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Beijing Higher People’s Court’s New Rules on Patents

DATE:2018-10-09      FROM:LexField

By David Huang, Andy Zhang

Beijing Higher People’s Court recently issued “Opinions on Several Issues for Strengthening Reform and Innovation of Adjudication of Intellectual Property Affairs”.  The Opinions include a number of rules specific to patents that indicate a new position by the court on the relevant issues:

·   Article 8 implies that examination of eligibility of inventions related to business methods and software could be relaxed in line with new development in the relevant industries.  This rule could be the result of consultation with the patent office and if properly implemented, it could make it easier to obtain patents in these areas.

·  Article 9 states that the new-matter examination in amendments during examination and invalidity actions should be relaxed, and the proper standard should be whether the amendments are supported by the original disclosures.  Further, amendments to a claim in an invalidation action should be generally accepted if the scope of the claim is narrowed, the amendments are supported by the specification and the amendments do not produce a new technical solution, but a feature should not be added to a claim if the feature is not recited the claims as initially granted but is only taught in the specification.

·  Article 10 states that the standard of inventiveness should be properly increased to ensure quality of granted patents. Meanwhile, this article also states that adequate explanations should be given for the determination of teachings of the prior art while subjective presumption should be avoided, which rule appears to be an instruction to examiners of the patent office. It has been a common complaint from patent applicants that examiners of the China patent office too often issue inventiveness rejections based on the allegation that a distinguishing feature in a claim is readily perceivable over the cited prior art without citing specific evidence to substantiate such an allegation.

·  Article 11 implies that it will be more difficult to apply the doctrine of equivalency for a utility model patent than for an invention patent.

·  Article 12 reiterates an apparently impartial position between the patent owner and implementer regarding standard-essential patents.  It calls for the prohibition of both hold-up and hold-out, and the language implies that the court will be warier toward hold-out.


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