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New China Patent Examination Guidelines Effective November 1, 2019

The China National Intellectual Property Administration (“CNIPA”) formally announced the newly amended Patent Examination Guidelines (“Guidelines”) effective on November 1, 2019. The Guidelines were amended to improve patent quality and efficient examination.

Highlights

1. Examiner interviews are made more available, allowing applicants to request interviews anytime during substantive examination. 

2. Applicants may request expedited examination pursuant to “Regulation on Patent Prioritized Examination.”

3. For same-day filing of invention and utility model patent applications, by default, the invention patent application is not qualified for prioritized examination.

4. Upon applicant’s challenge, examiner shall provide evidence to show the source of common knowledge if it is being relied upon in a rejection.

5. Stem cells separated from human embryos becomes patent eligible.

6. Applicant may choose to delay examination of invention and design patent applications up to 3 years. For invention patent, applicant shall make such request upon requesting substantive examination. As to design patent, applicant shall make such request upon filing.

Other amendments include requiring more specificity for design patents for graphical user interfaces (GUIs), search database resources, assignment documents, timeline to file divisionals and related inventorship issues.

More details are available more details are available at: http://www.cnipa.gov.cn/zfgg/1142481.htm (Chinese only).

© 2020 Schwegman, Lundberg & Woessner, P.A. All Rights Reserved.

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About this Author

Jingyuan Nan Attorney Silicon Valley IP issues and strategies in China.
Associate

Jingyuan Nan is an attorney in the Silicon Valley office of Schwegman Lundberg & Woessner. Her practice focuses on computer and software-related intellectual property (IP) work, including preparation and prosecution of patent applications (US and international).  She is also a member of the firm’s China Practice Group, in which capacity she advises the US and international clients on IP issues and strategies in China.  

Her previous experience includes IP cross border licensing, IP portfolio management, IP due diligence for corporate mergers and acquisitions, data privacy...

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Aaron Wininger IP Attorney China Portfolio Development
Director of China Intellectual Property Law Practice Schwegman Lundberg & Woessner

Aaron Wininger is a Senior Attorney and Schwegman’s Director of China Intellectual Property. Aaron counsels both U.S. and Chinese companies on portfolio development and preparation of their patent applications and office action responses. He has worked with clients in the areas of software, networks (wired and wireless), lasers, medical devices, semiconductors and physics.

Aaron prosecutes both Chinese and U.S. trademarks. He has also drafted and prosecuted hundreds of U.S. and international patent applications in a broad spectrum of areas, including computer hardware and software, the Internet, multimedia distribution systems, computer games, digital and analog circuitry, and semiconductor design and fabrication, to name a few.

Most recently, Aaron has counseled Chinese companies on freedom to operate analyses for their entry into the U.S., represented a U.S. gaming company with operations in China, handling Series A and IP issues in China through to IPO; a U.S. scanning electron microscope company, handling their patent portfolio from incorporation through exit via acquisition, and a U.S. wireless company through acquisition. His knowledge of both the Chinese and American markets allows him to advise his clients as they expand their patent portfolios and look for investors to help the company grow.

Aaron has been in China for more than a decade and is conversational in Mandarin. 

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