It’s been a year and a half since the new Chinese Patent Law came into effect (1 June 2021). Although various versions of draft Examination Guidelines have been released, thus far no official finalized versions have been confirmed. On October 31, 2022, yet another new list of proposed amendments was published[1], this time consolidating the previous sets of proposed changes from 2020 to 2021 to the Examination Guidelines. As this version looks closer to a finalized version, we are cautiously optimistic that an official set of guidelines may soon be released. As such, we think it’s worth looking a bit more closely into this current draft version. Below are a…
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US vs CN: Foreign Filing License Requirements
In China, foreign filing requirements are generally very similar to the US — a foreign filing license is required if a foreign application is to be filed first for an invention made in the country. The Chinese equivalent to the US foreign filing license is called a confidentiality examination for foreign filing. According to Chinese Patent Law Article 19 (previously Article 20), if a foreign application is to be filed for an invention made in China, the applicant must submit a request to conduct a confidentiality exam to the CNIPA in advance. The CNIPA will determine whether the invention (for simplicity, the term “invention” includes invention and utility models in…
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Compositions Limited by Use: A Cautionary Tale
Section 4.2.3, Part II Chapter 10 of the CNIPA’s Examination Guidelines (“Guidelines”) stipulates that if the specification only discloses one property or use of a composition, the composition claim shall be drafted as a “composition limited by the function or the use”. Furthermore, it specifically states that “most pharmaceutical claims shall be drafted as claims limited by use” (emphasis added). Note: this rule only applies to compositions claims, not composition of matter claims directed towards a single active ingredient. Compositions are defined as any combination/mixture of two or more components, such as pharmaceutical formulations (active ingredient + excipients) or mixtures of various ingredients. How does the Examiner determine whether there…
