may be difficult for some use cases, such as where the invention is defined in terms of a series of steps performed by a computer, but actually implemented in hardware without reading instructions from memory.

Prior to the revised Examination Guidelines, SIPO did not allow Beauregard claims.  Beauregard claims typically recite a “computer program product” or a “computer-readable medium.”  In addition, SIPO did not previously allow apparatus claims defined in terms of both hardware and software.  The revised Examination Guidelines relax these requirements.  For instance, it is now possible to claim a “computer program product,” “machine-readable medium,” or an “apparatus comprising a processor configured to execute instructions on a computer-readable medium to perform steps of…”  Additionally, apparatus claims defined in terms of both hardware components and computer programs are now allowed.

However, Part II of Chapter 9, § 2 of the Examination Guidelines states, “Examination shall focus on solutions for which protection is sought, i.e., solutions defined by each claim.” It is still therefore necessary for claims to recite technical solutions; these additional claim forms do not expand patent eligibility into new areas that are considered non-technical.  The revisions instead appear to allow applicants more options in terms of claim forms for the same types of software-related inventions.

SIPO did, however, extend patent eligibility to some business-related inventions.  Whereas the previous Examination Guidelines considered business-related inventions to be ineligible mental processes under Article 25 of the PRC Patent Law, the revised Examination Guidelines now indicate that claims to business-related inventions are allowable provided that the claims recite technical features.  Chapter 1, article 4.2(1) of the previous Examination Guidelines lists several examples of types of inventions that could be considered to recite unpatentable mental processes.  For instance, Chapter 1, article 4.2(2) of the previous Examination Guidelines stated, “Except the cases described above in point (1), if a claim in its whole contents contains not only matter of rule or method for mental activities but also technical features, then the claim, viewed as a whole, is not a rule or method for mental activities, and shall not be excluded from patentability under Article 25.”  The revised Examination Guidelines add a sentence to the end of Chapter 1, article 4.2(2), to clarify that business-related inventions that include technical features are patent eligible: “The right to deal with the business model, if both the contents of the business rules and methods, but also contains technical characteristics, should not be based on Article 25 of the Patent Law to exclude the possibility of its patent rights.”

This change to the Examination Guidelines may make it easier to obtain patent protection in China for inventions related to financial services.[3]  However, because inventive step examination is still carried out on the technical features—which can be difficult to demonstrate for a claim related to a business model—the tangible impact of this revision is unclear.