AIPLA Submits Comments Regarding the Draft Revision to the Chinese Patent Examination Guidelines (Draft for Solicitation of Comments) September 21, 2021

On September 21, 2021, AIPLA submitted comments to the China National Intellectual Property Administration (CNIPA) regarding the Draft Revision to the Chinese Patent Examination Guidelines (Draft for Solicitation of Comments). AIPLA provided comments and suggestions on more than fifteen guidelines outlined in a table format for readability. Support was expressed for the allowance of colored figures and commendation was offered for CNIPA’s effort on introducing the practice of incorporation by reference in accordance with the international norm. However, clarification was requested on whether figures are also allowed at incorporation by reference.

AIPLA also requested clarification on how an examiner could determine that a utility model “apparently lacks inventiveness,” and also guidance on identification and handling of “bad faith” application, echoing the comments to the draft Implementation Rules in November 2020. Though AIPLA commended the change that after entering the Chinese national phase, certifying documents is no longer required for the change of applicant recorded at the international phase, except in exceptional cases, further clarification was suggested. With respect to patent term compensation due to unreasonable delay at the CNIPA, drug patent term extension, and open license, in addition to seeking various classifications, AIPLA submitted a number of suggestions.

AIPLA expressed appreciation for the ability to protect innovations in designs, including partial designs, of graphical user interfaces (GUIs) and for providing the ability to claim priority to various different types of domestic Chinese applications. Finally, AIPLA supported the change that for evidence outside of China to be submitted at invalidation proceedings, legalization is no longer required.

To read the full comments, please download the file.