Ke LI

The State Intellectual Property Office (SIPO) of China released the proposed revision to Guidelines for Patent Examination on October 27, 2016 for public comments, which includes some drastic changes to examination practice on patent applications related to computer programs or business methods (hereinafter referred to as “program-related applications” and “business-related applications” respectively). Regarding program-related applications, the proposed revision mainly sets forth the following views: “a computer program per se” is not identical to “an invention related to computer program”; a claim drafted in the format of “medium plus computer program” is patent eligible; and the constituting parts of an apparatus claim may be computer programs. Regarding business-related applications, the proposed revision clarifies that an invention related to business methods is not definitely unpatentable, and if a claim of a business-related application recites certain technical features, the examiner shall not reject the claim on the ground that it belongs to “rules and methods for mental activities” under Article 25 of the Chinese Patent Law. In general, the proposed revision indicates that SIPO is becoming more and more flexible and liberal on examination of program- or business-related applications, and the patent prosecution strategies or even patent drafting strategies of the applicants for these kinds of patent applications need to be adjusted accordingly.

Regarding program-related applications

According to the Guidelines for Patent Examination currently in effect, a computer program per se, a computer readable medium defined only by computer programs recorded thereon, or an apparatus claim containing computer programs as constituting parts is not patentable.

With respect to a computer program per se, the proposed revision still prescribes that it is not patent eligible. In practice, a claim whose title of the subject matter is “a computer program”, “computer program instructions”, etc. is usually considered as a claim directed to a computer program per se by the Chinese examiners and thus is not patent eligible.

With respect to a computer readable medium defined by computer programs recorded thereon, the Guidelines for Patent Examination currently in effect prescribe that a computer readable storage medium that is merely defined by computer programs recorded thereon (i.e., not defined by the structural features of the computer readable medium such as layer composition, magnetic channel spacing, materials, etc.) is not patent eligible because it essentially involves rules and methods for mental activities under Article 25 of the Chinese Patent Law. In this proposed revision, it is prescribed that a claim drafted in the format of “medium plus computer program” (for example, a claim directed to a computer readable medium comprising a computer program recorded thereon) is patent eligible. So, if the applicants wish to obtain a patent covering this kind of computer readable medium in China in the future, they may consider taking advantage of the chances of voluntarily amending the application documents (for example, at the time of entering the Chinese national phase of a PCT patent application, at the time of filing request for substantive examination, or within three months upon receipt of official notification of entering into substantive examination proceeding after the request for substantive examination is filed) to add claims in the format of “medium plus computer program”. For those applications under prosecution now, the applicants might take advantage of these changes also by trying to maintain the patent applications pending as long as possible (for example, by requesting time extensions, utilizing the restoration procedure or even filing a divisional application) until the proposed revision takes effect.

An apparatus claim containing computer programs as constituting parts (for example, an apparatus comprising a processor and a computer program which can be executed by the processor) is not allowable in the current practice. To overcome the objections raised by the Chinese examiners, this kind of claims are usually amended into apparatus claims in means-plus-function format based on the process implemented by the computer programs. However, in some cases, a program-related invention is achieved by both hardware and software improvement, and thus it is often difficult to redraft an apparatus claim in means-plus-function format because such type of claim is construed by SIPO as a virtual function module architecture which cannot involve hardware improvement. If this proposed revision comes into force, an apparatus claim comprising computer programs as constituting parts will be allowable, and the applicants may draft an apparatus claim relating to computer programs in a more natural way.

To sum up, the proposed revision will provide the applicants with more ways to protect an invention in relation to computer programs, although a computer program per se is still not patentable.

Regarding business-related applications

Along with the development of Internet technologies, new business models in the fields of finance, insurance, securities, advertisement, management, etc. are springing up in the world. These new business models significantly improve the efficiency of resource allocation and reduce social costs, and thus SIPO hopes to provide encouragement and proper patent protection for technology innovations involved in these business models as a positive response. So, the proposed revision clarifies or emphasizes that an invention related to business methods is not definitely unpatentable, and if a claim of a business-related application recites certain technical features, the examiner shall not reject the claim on the ground that it belongs to “rules and methods for mental activities” under Article 25 of the Chinese Patent Law. The proposed revision in this regard is actually consistent with the Guidelines for Patent Examination currently in effect and the current examination practice of SIPO, but it signifies that SIPO is trying to relax some examiners’ very rigorous examination standards on business-related applications, and hopes to provide a proper patent protection for them.

In fact, the SIPO’s examination practice on business-related applications has changed somewhat in recent years. In the past, business-related applications which do not involve technical features (i.e., applications which merely involve pure business rules or methods) were usually rejected by the Chinese examiners on the ground that they belonged to rules and methods for mental activities under Article 25 of the Chinese Patent Law, and those which involve some technical features (for example, computers, servers, etc.) were usually considered by the Chinese examiners as not eligible for patent protection because they did not belong to technical solution under Article 2.2 of the Chinese Patent Law. Both Article 25 and Article 2.2 of the Chinese Patent Law relate to a determination of whether the subject matter is patent eligible, which mainly depends on the examiner’s subjective judgement. Therefore, once the examiner has determined that the claimed subject matter is not patent eligible, there would be little chance of persuading the examiner to change his mind. However, in a couple of recent years, we noted that, for business-related applications which involve some technical features, SIPO has changed its examination practice and tended to raise prior art rejections, rather than simply assert that they are not patent eligible. Although, according to our practice, when assessing the inventive step of business-related applications, the Chinese examiners tend to ignore most of business-method features, if not all, intentionally or unintentionally by alleging that they are just conceivable for a person skilled in the art or are just common knowledge in the art and thus cannot render the solution inventive over the prior art, there is certain room left for making arguments by the applicants compared to subject matter rejections raised by the examiners.

According to this proposed revision, a patent application related to pure business rules or methods (i.e., without any technical feature involved) still will be patent ineligible in view of Article 25 or Article 2.2 of the Chinese Patent Law. For those involving some technical features, the examiner will not be allowed to reject them based on Article 25 of the Chinese Patent Law. According to the current trend of examination practice of SIPO, we predict that more and more Chinese examiners will choose to search the prior art and raise prior art rejections, although neither the Guidelines for Patent Examination currently in effect nor the proposed revision prohibits the examiners from rejecting them based on Article 2.2 of the Chinese Patent Law (i.e., not belonging to a technical solution).

Therefore, it is preferable for the applicants to disclose more technical features associated with the business rules or methods when drafting a business method related patent application, and recite them in the claims. More technical features recited in the claims, better chance the applicants obtain for protection of their business method related inventions.