IP Newsletter Issue 17 (2013-11-18)
 
State Intellectual Property Office (“SIPO”) issued Decision for Amending the “Examination Guidelines” (No.67)

    SIPO issued Decision for Amending the “Examination Guidelines” (hereinafter the “Decision”) on September 16, 2013, indicative of amending the provisions on examination of novelty of utility model and design patent applications.  The Decision has entered into force from October 15, 2013.  
 
    According to statistics of SIPO, more than 60% of the total number of applications per year are utility model and design patent applications.  However, since a utility model or design application does not pass substantive examination before being granted a patent right, the issued utility model or design patent is usually of poor quality and vulnerable to be invalidated.  For example, among utility model patent invalidation cases, there are more than 50% utility model patents being wholly or partially invalidated.  Given that situation, SIPO issued the Decision to amend the provisions in the “Examination Guidelines” regarding the preliminary examination of utility model and design patent applications for a purpose of improving the quality of issued utility model and design patents.
 
    According to the current version of “Examination Guidelines” (2010), the examiner generally does not determine on search whether a utility model or design patent application possesses novelty, but may determine whether it is obviously lack of novelty based on the information of prior art or conflicting applications obtained not through search.  The Decision amends the relevant articles to delete the phrases like “generally does not determine on search” and “not through search” and restates that “during the preliminary examination, the examiner determines whether a utility model or design patent application is obviously lack of novelty based on the information of prior art or design or conflicting applications the examiner obtained”.  Likewise, the provision on examination of Article 9 of the Chinese patent law, i.e. double patenting, is amended not to limit the way the examiner may take to find the identical inventions.  With the amendment, the examiner is encouraged to more actively seek for prior art or design through or not through search.  It is foreseeable that the quality of utility model and design patents being issued will be improved by such amendment strengthening the examination of novelty matter of utility model and design patent applications.
 
    To sum up, after the amendment of the “Examination Guidelines”, the examiner may examine whether a utility model or design application is obviously lack of novelty through search during the preliminary examination and the applicant may expect to receive office actions including novelty rejection and should be prepared for that.