绿洲慧写 | AI 辅助专利撰写专家

Examination of Obvious Substantive Defects

From Part I: Preliminary Examination Chapter 1: Preliminary Examination of Invention Patent Applications

1 Examination Based on Article 2, Paragraph 2 of the Patent Law

According to Article 2, Paragraph 2 of the Patent Law, an invention refers to a new technical solution proposed for a product, method, or their improvement.

During preliminary examination, if the application documents describe some technical features of an “invention”, the examiner may not judge whether the technical solution is complete or whether it can be implemented. However, if the application documents only describe certain technical indicators, advantages, and effects, without any description of the technical solution for solving the technical problem, or even without any technical content, the examiner should issue a notification of examination opinion, informing the applicant to state opinions or make amendments within a specified period. If the applicant does not reply within the specified period, the examiner should issue a notice deeming the application withdrawn; if the applicant’s statement or amendment still does not comply with the regulations, the examiner can make a decision to reject.

2 Examination Based on Article 5 of the Patent Law

According to Article 5 of the Patent Law, patents shall not be granted for inventions that violate laws, social ethics, or harm public interests, or for inventions that obtain or utilize genetic resources in violation of laws or administrative regulations, and are dependent on those genetic resources.

During preliminary examination, examiners should refer to Section 3, Chapter 1, Part II of this guide and examine whether the patent application for an invention obviously violates laws, social ethics, or harms public interests in three aspects; for inventions dependent on genetic resources, whether the acquisition or utilization of genetic resources obviously violates laws or administrative regulations should be examined. If the examiner believes that all or part of the patent application falls into one of the aforementioned aspects, such as the applicant submitting the following or similar applications: “A drug-use tool,” “A gambling tool and its method of use,” the examiner should issue a notification of examination opinion, stating the reasons, and inform the applicant to state opinions or delete the relevant part within a specified period. If the applicant’s reasoning is insufficient to demonstrate that the application does not fall within the scope of Article 5 of the Patent Law, or refuses to delete the relevant part without adequate reasons, a decision to reject should be made. If the applicant deletes the relevant part according to the examiner’s opinion, adding necessary text to achieve textual coherence in the context should be allowed.

Detailed Rule 10: The aforementioned inventions that violate Article 5 of the Patent Law do not include those whose implementation is prohibited by law.

3 Examination Based on Article 19, Paragraph 1 of the Patent Law

According to Article 19, Paragraph 1 of the Patent Law, an applicant who applies for a patent in a foreign country for an invention completed in China must first submit it to the Patent Office for a confidentiality review.

According to Article 8, Paragraph 1 of the Detailed Rules for the Implementation of the Patent Law, an invention completed in China refers to an invention whose substantial content is completed within the territory of China.

During preliminary examination, if the examiner has reason to believe that the applicant has violated the above regulations and applied for a patent in a foreign country, for the same invention filed in China, a notification of examination opinion should be issued. If the applicant’s reasoning is insufficient to demonstrate that the application does not belong to the above situation, the examiner can, for reasons of non-compliance with Article 19, Paragraph 1 of the Patent Law, make a decision to reject according to Article 19, Paragraph 4 of the Patent Law and Article 50 of the Detailed Rules for the Implementation of the Patent Law.

4 Examination Based on Article 25 of the Patent Law

According to Article 25 of the Patent Law, patents shall not be granted for the following:

(1) Scientific discoveries;

(2) Rules and methods of intellectual activities;

(3) Methods for the diagnosis and treatment of diseases;

(4) Animal and plant varieties;

(5) Methods of nuclear transformation

and substances obtained by means of nuclear transformation methods.

For the methods of producing the products listed in item (4) above, patents may be granted in accordance with the provisions of the Patent Law.

During preliminary examination, examiners should refer to Section 4, Chapter 1, Part II of this guide and examine whether the invention applied for a patent clearly belongs to the objects for which patents are not granted as stipulated in Article 25 of the Patent Law. If the examiner believes that the entire content of the patent application falls into one of the situations listed in Article 25, such as the applicant submitting the following or similar applications: “A newly discovered asteroid,” “A method for diagnosing a human disease,” the examiner should issue a notification of examination opinion, stating the reasons, and inform the applicant to state opinions within a specified period. If the applicant’s reasoning is insufficient to demonstrate that the application does not fall into one of the aforementioned situations, the examiner can make a decision to reject. If the examiner believes that part of the patent application falls into one of the aforementioned situations and it is difficult to separate it from the application, it may not be processed during the preliminary examination and be left to substantive examination for handling.

5 Examination Based on Article 31, Paragraph 1 of the Patent Law

According to Article 31, Paragraph 1 of the Patent Law, a patent application for an invention should be limited to one invention. However, two or more inventions belonging to a single general inventive concept can be filed as one application.

During preliminary examination, only when a patent application contains two or more completely unrelated inventions, should the examiner issue a notification of examination opinion, instructing the applicant to modify their patent application to comply with the unity of invention requirement. If the applicant has no valid reason and refuses to amend their application, the examiner can make a decision to reject.

6 Examination Based on Article 33 of the Patent Law

According to Article 33 of the Patent Law, an applicant may amend their patent application documents. However, such amendments should not exceed the scope described in the original description and claims.

During preliminary examination, only when the examiner has issued a notification of examination opinion requesting the applicant to amend the application documents, should the examiner examine whether the amendments obviously exceed the scope described in the original description and claims. If the amendments clearly exceed the scope, such as the applicant modifying data or expanding the numerical range, adding claims for a technical solution not described in the original description, or adding a page or several pages of substantial content of the invention not recorded in the original description or claims, the examiner should issue a notification of examination opinion, informing the applicant that the modification does not comply with Article 33 of the Patent Law. If the applicant’s statement or correction still does not comply, the examiner can make a decision to reject.

During the preliminary examination process, if the applicant voluntarily amends the text in accordance with Article 57 of the Detailed Rules for the Implementation of the Patent Law, the examiner, besides performing a formal examination of the correction statement, only needs to verify whether the timing of the voluntary amendment complies with Article 57. If compliant, the examiner should process and file it accordingly; if not compliant, the examiner should process it for reference in substantive examination and file it. The content of the voluntary amendment text should not be examined and left for processing during substantive examination.

7 Examination Based on Article 20 of the Detailed Rules for the Implementation of the Patent Law

In the description, phrases unrelated to technology should not be used, nor should commercial promotional language or phrases that demean or defame others or their products be used. However, objectively pointing out technical problems in the background technology should not be considered demeaning. The description should record the technical content of the invention. If the description obviously does not comply with the aforementioned provisions, the examiner should issue a notification of examination opinion, stating the reasons, and inform the applicant to state opinions or make corrections within a specified period. If the applicant does not reply within the specified period, the examiner should issue a notice deeming the application withdrawn. If the applicant’s statement or correction still does not comply, the examiner can make a decision to reject.

During preliminary examination, as long as the description describes some technical features of the invention and formally complies with the provisions of Section 4.2 of this chapter, other substantive issues need not be examined and can be left for processing during substantive examination.

8 Examination Based on Article 22 of the Detailed Rules for the Implementation of the Patent Law

The claims should record the technical features of the invention.

The claims should not contain phrases unrelated to the content of the technical solution, such as “requesting protection of the production and sales rights of this patent,” nor should they contain commercial promotional language or phrases that demean others or their products.

During preliminary examination, if the claims obviously do not comply with the aforementioned provisions, the examiner should issue a notification of examination opinion, stating the reasons, and inform the applicant to state opinions or make corrections within a specified period. If the applicant does not reply within the specified period, the examiner should issue a notice deeming the application withdrawn. If the applicant’s statement or correction still does not comply, the examiner can make a decision to reject.

9 Examination Based on Article 11 of the Detailed Rules for the Implementation of the Patent Law

The examination of whether a patent application for an invention complies with Article 11 of the Detailed Rules for the Implementation of the Patent Law shall be conducted in accordance with the “Regulations on the Standardization of Patent Application Behavior”.