AMENDMENTS OF THE PRC PATENT EXAMINATION GUIDE-LINES

07/01/2004

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In line with amendments to the Implementing Regulations of the PRC Patent Law, and to fur-ther define the criteria for patent examination and improve the procedures for reexamination and invalidation actions and the criteria for the examination of design patents, the PRC amended Parts 1, 3 and 4 of its Patent Examination Guidelines, with effect from 1 July 2004. The main points of the amendments are as follows:

The time limit for initiating the national phase of PCT applications is changed to within 30 months from the priority date.

If a reexamination or invalidation action that has been accepted for processing is found on examination not to comply with the conditions for acceptance, the Patent Office will reject the action.

If an applicant submits foreign-language evi-dence without a Chinese translation, the Chi-nese translation must be submitted within a notified time period, or the evidence will be disregarded.

The preliminary examination of a reexamina-tion action should be completed within one month after receiving the case files.

If two or more persons file invalidation actions against the same patent, they need not com-mission the same representative organization to represent them in the related procedures.

When amendments are made to a disputed patent in an invalidation action, if an inde-pendent claim has not been amended, the patentee cannot combine the dependent claims.

If a design patent includes multiple inde-pendent products, an examination decision may be rendered, declaring the patent invalid with respect to some of the products.

When determining whether designs are iden-tical or similar, one should consider whether the differences between them have a signifi-cant effect on the overall visual impact of the products. The section on the "isolated com-parison" method has been deleted, and the amendments provide that for products in general, an "overall judgment" should be made, whereas a judgment based on "salient features" should be made only with respect to the portions of a product that are especially likely to attract consumers' attention relative to other portions.