Newsletter
NEW PATENT EXAMINATION PRACTICE
To ensure the quality and transparency of patent examination, as of 1 January 2007, the Intellec-tual Property Office (IPO) started to provide search reports for patent applications in office actions or patent allowance decisions issued at the first examination stage. However, such search reports were not provided in certain office actions and patent allowance decisions recently issued for some patent applications, thereby causing confusion. On 17 April 2007, the IPO published an announcement to clarify that the new search report practice would not apply in either of the following circumstances:
‧Where a patent application has been examined, for which a pre-rejection notification for the 1st examination stage or a notification for amendment has been issued before 2006 (since comparison with prior art has been made for the application and the relevant no-tification has disclosed the result of such comparison; such notification has served the same function as the search report).
‧Where a patent application or any of its claims has any of the following condition:
1.a violation of Article 21 of the Patent Act (i.e., the claimed invention is not an inno-vation of technical conception which is based on natural laws);
2.a violation of Article 24 of the Patent Act (i.e., the invention is unpatentable);
3.the patent specification does not precisely and sufficiently disclose the content of the inventive features such that one cannot understand the invention (Paragraph 2, Ar-ticle 26 of the Patent Act);
4.the invention does not meet the industrial applicability requirement (Article 22 of the Patent Act);
5.the invention is same as the one claimed in another invention or new utility model patent application (Article 31 of the Patent Act);
6.the invention does not meet the unity re-quirement and the applicant fails to effect an amendment as requested by the IPO (Article 32 of the Patent Act); and
7.the claim covers two or more separate in-ventions in substance and a divisional ap-plication has been filed but rejected for substantive reasons (Article 33 of the Pat-ent Act).
Under any of the above circumstances, the IPO examiner should notify the patent applicant of the concerned non-compliance. If the applicant files a response or an amendment in response to the IPO's notice and corrected the concerned non-compliance, the IPO examiner should pro-vide a search report for the concerned patent application. Otherwise, the IPO examiner should not provide such report.