Obtaining Patents in China

18.09.2016

By Lawrence Hoffman, U.S. Patent Attorney

Should You Bother Getting Patents in China? Some Western IP owners and IP professionals believe that foreign companies shouldn’t waste their money and time getting patents in China. They believe that good patents are hard to get, and that the patent system discriminates against foreigners. However, an article by Brian Love[1], et al. entitled Patent Litigation In China: Protecting Rights Or The Local Economy[2] convincingly demonstrates that this perception is largely a myth. Statistics cited show that foreign companies appear in Chinese patent suits most often as patent enforcers, not as accused infringers, and that they win somewhat more often than Chinese patentees who seek to enforce their patents. Discrimination against foreigners by Chinese examiners does not appear to exist as a matter of policy or in practice. Examiners appear to be competent and do not take arbitrary or frivolous positions against foreigners.

This is good news. China is the world’s most populous country and the world’s third largest economy. It offers enormous market opportunities and its favorable labor costs make it an attractive venue for manufacturing. Having Chinese patents allows direct action against local poachers thereby reducing or even eliminating the need to deal with infringement by customers of these miscreants on a country-by-country basis. It may also facilitate cross-border technical cooperation, for example, through licensing agreements.

Despite concern about possible economic fallout from international rejection of China’s territorial claims in the South China Sea, protecting IP in China should be an important factor in an overall IP strategy. IP owners and their advocates have good reason to become more familiar with China’s IP system.

What’s Important Here To Make You Want to Read Further:

China’s patent system obviously cannot be addressed comprehensively in this article without being totally devoid of detail. Accordingly, the present article will be the first of a series. Here, the focus will be on some important issues concerning procurement of patents for inventions. Later papers will address comparative aspects of infringement litigation, protection of computer and biotechnology related inventions, and inventions completed in China resulting from cross-border collaboration, and aspects of procurement and enforcement of patents for utility models and designs, and protection of trademarks in China, the U.S. and Europe.

Facts You Should Know About Chinese Patents for Inventions: ADMINISTRATION AND

BASIS FOR IP PROTECTION: China’s IP protection system is administered by the State Intellectual Property Office (SIPO) in collaboration with the Peoples’ Court System. The SIPO is comprised of the Patent Office which handles examination in the first instance, and the Patent Reexamination Board (PRB) which provides an avenue for appeals from the examination process. The PRB also has exclusive jurisdiction over third-party efforts to invalidate an issued patent. The court system provides a venue for appeals from decisions of the PRB, including decisions on patent validity, and for litigation to enjoin and recover damages for infringement.

China is a so-called civil law country so court decisions are not treated as precedents for later cases or for proceedings in the SIPO. The patent system is therefore governed almost exclusively by the written Patent Law, Rules for implementing the Law and Guidelines For Patent Examination. The Guidelines cite supporting sections of Law and Rules so for convenience this article will generally follow the organization of Guidelines.

TIMING OF FILING AND DURATION OF THE PATENT:

PCT Based Applications: The 30 month deadline for PCT National Phase filing may be extended up to two months. The application may be filed in English but a translation must be filed within a two month grace period. The filing fee is determined by the number of claims in the PCT application published. The base fee covers only ten claims.

The duration of a patent is 20 years from the filing date.

Inventions Completed in China: Patent applications for inventions completed in China are subject to a “confidentiality examination” by the SIPO in which national security or other state interests are determined. This will be of concern to companies having research facilities or in respect to inventions resulting from cross-border collaboration since confidentiality clearance must be obtained before an application can be filed outside of China, whether as the initial filing or one based on a Chinese application.

CONTENTS OF THE APPLICATION:

In General: An application must be clear, complete and enabling. It must identify the technical problem to be solved, the solution(s) adopted, the advantages over the prior art, and all other information needed for understanding the invention, to support the claims, to allow a person of ordinary skill in the art to practice the invention and to demonstrate patentability. If the achievement of an asserted technical effect can only be verified experimentally, supporting data is required. Terminology customary in the relevant technical field must be used. Other terms should be defined.

ORGANIZATION OF THE APPLICATION:

The description should be organized according to PCT practice, but care should be taken to clearly describe of the technical problem addressed, the solution, and the advantages of the invention, along with a description of the optimally selected mode contemplated for carrying out the invention. The title should concisely refer to all aspects of the invention (e.g., a product, and method of manufacturing same) using International Classification terminology.

Background of the Invention: Art showing features of the claimed technical solution or similar features in other contexts to be included in the preamble(s) of applicant’s independent claim(s) should be identified and objectively described. Reasons for problems in the art, and difficulties in overcoming the problems should also be given, if possible.

Detailed Description: The technical problems addressed by each disclosed aspect of the invention must be identified and all the essential features of the technical solution must be sufficiently described to support the claims.

Practice Comment:[3] Differing levels of claim detail should be supported by describing a feature using a general term followed by one or more specific examples. This could be in the form “Parts A and B are coupled by a fastener, for example. a screw or an adhesive…” Alternatively, the phrase “for example” could be replaced by the word “optionally”. When describing an embodiment or combination of elements, one could say “A is comprised of a “B”, a “C”, and a “D”, connected in series. Optionally, part B is an “X” or a “Y”…”

The same terminology should be used in the description and in the claims.  Variation between the terminology of the description and the claims permitted under U.S. practice is not permitted in China. The same terminology should be used in the claims and in the description.

The preferred mode for carrying out the invention should be described using the same level of detail as the rest of the description unless the description of a simple technical solution provides a clear and complete explanation of the claimed subject matter; in that event, it does not need to be repeated in describing the preferred mode

Practice Comment:  The preferred mode should be is identified by non-limiting terminology, e.g., “preferably, but not necessarily” or “preferably, but not exclusively” to avoid any implied limitation on the scope of the invention.

Advantages: Advantageous effects of the claimed technical solution should be fully described. Advantages may reside in a wide range of specific improvements or emergence of new and useful functions, etc. and may reside in claimed structural or functional features. Advantages may be demonstrated by reference to experimental data including statistical experimental results to demonstrate subjective advantages, e.g., which rely on human sensory perceptions.

DISCLOSURE REQUIREMENTS FOR CHEMISTRY-RELATED INVENTIONS:

In General: The disclosure should include (i) a full structural identification of the product, (ii) at least one method of preparation including the raw materials, procedures, conditions, etc. and a description of specially adapted equipment used in the method, and (iii) a description of at least one use and/or technical effect of the product. If the use and/or technical effect cannot be verified by prior art methods, experimental data must be provided.

Pharmaceutical Products: The specific medical use or pharmacological action, an effective dosage, and the method of application must be described. Where necessary to demonstrate that the asserted use or pharmaceutical action can be achieved, supporting data from laboratory or clinical tests must also be disclosed.

Method of measurement: When the prior art includes alternative methods for measuring numerical data, the method employed must be specified. Any special measurement method employed shall also be described.

Chemical Process Inventions: Starting materials and processing conditions must be specified. For an invention directed to use of a chemical product, the product, the method of use, and the effect to be achieved must be described.

FORM AND CONTENT OF CLAIMS:

Kinds of Claims: Product claim encompass articles, substances, materials, tools, apparatus, equipment, etc. Product claims normally recite structure, physical organization or composition but may also express features in functional terms. Process claims recite the steps of the process (Part II, Ch. 2, §§3.1.1, 3.2.2).

Independent Claims: Only one independent claim is permitted for each disclosed invention (Part II, Ch. 2, §3.3.1). An independent claim must identify a problem to be solved and recite the essential features of a solution to the problem. “Essential” refers to the collection of features that are both indispensable and sufficient to constitute the solution and to distinguish over the background art (Part II, Ch. 2, §3.1.2).

Practice Comment: To determine if a feature is essential, both its role in solving the problem and its relationship to the disclosure as whole are considered. by the Examiner. The fact that a technical feature is part of a particular embodiment does not necessarily make it essential since the invention may be broader than that embodiment.

Two-Part Form for Independent Claims: Generally, independent claims should be in two-part form including (i) a preamble that indicates the problem addressed and essential technical features which, in combination, are part of the most closely related prior art and (ii) a characterizing portion designated as such, that recites the technical features of the invention which distinguish it from the most related prior art. Only features which are closely related to the technical solution described in the characterizing part need to be included in the preamble.

The two-part form is not required for (i) inventions in new fields, (ii) combinations of known elements in a particular way, (iii) improvements in processes involving addition or omission of a material or omitting a step in the known method, and (iv) improvements that involve substitution of a part or interrelation of parts (Part II, Ch. 2, §3.3.1).

Dependent Claims: A dependent claim further defines a feature recited in a claim to which it refers or adds one or more additional features. Claims in the form “An apparatus for carrying out the method of claim 1…” or “a process for making the product of claim 1…” or “an apparatus including the component of claim 1…” are all treated as independent claims. A claim in the form “An apparatus according to claim 1 in which feature X is replaced by feature Y” is also treated as independent (Part II, Ch. 2, §3.1.2). A dependent claim may refer in the alternative to more than one previous claim but cannot refer to another dependent claim that also refers to multiple previous claims.(Part II, Ch. 2, §3.3.2).

Numerical Ranges: Claims which state a numerical range should use mathematical expressions (<, >, ≤, etc.) rather than words such as “‘at least” or “more than” (Part II, Ch. 3, §3.3).

INTERPRETATION AND SCOPE OF CLAIMS:

Open and Closed Claims: The terms containing, including, or consisting essentially of are treated as open-ended, i.e. the claim is not interpreted as excluding features other than those recited. To indicate a closed claim, i.e., one from which other features are excluded, the term “consisting of” should be used (Part II, Ch. 2, §3.3)

Statements Of Function, Effect, Or Use: Functional statements are permitted in the preamble of a claim and also in the body of the claim for a feature that cannot be described structurally or is more appropriately described by its function or effect. In either situation, the recited function or effect must be directly and affirmatively verifiable. Functional statements are given patentable significance according to their impact on recited structural features. All ways of achieving the recited function and technical effect are considered within the scope of the claim.

Statements of Use or Function in a Claim Preamble: A statement of function or use in the preamble of a claim will be given patentable significance according to its impact on the structural features of the characterizing part of the claim. As an example, the Guidelines state that a claim preamble that refers to a “mould (sic) for molten steel” would exclude from its scope a plastic ice cube tray. However, if the stated use has no impact on the actual claimed subject matter, it will not be relevant in determining the scope of the claim or patentability (Part II, Ch. 2, §3.1.1).

Function or Effect Recited in the Body of the Claim: This is permitted if a feature cannot be described structurally or is more appropriately described by its function or effect. The function or effect must, however, be directly and affirmatively verifiable. All ways capable of accomplishing the recited function and achieving the same technical effect are considered within the scope of the claim (Part II, Ch. 2, §3.2.1).

Generalized Claim Language (Part II, Ch. 2, §3.3): A claim can be generalized by use of broad language supported by specific disclosed embodiments if it is reasonably likely that other embodiments and obvious variants of the embodiment(s) described will have the same properties or uses. For chemistry-related inventions, more embodiments will usually be needed than in other fields, e.g., to identify particular species of a generic invention, or to show multiple ways of making and using the product.

Claims in new areas of technology will be entitled to more generality than claims concerned with known technology but must still be adequately supported by examples..

A claim may also be generalized by recitation of a list of optional features, one or more of which are to be selected Several related features may be connected with the conjunction word “or” or “and”, among which at least one must be chosen.

INTERPRETATION OF CLAIM LANGUAGE:

Conventional Terminology: Words in claims are given their conventional meaning in the relevant art unless otherwise defined in the application. (ii) Inherently imprecise words, for example, “about”, “high frequency”, “high temperature” or “thin” are not permitted unless they have a conventional meeting in a particular context, such as “high frequency” in the context of an amplifier.

Practice Comment: As to (i), most jurisdictions interpret claim language this way. The same approach is followed in U.S. patent litigation. However, in proceedings before the U.S. PTO, claims are given a “broadest reasonable interpretation”.

As to (ii), “about” can be defined in the description to avoid a problem in some instances. Alternatively, a broad but workable range can be disclosed and recited in a claim followed by a dependent claim that recites a preferred value or narrower range. Another possibility is to use the two approaches together.

Product or Process: The claim preamble must clearly state if it is directed to a product or a process. Vague words such as “technique” are not permitted, nor can a claim be directed to both a product and a process for using or making the product. A claim that recites “An insecticide comprising compound A” is a product claim, but a claim in the form “Using compound A as an insecticide” is a method claim.

Parameters: A parameter can be used to describe a product feature if it can clearly and reliably be determined in a disclosed manner or by conventional methods.

PATENT ELIGIBILITY: An invention is an embodiment of an idea into something useful, but not all such embodiments are eligible for patent protection. In some patent law regimes, such as China, excluded subjects are identified in the Law. In contrast, U.S. patent law only lists what is patent-eligible. The U.S. Supreme Court in its decisions has defined the exclusions.

Excluded Subjects: The classes of excluded subjects are (i) scientific discoveries, e.g., laws of nature or physical phenomena or naturally occurring substances (which are treated as objects of scientific discoveries, (ii) rules and methods for mental activities such as software per se (which is protected under copyright law), methods and systems of managing commercial activities, methods of presenting information, (iii) methods and substances used for diagnosis or treatment of diseases, (v) animal and plant varieties, and (vi) methods of nuclear transformation and substances obtained by such methods.

Exceptions: Certain subjects related to those listed in the preceding paragraph are not excluded. Among these are (i) products and methods employing scientific discoveries, (ii) mental activities in combination with technical features, (iii) substances isolated or extracted from nature whose structure, morphology or other physical/chemical parameters are unknown in the prior art but can be precisely characterized and which can be exploited industrially, together with processes for obtaining the substance, (iv) instruments, or materials used in methods of treatment or diagnosis, (v) methods that yield only intermediate results in a diagnostic process, but require performing further steps, and (vii) apparatus for use in nuclear transformation methods and uses of materials resulting from such methods.

Plant Varieties: Protection of certain plant varieties is governed by the Regulations of the Protection of New Varieties of Plants. However, “non-biological” (e.g., asexual) methods for production of animal and plant varieties are patent-eligible.

Chinese patent law also prohibits granting of patents for subjects that are contrary to law, social morality, or public interest, e.g., a device whose use causes pollution, but subject matter which has both beneficial and detrimental effects, such as a drug with certain side-effects is not excluded.

INITIATION OF EXAMINATION: Filing an application does not automatically place it in a queue for substantive examination; a request must be three years from the filing date. However, Art. 35 of the Law provides that the SIPO may initiate substantive examination on its own initiative. When this is to be done is not specified, and a literature search did not reveal any guidance. Voluntary amendments to the claims may be made when requesting substantive examination or within three months of notification that examination will be made at the SIPO’s own initiative. The applicant may be required to furnish documents concerning any search or results of any examination of a corresponding application outside of China.

PATENTABILITY: Patent-eligible subject matter must be novel, inventive, and have practical applicability. Practical applicability is determined first then novelty and inventiveness.

Practical Applicability: The claimed subject matter must be such that it (i) provides a technical solution to a problem (i.e., one which applies the laws or nature), (ii) can be made or used in an industry, and (iii) can produce effective results. Practically speaking the scope of the term “industry” appears to extend to virtually all legal human endeavors. The term “produce effective results” means that, on the date of filing the application, positive and advantageous economic, technical, or social effects produced by the invention can be expected by a person skilled in the art. The technical solution claimed must be repeatable, i.e., capable of repeated implementation under the conditions stated in the description. It must also not violate a law of nature, the universal example being a perpetual motion machine.

Novelty: To be novel, the claimed subject matter must not be part of the “prior art”. Subject to certain exceptions discussed below, technology that is publicly known or used or disclosed anywhere and in any manner before the date of application or the claimed priority date is prior art as long as the disclosure is sufficient that “the public can obtain substantial knowledge” about the claimed subject matter. Thus, if two applications are filed for the same invention, the one with an earlier filing date or priority date is prior art as to the other one. This is true even if the earlier filed application is made public (published or announced) by the SIPO after the later application is filed.

Publication: Any information for which the date of public availability is determinable can be prior art. Publications can be in printed or electronic form e.g., test, illustrations, audio or video information recorded on any medium or on the Internet or in other online databases. Publication can be in any language. The extent of distribution is not relevant. Oral disclosure, either directly, or though mass media can be prior art if its technical content is sufficient.

Use: Any activity that makes the relevant technical content available to the public can meet this requirement. Actual knowledge is not relevant, but exhibition or demonstration of a product must be sufficient that the features recited in a claim can be known to a person skilled in the art to be treated as prior art. This requirement is not a broad as it might seem at first glance; disclosure can be prior art even if the product or device needs to be destroyed to reveal its technical details.

Information and Activities That Do not Defeat Novelty:

Trade Secrets: Confidential information is not prior art. Documents marked with designations such as “confidential” or “for restricted access”, that are handled in a confidential manner, e.g., restrictively distributed and required to be kept confidential by the recipients, are also not prior art. Note, however, that if a person breaches an obligation to maintain secrecy, the information becomes part of the prior art.

Grace Period: A six-month grace period is allowed for disclosure for the first time at a sponsored or recognized international exhibition, at a specified academic or technological conference. The grace period also applies to unauthorized disclosure by others, for example, breach of a confidentiality agreement).

Determination of Novelty: The subject matter of a claim, considered as a whole, is not novel if an identical solution to that of the technical solution claimed is disclosed in a single item of prior art. The solution is considered identical if they are substantially the same, if both can be applied to the same technical field, to solve the same technical problem, and have the same expected effects. Prior art is not combined in making this determination Prior art is also considered identical as to technical content directly and unambiguously derivable from the reference document or if the same subject matter is described using different words. Substitution of customary means employed in the art is treated as a matter of inventiveness under most patent laws, but defeats novelty under Chinese law.

Genus and Species: Prior art disclosure of a species defeats novelty of a generic claim, but disclosure of a genus or a particular species does not defeat novelty of another species.

Values and Ranges: Disclosure of values entirely within a claimed range or which partially overlaps the claimed range or have at least a common end point defeats novelty  (Part II, Ch. 3, §3.2.4 (1), (2)). Disclosure of two end points defeats novelty as to a claim that recites either end point, but not if the numerical value recited is between the two end points or if a claimed numerical value or range falls within the range disclosed in a reference document but has no common end point (Part II, Ch. 3, §3.2.4 (3), (4)).

Functional Features in Product Claims: If the recited function indicates that the claimed product has a structure and/or composition distinct from that of the product disclosed in a reference document, the claim is considered to be novel. Features of a manufacturing process in a product claim can impart novelty if the process features result in differences from a prior art product.

INVENTIVENESS: One of the most subjective aspects of patent law is the question of inventiveness. Chinese law deals with this by requiring “prominent substantive features and notable progress compared with the prior art” and the Guidelines devote considerable text to explaining what this means. The bottom line, however is that the subject matter must not be obvious to a person skilled in the art. This condition is met if the person skilled in the art cannot obtain the invention just by logical analysis, inference, or limited experimentation on the basis of the prior art. The idea of notable progress is said to mean “that the invention can produce advantageous technical effect as compared with the prior art”.

Practice Comment: The requirement for “notable progress” does not impose a requirement that the invention be “important enough”. Examples given include inventions that improve existing technology, or provide a different solution to a particular problem, as well as ones that represent a new trend of technical development.

Methodology for Assessing Inventiveness: Examiners determine inventiveness of claim by (i) identifying the closest prior art, (ii) identifying the distinguishing features of the invention over the closest art, and (iii) determining whether or not the distinguishing features render the claim obvious to a person skilled in the art.

Closest Prior Art: A particular item of art directed to solution of the same problem or one similar to that to which the claimed invention is directed, or having the same or most similar intended use and which discloses the greatest number of technical features of the claimed invention is treated as the closest prior art. If no art meets this requirement, the Examiner looks for an existing technology in a different technical field that is capable of performing the claimed function and discloses the greatest number of technical features of the invention.

Determining the Distinguishing Features of the Invention: Having identified the closest prior art, the examiner then determines the features that distinguish the claimed invention and identifies the technical problem that is actually solved by the invention on the basis of the technical effect of the distinguishing features. If the technical problem of the closest prior art is different from that identified in the description, the Examiner will “redetermine” the problem accordingly for the rest of the inventiveness evaluation.

The Person Skilled in the Art: This concept is central to determination of obviousness in all examination-based patent regimes. Under Chinese law, this is defined as a fictional person presumed to be aware of all technical knowledge existing or before applicant’s filing date or the priority date in the technical field to which the invention pertains or in any other field to which he might be impelled to look, given the nature of the problem addressed by the invention. He is presumed to have the capacity to apply common technical knowledge and routine experimental means to such art known on or before the critical date, but he is not presumed to have creativity.

Practice Comment: Discussion of the meaning of “person of ordinary skill in the art” in U.S. practice may be found in M.P.E.P. §2141. Corresponding discussion in European practice may be found in the EP Examination Guidelines, Part (e).

Evidence of Obviousness and Non-Obviousness:

Motivation: An inventive step is not present if there is motivation in the prior art to apply the distinguishing features to the closest prior art, thereby to solve the technical problem actually solved by the invention demonstrates obviousness. Examples include (i) a known customary means in the art that solves the same technical problem as that of the claim, or one disclosed in a reference or performs the claimed function in a different context, the distinguishing feature being found in a secondary reference document in which it performs the same function in solving the redetermined technical problem in the claimed invention.

Invention In a New Field of Endeavor: An invention that provides a new technical solution which leads to development in a new field of science and technology is inventive.

Combinations of Known Features: An aggregation or juxtaposition of features in which each feature functions in its routine way and without any functional interaction between the combined technical features is not inventive. Conversely, if the combined technical features support each in a way that is greater than the sum of the technical effects of the individual features, then the combination is inventive.

Selection of One or More Distinguishing Features: Selection of a distinguishing features(s) are chosen from among a number of possibilities known in the field of the invention, or from a number of equally likely alternatives, does not involve an inventive step unless the selected solution results in an unexpected effect.

Diversion: Selecting one or more distinguishing features from a technical field other than that of the invention can be an inventive step if the result is unexpected The closer the two technical fields are to each other, the less likely it is that the diversion will involve creativity and have an unexpected result. In contrast, if the diversion overcomes a difficulty that has never been encountered in the field from which the feature is diverted motivation to adopt it in the field of the invention is not likely to exist.

New Use: If the new use results from a known property of a known material, it is not inventive. However, if it results from a newly found property of the known material and can produce an unexpected technical effect, it is inventive.

Changing Elements: If an unexpected result is achieved by changing relations between elements, or by replacing or omitting elements and there is no technical motivation for the change, the result is an inventive step. Changed relations include changes in shape, size, position, operational relationship or the like. Replacement refers to substitution of a known or recently developed element for one in the closest prior art. Motivation for the replacement can come from art-recognized equivalence or close similarity as to use or function. Omission of one or more elements of a known product or process without loss of the corresponding functions or which yields an unexpected technical effect is regarded as an inventive step.

Other Indications of Non-Obviousness: Certain other factors directly related to the claimed subject matter can be evidence of an inventive step. These include solving a long-felt but unsolved technical problem, or overcoming a technical prejudice. and achieving commercial success.

The concept of technical prejudice is also known in European practice and is similar to but not the same as the U.S. concept of “teaching away”. The term refers to an incorrect belief or understanding that leads those skilled in the art to believe that the correct alternative is in fact not possible. This is treated as part of the prior art, and demonstration of the true facts by the claimed invention can be secondary evidence of inventiveness.

AMENDMENTS IN RESPONSE TO AN OFFICE ACTION:

Art. 33 directs that amendments to the application may not exceed the scope of the original description and claims. This applies to voluntary amendments and responses to Office Actions. It must also be kept in mind that during examination, amendments can only be made to address defects noted by the Examiner. The Guidelines explain that the scope of the initial description and claims extends to information that can be contents determined directly and unambiguously from it. Nevertheless, local practitioners regard compliance with Art. 33 as a major issue because the Guidelines do not explain how the term “directly and unambiguously” is to be interpreted. In practice, Examiners interpret this very strictly. Great care should therefore be taken when claims are amended in response to an Office Action.

Forbidden and Permitted Amendments: Amendments must not broaden the scope of an independent claim even if there is support in the original description, change the scope an independent claim by adding or amending a feature not having unity with the features previously recited, or add claims directed to a technical solution not previously claimed.  Changes or additions within the scope of the initial description and directed to defects noted by the Examiner, are permitted. Among the examples of permitted changes are ones that (a) add to or change one or more technical features to eliminate defects of the initial claim, e.g., lack of novelty or inventive step, or lack of support in the description, or to more clearly  (b) amend a claimed numerical range but only when the two extreme values of the revised numerical range are really described in the initial description and/or claims and the revised numerical range is within the initial numerical range, (c) eliminate defects in the preamble, (d) delete claims to eliminate lack of unity, r which lack support in the description.

Practice Comment: In addition to disclosure of a range of exemplary embodiments, to help assure support for broad claims it should be stated that features described in one embodiment may also be part of other embodiments not specifically described. For this purpose, it may be useful to describe the various aspects or embodiments of the invention in broad terms in an “Overview” at the beginning of the detailed description and to list separately a universe of secondary features that are optionally common to all aspects and/or embodiments unless otherwise noted or apparent.

APPEALS FROM FINAL REJECTIONS:

Appeals from final rejections are directed to a Patent Reexamination Board by which the application is effectively reexamined. Amendments may be made in connection with the appeal but only to remove defects pointed out in the final rejection or in a communication from the Board pointing out correctable defects. Appeals from a decision of the Patent Reexamination Board may be taken to the People’s Courts.

Conclusion:

The aspects of the Chinese patent system discussed here bear close resemblance to corresponding aspects of other patent systems but there are important differences.  In China’s civil law system, the Guidelines control procedures involved in procurement of patents and the scope of the protection obtained, so this article is intended to help IP owners and practitioners interpret and respond to Office Actions from Chinese Examiners and make informed strategy decisions in particular cases in cooperation with Chinese associates.

[1] Co-Director of the High Tech Law Institute, Santa Clara University School of Law.

[2] Available at http://digitalcommons.law.scu.edu/cgi/viewcontent.cgi?article=1920&context=facpubs)

[3] These Comments are observations of the author based on the Law, Rules, and Guidelines and are intended only to point to practical issues the reader may want to consider.

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