China,  Proposed Changes,  Updates and Changes

AI, Big Data, and Blockchain – CNIPA seeks public comment on draft patent examination guidelines

Exciting new changes continue to happen with the Chinese Patent Office (CNIPA). On November 12, 2019, the CNIPA published a new set of amendments to Part II Chapter 9 of the Patent Examination Guidelines (“Draft”) and requested public comment by December 11, 2019.

In summary, the new guidelines clarify how emerging technologies involving artificial intelligence, Internet +, big data and blockchain should be examined. More specifically, the Draft provides examination guidelines for inventions comprising certain abstract features such as algorithms, business methods and rules.  

Examination Criteria

Accordingly to the newly amended guidelines in the Draft, when determining patent eligibility, novelty or inventive step (Articles 25, 2, and 22 respectively), examiners should consider the technical features and the abstract features as a whole, not separately in a vacuum.

The Draft explicitly states that if a claim comprises technical features in addition to abstract features, the claim as a whole should not be considered “rules and methods for mental activities” ( Article 25, Item 2, first paragraph), but instead should be considered patent-eligible subject matter.

The Draft further emphasizes if a claim recites technical means that use laws of nature to solve a technical problem, and thereby obtains technical effects in accordance with the laws of nature, the solution should be considered a “technical solution” (Article 2, second paragraph), not “rules and methods for mental activities”.

With respect to novelty and inventiveness, the examiner must consider the technical contributions of the abstract features and how they functionally support and interact with the technical features.

Examination Examples

The Draft provides ten examination examples, including several positive and negative examples of inventions incorporating abstract ideas. We will examine these examples in more detail in subsequent blog posts.

In practice, examiners tend to hastily challenge patent-eligibility when they encounter claims that involve algorithms or business methods/rules. Up until now, it has been extremely difficult for applicants to persuade examiners to change their minds. The Draft’s examples and statements clarify the requirements for both examiners and applicants, which should streamline patent examination in the future.

Drafting Requirements

The Draft also refines the requirements for drafting the description and claims for such applications. The description should describe how the technical features and the abstract features function together as a whole to bring forth beneficial effects. The Draft emphasizes that the claims should recite both (1) the technical features and (2) the abstract features which functionally support and interact with the technical features.

Eagle Thoughts

The above draft amendments provide a break in the long-felt problem in Chinese patent prosecution, in which examiners dissected a claim into “technical” vs “non-technical” or “abstract” parts, and ignored the abstract part of the claim altogether when evaluating patentability. As a result, inventions that were highly innovative could be rejected since the remaining “technical” parts per se lacked inventiveness. The current proposal resolves the significant difficulties that Applicants often faced when prosecuting software patent applications.  

This standard is also very much in line with the global trend in this area, such as the USPTO’s recent “relaxations” of its own examination guidelines, giving patent eligibility to inventions that integrate abstract ideas into practical applications.

We think these amendments provide innovators in areas such as AI, big data, and blockchain a much improved chance of obtaining patent protection for their inventions. This is in line with the current drive for technological advancement in China, with computer science being one of the most important areas of industrial development. We welcome the continual harmonization of global patent legal concepts, which we hope will streamline and facilitate the patent process not just for Chinese companies, but for all innovators around the world.

About the Authors

Sally Yu is a Chinese Patent Attorney at Eagle IP, a Boutique Patent Firm with offices in Hong Kong, Shenzhen, and Macau.

Jennifer Che, J.D. is Vice President and Principal at Eagle IP, a Boutique Patent Firm with offices in Hong Kong, Shenzhen, and Macau.

This article is for general informational purposes only and should not be considered legal advice or a legal opinion on a specific set of facts.

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