I have just returned from giving a presentation at the 6th China Intellectual Property Symposium in Hangzhou, China. Another of the speakers was Yonghong Li, who is Director of the Examination Department for Electric Inventions at the State Intellectual Property Office (SIPO) in China. She let us know about the new examination Guidelines from SIPO. The new Guidelines came out on 1 April 2017, which was the day of the talk. It was great to hear about the changes first hand, or at least by simultaneous translation!
Among other things, the new guidelines broaden the scope of patent protection that might be obtained in China for software and business methods.
The new guidelines indicate that if a claim of a Chinese patent application, taken as a whole, includes both a business method and technical features then the subject matter shall not be excluded from patentability.
The scope of this provision is not entirely clear. Commentators suggest that this provision is likely to mean that a claim will no longer be immediately objected to by SIPO as relating to unpatentable subject-matter by virtue of merely including a business method feature. Instead, if a claim includes at least one technical feature such as an element from a computer system in addition to a business method feature that it will go on to be assessed under the requirements of novelty and inventive step. The inventive step consideration can be expected to follow the approach of that used by the European Patent Office where a technical solution to a technical problem needs to be shown. We will need to see how lenient SIPO and the Chinese courts will be in this assessment.
Another big talking point at the symposium was the phenomenally high caseload of the Chinese patent courts. Given this, we can expect some clarity soon from the Chinese patent courts on the scope of this provision.
Computer program product claims are now patent eligible in China. That is to say, a computer program on a medium such as a solid state memory, hard disk drive or CD-ROM is patentable subject-matter. Previously, a software invention could only be presented as a method claim or as a device claim, but, we understand, these could be interpreted based on specific embodiments described in a patent specification, which could lead to a narrow interpretation.
Some people have said that these changes were driven by some of the big technology companies in China including Tencent and Alibaba whose products touch on all aspects of everyday life in China. During my recent trip to China, it was abundantly clear that the level of smartphone use, in the cities of Shenzhen, Hangzhou and Shanghai at least, is far higher than anywhere else I have been to in the world. Tencent’s broad functioning and easy-to-use Wechat app and Alibaba’s Alipay payment system seemed particularly widely used. Another thing that struck me during my visit was the reliable 4G signal everywhere including on the metro systems of all three cities. This provides a smartphone experience that is rich and reliable for the commuter or indeed patent attorney wanting to check in to his flight on the way to the airport. The revised SIPO patent guidelines provide very welcome, better patent protection for these types of innovations reflecting the significance of apps in China both to local companies and to those from around the world.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.