On May 24, 2006, SIPO enacted new Guidelines for the Examination of Patent Applications that entered into force on July 1, 2006. Chapter 9 of Part II (substantive examination) of the Guidelines deals with inventions involving computer programs.
According to the Guidelines and SIPO’s current examination practice, criteria for patentability and examination processes can be summarized as follows.
First, the application is classified in the light of its proper statutory category. If it belongs to one of the excluded categories, such as arithmetical or mathematical calculation rules, computer programs per se or computer programs recorded on a carrier (such as tape, disc, CD-ROM, magnetic CD-ROM, PROM, VCD, DVD or other computer-readable medium), or rules and methods for games, a patent cannot be granted.
Second, the examiner may consider whether the application complies with Art. 2(1) of the Regulations.
When its subject matter has fulfilled the three essential elements in the Guidelines, i.e. aiming to solve technical problems, using technical means and achieving technical effects, then it constitutes a complete technical solution and therefore complies with Art. 2(1). The three essential elements mentioned above are only the basic conditions for determining whether an application involving computer programs belongs to the categories of patent protection. The application must also meet the criteria for novelty, inventive step and practical applicability.
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3. Statistical Analysis of Data Collected
3.1. Brief Introduction
The Chinese Patent Law was adopted in 1984 and entered into force on April 1, 1985: it was revised in 1992 and 2000.
(1) The First Revision
Through this revision, the patent system was improved and protection for patent rights strengthened in the following ways:
Fig. 2.3.Examination Process for an Invention Patent involving Computer Programs Source: drawn up by the author according to the Guidelines.
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162 The technological fields of patent protection were broadened to cover pharmaceutical products, foodstuffs, beverages, flavorings and substances obtained by means of chemical processes.
The duration of a patent right was extended: invention patents were extended from 15 to 20 years and utility model and design rights were extended from five to 10 years.
The exclusive right was enhanced. Protection for a manufacturing process was extended to a product directly obtained by the patented process and a patentee had the right to prevent any other person from importing, without his authorization, a patented product or products obtained directly through his patented process.
The grounds for granting a compulsory license were restricted. The situation in which this could be granted only included (a) where an entity qualified to utilize the invention or utility model made a request for authorization from the patentee to utilize the patent on reasonable terms, and such efforts were unsuccessful within a reasonable period of time, and (b) a national emergency, an extraordinary state of affairs or a public interest requirement.
The original pre-granting opposition procedure was replaced by a post-granting revocation procedure.
As a result, the entire approval procedure of a patent right was shortened by on average three to four months. The retroactive effect of a declaration of invalidation was restricted.
According to the earlier law, any patent right declared invalid was deemed to be non-existent. The revised Patent Law kept this provision, but at the same time stipulated that: the decision of invalidation should have no retroactive effect on any judgment or order on patent infringement pronounced and enforced by the People’s Court, on any decision concerning the handling of a patent infringement made and enforced by the administrative authority for patent affairs, or on any contract of a patent license or of an assignment of a patent right which had been performed prior to the decision to invalidate. However, any damage caused through bad faith would result in the patentee being compensated.
The revised Patent Law is fully in line with the requirements of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement). Moreover, in light of experience since the enforcement of the revised law, preparation was made for the second revision. In addition, the drafting and approval of the Regulations on Protection of Plant Varieties and the Regulations on Protection of Layout Design of Integrated Circuits have been completed. These two regulations are independent laws, as allowed by TRIPS, and patent applications in these fields would be handled by governmental authorities separate from SIPO.
(2) The Second Revision of the Patent Law
After the first revision, and with continuing liberation of the economy, patent infringement became rampant.
Penalties imposed on and compensation awarded against infringers were low and lacked deterrent value.
In the area of patent prosecution, the backlog of cases was dealt with by SIPO and the Patent Reexamination Board (PRB).
To address these and similar issues, as well as for TRIPS compliance, the 1993 version and the Detailed Implementing Rules of the Patent Law (1993 Implementing Rules, entering into force on January 1. 1993) were amended. The revised law and detailed rules for its implementation were put into effect on July 1, 2001.
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The Chinese government has made progress in its IP policies in the past 10 years: the number of patent 163 examiners to handle the increase in applications filed has been increasing rapidly. A brief outline of the patent system is given below:
Table 3.1.Chinese Patent System
Source: drawn up by the author according to the Patent Law.
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