Chapter 2 Preliminary Examination of Patent Applications for utility Model
1. Introduction
In accordance with the provisions of Articles3 and 40,the patent office receives and examines patent applications for utility model. where it is found after preliminary examination that there is no grounds for rejection of the application, the patent officeshall make a decision to grant the patent right for utility model, issue the relevant patent cer-
tificate, and register and announce it. Hence, the preliminary examina- tion of a patent application for utility model is a necessary procedure after the acceptance of a patent application for utility model, and before the grant of that application.
The scope of the preliminary examination of a patent application for utility model is as follows:
(1)formal examination of the application documents, including whether or not the patent application contains the application docu- mentsas provided for in Article26, and whether or not the documents are in conformity with the provisions of Rules2 , 3 , 16-23 , 40 , 42 , 43.2 , 43.3 , 51 , 52 , 119, and 121 ;
(2)examination on obvious substantive defects of the application documents, including whether or not the patent application obviously falls under Article5 or 25, or is obviously not in conformity with the provisions of Article18 , 19 . 1 or 20 . 1, or is obviously not in conformi- ty with the provisions of Article2 . 3 , 22 . 2 or 22 . 4 , 26 . 3 or 26 . 4 , 31.1 , 33,or Rules17-22 , 43 . 1, or is not entitled to a patent right in ac- cordance with the provisions of Article9;
(3)formal examination of other documents, including whether or not other formalities and documents relating to the patent application are in conformity with Articles10 . 2 , 24 , 29 , 30 and Rules2 , 3 , 6 , 15 ,
30 , 31 . 1-31 . 3 , 32 , 33 , 36 , 45 , 86 , 100 and 119;and
(4)examination of the relevant fees, including whether or not the relevant fees for the patent application have been paid in accordance with Rules93 , 95 and 99 .
2. Principles of Examination
In the procedure of preliminary examination, the examinershall a- bide by the following principles of examination.
(1)principle of confidentiality
In the patent application examination and approval proceedings, the examinershall be obliged to keep confidential the patent application documents and other patent application related contents that are not published or announced, and other information that is not proper to be made known in accordance with the relevant provisions on confidential- ity.
(2)principle of written examination
The examinershall examine on the basis of the written documents submitted by the applicant. The office Action (including the Notifica- tion to Make Rectification)and the result of examination shall be sent in written form to notify the applicant. In the preliminary examination procedure, no interviewshall beheld in principle.
(3)principle of hearing
Before making a decision of rejection, the examinershall notify the applicant of the facts, grounds and evidence for rejection, and give the applicant at least one opportunity to make observations and/or a- mend the application documents. when the examiner makes a decision of rejection, the facts, grounds and evidence for rejection shall have been notified to the applicant, and the decision shall not contain any new facts, grounds and/or evidence.
(4)principle of procedural economy
where the provisions are complied with, the examinershall im- prove the efficiency of examination as much as possible, and shorten the examination period. with regard to the application with defects that can be eliminated through rectifications, the examinershall conduct a comprehensive examination and do his best to point out all the defects in one Notification to Make Rectification. with regard to the application with substantive defects that can not be eliminated through rectifica- tions, the examiner may only point out the substantive defects in the office Action without examining the formal defects in the application documents and other documents. with regard to the application with defects that all of them can be amended ex officio, the examiner may not issue the Notification to Make Rectification.
In addition to complying with the above principles, the examiner shall notify the applicant of subsequent procedures that can be initiated while making the decision that any document relating to the patent ap- plication is deemed not to have been submitted, the decision that the application is deemed to have been withdrawn, or the decision of rejec- tion.
3. Procedure of Examination
3. 1 Notification to Grant Patent Right
where it is found after preliminary examination that there is no grounds for rejection of the patent application for utility model, the ex- aminershall make a decision to grant the patent right for utility model. The patent application for utility model for which the patent right may be granted includes the application which satisfies the requirements of the preliminary examination without the necessity of rectification and the application which meets the requirements of the preliminary exami- nation through rectification.
The Notification to Grant patent Rightshall, besides the informa- tion of the addressee and the bibliographic data, include the text to which the right is granted and the name of the utility model.where the examiner has made amendments ex officio, the corresponding content of the amendments shall be indicated.
3.2 Rectification of Application Documents
During preliminary examination, for a patent application whose application documents have defects that can be eliminated through rectifications, the examinershall conduct a comprehensive examination and issue the Notification to Make Rectification. where the defects still exist in the application documents after the applicant makes rectification, the examinershall issue another Notification to Make Rectification.
The Notification to Make Rectification shall, besides the information of the addressee and the bibliographic data, include the following con- tents:
(1)pointing out which documents the Notification to Make Rectification is directed to and when the applicant filed them;
(2)clearly and specifically pointing out the defects in the applica- tion documents, and pointing out what provisions of the patent Law and its Implementing Regulations the application documents do not comply
with;
(3) making the examiner,s opinion clear and specific with possible suggestions so as to enable the applicant to understand the examiner, s intentions;
(4)specifying the time limit of response to the Notification to Make Rectification for the applicant;and
(5)suggesting the applicant the types of documents and there- quired number thereof while making rectification.
3.3 Handling of obvious substantive Defects
During the procedure of the preliminary examination, if the exam- iner finds the application documents of a patent application have obvi- ous substantive defects that cannot be eliminated through rectification, the examinershall issue an office Action.
The office Action shall, besides the information of the addressee and the bibliographic data, include the following contents:
(1)pointing out which documents the office Action is directed to and when the applicant filed them;
(2)clearly and specifically pointing out the defects in the applica- tion documents, and pointing out which provisions of the patent Law and its Implementing Regulations the application documents do not comply with;with regard to the facts that the application includes ob- vious substantive defects, the examiner may make explanation in sup- port of evidence when necessary;
(3)making clear the examiner,s opinion that the patent applica- tion is to be rejected under the relevant provisions of the patent Law and its Implementing Regulations;and
(4)specifying the time limit of response to the office Action for the applicant.
3.4 Response to Notification
The applicantshall, after receiving the Notification to Make Rectifi- cation or the office Action, make rectification or observations in the specified time limit. The applicantshall, when making rectification of the patent application, submit the rectification and the corresponding re- placement sheets of the amended documents. The replacement sheets of the amended application documents shall be in duplicate, while only one copy is required for other documents. The amendment of the ap- plication documents shall be made to the defects pointed out in the No- tification to Make Rectification. The content of amendmentshall not go beyond the scope described in the description and claims filed on the date of filing.
where the applicant makes no response within the time limit, the examinershall, depending on the circumstances, issue the Notification that Application Deemed to be withdrawn or other notifications. where it is difficult for the applicant to make response within the specified time limit due to justified reasons, he may request to extend the time limit. The provisions of chapter7, section 4 of part V of these Guidelines shall apply when handling the request for extension of the time limit.
where a patent application is deemed to have been withdrawn re- sulting from failure to meet the time limit due to force majeure or with justified reasons, the applicant may, within the prescribed time limit, submit a request to the patent office for restoration of the right. The provisions of chapter7, section 6 of part V of these Guidelines shall apply when handling the request for restoration of the right.
3.5 Rejection of Application
3.5. 1 Conditions of Rejection
where obvious substantive defects which, the examiner believes,
can not be eliminated through rectifications exist in the application doc- uments, if the applicant, within the specified time limit, has neither put forward any convincing observations and/or evidences, nor made any amendments on the defects pointed out in the notification after the ex- aminer,s issuance of the office Action, for example, the applicant only corrects the clerical mistakes or changes the expressions, the examiner may make a decision of rejection. where the applicant has made amendments on the defects pointed out in the notification, another op- portunity to make further observations and/or amendments to the appli- cation documents shall be provided to the applicant even if the said de- fects still exist. However, where the later amendments concern the same kinds of defects, if such defects which have been notified to the applicant still remain unrectified, the examiner may make a decision of rejection.
where formal defects which can be eliminated through rectification exist in the application and remain unrectified after the applicant makes observations or rectification within the specified time limit upon the ex- aminer,s issuance of the Notification to Make Rectification twice in re- spect of the said defects, the examiner may make a decision of rejection.
3. 5.2 The Text of Decision of Rejection
The text of the decision of rejection shall include three parts:brief of the case, grounds for rejection, and conclusion.
(1)The part of brief of the caseshall indicate the text of the appli- cation upon which the decision of rejection is based and briefly state the examination procedure of the rejected application.
(2)The part of grounds for rejection shall state in detail the facts, grounds and evidence on which the rejection is based, with special at- tention paid to the following requirements:
(i)applying the provisions appropriately. where a patent applica- tion can be rejected under different provisions of the patent Law and its Implementing Regulations, the rejection shall be based upon the most ap- plicable, dominant provisions, and all the other substantive defects in the patent application shall be indicated briefly;the provisions upon which rejection is based shall be included in the list provided in Rule44.
(ii)basing the rejection on the convincing facts, grounds and evi- dence, and the hearing of these facts, grounds and evidence has been in conformity with the requirements for the rejection of the application;
(iii)where an application is to be rejected due to the remaining defects which are not eliminated after several rectifications, the examin- ershall point out that the defects still exist in the final rectified docu- ments after the examiner has issued twice or more the Notification to Make Rectification regarding the said defects;and
(iv)where the rejection is made on the basis of Article2 . 3 , 5 , 9 , 20 . 1 , 22 . 2 or 22 . 4 , 25 , 26 . 3 or 26 . 4 , 31 . 1 , 33,or Rule20 , 43 . 1, the obvious substantive defects of the application documents shall beana- lyzed.
The examinershall also give a brief comment on the argument made by the applicant in the part of the grounds for rejection.
(3)The corresponding provisions of the patent Law and itsImple- menting Regulations which the patent application is contravening shall be clearly indicated in the part of conclusion with a statement that the patent application is rejected in accordance with Rule44 . 2 .
3.6 Interlocutory Examination and Handling after Reexamination
where a patent application is rejected for not in conformity with the provisions of the patent Law and its Implementing Regulations, the applicant may, within the prescribed time limit, file areexamination request with the patent Reexamination Board if he is not satisfied with the decision of rejection. For the interlocutory examination for there- examination request and the handling after reexamination, the provi- sions of chapter8, section 8 of partⅡ of these Guidelines shall apply.
4. Examination of other Documents and Relevant Formalities
4.1 Appointment of patent Agency
The provisions in chapter1 , section 6 . 1 of this partshall apply.
4.2 claiming Right of priority
The provisions in chapter1 , section 6 . 2 of this partshall apply.
4.3 Non-prejudicial Disclosures
The provisions in chapter1 , section 6 . 3 of this partshall apply.
4.4 Declaration of Withdrawing patent Applications
The provisions in chapter1 , section 6 . 6 of this partshall apply.
4.5 changes in Bibliographic Data
The provisions in chapter1 , section 6 . 7 of this partshall apply.
5. Examination in Accordance with Articles5 and25
For the examination on whether a patent application for utility
model obviously belongs to the application for which no patent right shall be granted under Articles5 and 25, the provisions in chapter1 ,
section 3 and 4 of partⅡ of these Guidelines shall apply.
6. Examination in Accordance with Article2.3
In accordance with Article2 . 3,“utility Model”in the patent Law means any new technical solution relating to the shape, the structure, or their combination, of a product, which is fit for practical use. This is the general definition of utility model which is eligible for patent pro- tection, and is not the specific examination criteria to determine the novelty, inventiveness and practical applicability.
6. 1 only product can Get patent protection for utility Model
According to Article2 . 3, patent for utility model can be granted only for products.The products herein shall be objects manufactured by industrial methods, having definite shape and structure, and occup- ying a certain space.
All the processes and the objects which exist naturally and are not made by man are not the subject matter protected by the patent for util- ity model.
The processes referred to above include the manufacturing proces- ses, methods of use, methods of communication, processing methods, computer programs or the method of applying a product to a specific purpose, etc.
For example,aprocess of manufacturing a kind of gear,a method of dust-eliminating in the workshop,a data processing method and nat- urally existing yuhua stones, etc., shall not be the subject matters eligi- ble for patent protection for utility model.
An invention-creation may include not only the improvement of the shape and structure of a product, but also the improvement of the specific method, process, and the material of which the product is made. However, the patent for utility model only protects the improved technical solutions relating to the shape or structure of a product.
It shall be noted that:
(1)the claims may include the name of known method to define the shape or structure of a product, and shall exclude the steps or pro- cessing conditions of the method. For example, if the name of known method, such as soldering or riveting, is used to define the connection of different parts, the claim does not include the improvement relating to the method perse.
(2)if a claim contains not only the features of shape and struc- ture, but also improvement relating to the method perse, such as tech- nical features defining the method for making or using product, or tech- nical features defining computer program, it does not belong to the sub- ject matter eligible for patent protection for utility model. For exam- ple,a kind of wood toothpick, whose main part is cylindrical and whose end parts are conical, is characterized by processing the said wood toothpick into a predetermined shape, immersing the said wood tooth- pick in medical bactericide for 5-20 minutes, then taking it out and airing it. since the claim contains the improvement relating to the method perse,it does not belong to the subject matter eligible for pa- tent protection for utility model.
6.2 shape and/or structure of Product
In accordance with Article2 . 3, the subject matter of utility model shall include the improvement relating to the shape and/or structure of product.
6.2. 1 shape of Product
The shape of aproduct refers to certain space-shape possessed by the product, which can be observed from the outside.
The improvement relating to the shape of a product may be the improvement relating to either the three-dimensional shape of the prod- uct, such as the improvement of the shape of a cam or a cutter, or the two-dimensional shape of the product, such as the improvement of the cross-sectional shape of a profiled bar.
As for the product which has anon-fixed-shape, such as the sub- stance or material in gaseous state, liquid state, powder state or particle state, its shape cannot be regarded as the shape feature of a utility mod- el product.
It shall be noted that:
(1)the biological shape or naturally-formed shape cannot beregar- ded as the shape feature of a product. For example, neither the shape of a miniature tree growing in a potted landscape nor the shape of natu- rally-formed rockery can be regarded as the shape feature of a product;
(2)anon-fixed shape formed by means of arrangement or stacking cannot be regarded as the shape feature of a product;
(3)a product may have a certain technical feature of non-fixed shape substance, such as the substance in gaseous state, liquid state, powder state or particle state, provided that it is defined by the structure feature of the product. For example, it is permitted to have ethyl alco- hol of non-fixed shape included in the technical solution relating to the shape or structure of a thermometer;and
(4)the shape of a product may be a definite space-shape which exists under specific circumstances, such as an ice-made cup with acer- tain novel shape, or a parachute, etc. Again, for example,a kind of steel band packing case for transporting and storing the steel band, which consists of internal steel ring, external steel ring, binding band, external protection plate, and waterproof composite paper. However, when it is used to pack the steel band correlatively in accordance with the technical solution,a fixed space-shape will be formed, which is not arbitrary. such a packing case is the subject matter eligible for patent protection for utility model.
6.2.2 structure of Product
The structure of a product refers to the arrangement, organization and correlation of each part of a product.
The structure of a product may be either the mechanical structure or the circuit structure. The mechanical structure refers to the relative position relationship, coupling relationship, and necessary mechanical matching relationship and so on of the components or parts of which the product consists. The circuit structure refers to the fixed connection relationship amongst the components or elements devices of which the product consists.
The composite layer may be regarded as the structure of the prod- uct. Carburized layer, oxide layer and so on of a product belong to the structure of the composite layer.
The molecular structure, component and metallographic structure of a substance do not belong to the structure of the product protected by a patent for utility model. For example,a welding rod which has only a change in the composition of soldering paste is not the subject matter eligible for patent protection for utility model.
It shall be noted that:
(1)the claims may include the names of known materials. The use of material known in the prior art in the product which has its own shape and structure, for example, composite floorboards, plastic cup,
heart catheter holder made of alloy with memory, is not improvement relating to the material perse.
(2)If the claim contains not only the features of shape and struc- ture, but improvement relating to the material perseaswell, it is not the subject matter eligible for patent protection for utility model. For example,a rhombic tablet, which is characterized in that the tablet com- prises 20% of component A,40% of component B, and 40% of com- ponent C. since the claim contains the improvement relating to thema- terial perse, it is not the subject matter eligible for patent protection for utility model.
6.3 Technical solution
The technical solution provided in Article2 . 3 refers to the collec- tion of technical means that are adopted to solve a technical problem in observance of the laws of nature. The technical means is usually em- bodied by technical features.
solutions that do not use technical means to resolve technical problems and to achieve technical effect in conformity with the laws of nature are not the subject matter eligible for patent protection for utility model.
If the new solution consisting of the shape of a product or of the pattern, color, or the combination thereof in the appearance of a product does not solve any technical problem, it is not the subject matter eligi- ble for patent protection for utility model. The new solution consisting of character,symbol, chart or the combination thereof in the appearance of a product is not the subject matter eligible for patent protection for utility model. For example,a keyboard of computer or mobile phone with changed characters and symbols in its appearance;can opener with the shapes of twelve animals representing the twelve Earthly Bran- ches, used to symbolize the year in which a person is born;chess or cards and their like, of which the distinguishing features are just in their pattern design, like ancient poetry cards, and so on.
7. Examination of Application Documents
7. 1 Request
The provisions in chapter1 , section 4 . 1 of this partshall apply.
7.2 Description
In the preliminary examination, the description shall be examined whether or not it is obviously not in conformity with Article26 . 3 and Rule17 . 1-17 . 3 . For examination relating to Article26 . 3, the provi sions in chapter2 , section 2 . 1 of partⅡ of these Guidelines shall apply.
The examination of the description includes the following:
(1)the description shall set forth the utility model in a manner sufficiently clear and complete so as to enable a person skilled in the art to carry it out,which means that such person can carry out the technical solution of the utility model, solve the technical problem and achieve the expected technical effects according to the contents of the description;
(2)the description shall state the title of the utility model, which shall be the same as that appearing in the request. The description shall include the technical field, background art, contents of the utility mod- el, description of figures and mode of carrying out the utility model, and the title of each partshall be indicated respectively;
(3)in the part of the contents of the utility model, it shall disclose the technical problem to be solved by the utility model, the technical solution adopted to solve the problem, and the advantageous effects of the utility model as compared with the prior art. The technical problem to be resolved, the technical solution adopted and the advantageous effects shall be mutually compatible, and not contradictory, or irrele- vant;
(4)the contents of the utility model described in the description shall be consistent with the relevant technical solutions defined in the claims;
(5)the name of each drawing shall be indicated in the description, and a brief explanation of the contents of the drawings shall be presen- ted. where there is more than one drawing, each of them shall be ex- plained;
(6)in the part of the mode of carrying out the utility model, at least one preferential embodiment of the utility modelshall be stated, and it shall be described with reference to the drawings;
(7)in the description, the standard terms shall be used, the word- ing shall be clear, the technical terminology adopted shall be accurate to express the technical solution of the utility model. The description shall not contain such references to the claims as“as described in claim xx”, nor shall it contain words or sentences for commercial advertising or for belittling other person or products thereof;
(8)the text of the description may contain chemical or mathemati- cal formulae or charts, but no drawings, including flowchart, block dia- gram, diagram of curves and phase diagram, etc., which may be used as the drawings of the description only;
(9)where the text of the description contains explanation of draw- ings, but the corresponding drawings are absent, the applicantshall be notified to delete the explanation of drawing from the text of the de- scription, or to supplement the corresponding drawings within the speci- fied time limit. where the applicant supplements drawings, the date on which the drawings are submitted or mailed to the patent officeshall be the date of filing, and the examinershall issue the Notification ofRe- determination ofFiling date. where the applicant deletes the explana- tion of drawings, the original date of filing shall remain;and
(10)the description shall be consecutively numbered in Arabic nu- merals.
7.3 Drawings
The drawings area component part of the description. The func- tion of drawings is to supplement the explanation in the text of the de- scription with figures to enable a person to intuitively and visually un- derstand each technical feature and the whole technical solution of the utility model. Therefore, the drawings shall clearly reflect the contents of the utility model.
The drawings shall be examined in accordance with Rules17 . 5 and 18 . The examination of the drawings shall include the following:
(1 )no engineering blueprints or photographs shall be used as drawings;
(2)the drawings shall be drawn by drawing instruments including computers and in black ink, and the lineshall uniformly thick and dis- tinct, free from color and alteration. Frame lines irrelevant to the fig- ures are not allowed around the figures;
(3)the figures shall be numbered consecutively in Arabic numeri- cal order as“Fig. 1”and “Fig. 2”, and the numbershall be placed right below each figure;
(4)figures shall be preferably arranged in an upright position on the paper, one clearly separated from another. when the transverse di- mension of the parts obviously exceeds their vertical dimension and they must be horizontally placed, the top of the figureshall be arranged on the left of the paper. when there are two or more figures on one piece of paper, and one is horizontally arranged, the other figures on the same piece of papershall also be horizontally arranged;
(5)the scale and distinctness of the drawings shall be as such that areproduction with a linear reduction in size to two-thirds would still enable all details to be clearly distinguished to meet the requirement of copying and scanning;
(6)where there are several drawings in one patent application, the reference signs used for the same constituent part(same technical fea- ture or same object)in different figures describing the same mode of carrying out the utility modelshall be identical. The reference signs used in the text of the description and in the drawings shall indicate the same constituent part. The reference signs not mentioned in the text of the description shall not appear in the drawings, and the reference signs not used in the drawings shall not be mentioned in the text of the de- scription;
(7)the drawings shall not contain any other notes, except indis- pensable words which shall be in chinese;when necessary, the original words may be indicated in brackets thereafter;
(8)the structure diagram, logic diagram and flowchart shall have necessary words and symbols contained in its frame;
(9)the identical scaleshall be adopted in the same figure, an addi- tional figure of partial enlargement may be added in order to make cer- tain part of the figure shown distinctively;
(10)the drawings shall contain figures demonstrating the shape, structure or their combination of the product to be protected. They shall not contain only the figures of prior art or figures demonstrating the effect or function of the product, such as graphs of temperature changing;and
(11)all the pages of drawings of the description shall be consecu- tively numbered in Arabic numerals.
7.4 Claims
In the preliminary examination, the claims shall be examined whether they are obviously not in conformity with Article26 . 4 and Rules19-22 . For the examination according to Article26 . 4, the provi- sions in chapter2 , section 3 . 2 of partⅡ of these Guidelines shall ap- ply.
The examination of the claims shall include the following:
(1)the claims shall be supported by the description and shall de- fine the extent of the patent protection asked for in a clear and concise manner;
(2)the claims shall describe the technical features of the utility model;
(3)an independent claim shall outline the technical solution of a utility model. Except where it is required to be expressed in another form, the independent claim shall contain a preamble portion and a characterizing portion. The preamble portion shall indicate the title of the subject matter of the technical solution of the utility model seeking protection, and those necessary technical features which the subject matter of the utility model share with the most related prior art. The characterizing portion shall state, in such words as“characterized in that”or in similar expressions, the technical features of the utility model which distinguish it from the most related prior art;
(4)a dependent claim shall, by additional technical features, fur- ther define the claim which it refers to. It shall contain a reference por- tion and a characterizing portion. The reference portion shall indicate the serial number(s)of the claim(s)referred to, and the title of the sub- ject matter, which is the same as that appearing in the independent claim. The characterizing portion shall state the additional technical features of the utility model;
(5)a utility modelshall have only one independent claim, which shall precede all of the dependent claims relating to the same utility model;
(6)the contents which are stated in the claims but not in the de- scription shall be added to the description;
(7)the claims shall not include any feature that does not produce any technical effect;
(8 )the claims generally shall not include any technical features defined by graphics;
(9)the claims shall avoid using, as far as possible, any feature of function or effect to define the utility model. The characterizing por- tion shall not state the function of the utility model alone. only if cer- tain technical feature cannot be defined with the feature of structure, or the technical features are less properly defined with features of structure than with features of function or effect, and the said function and effect have been fully described in the description, it is possible to allow the utility model defined with features of function or effect;
(10)the claims shall not contain any sentences the technical mean- ing of which is ambiguous or uncertain;and
(11)the claims shall not use any words or sentences irrelevant to the content of technical solution, such as“claiming the right of manu- facture or sale of the patent”, nor shall use any words or sentences for commercial advertising or belittling other person or product thereof.
Moreover,the claims shall be in conformity with the following formality requirements:
(1)the full stop shall be used only at the end of each claim. Each claim shall be expressed either in one natural paragraph, or in several lines or sub-paragraphs in one natural paragraph, and only a comma or a semicolon may be used at the end of the line or sub-paragraph.
where necessary, the sequence number may be placed before the line or subparagraph;
(2) no titleshall be used in claims;
(3)where there are several claims, they shall be numbered consec- utively in Arabic numerals;
(4)the claims may contain chemical or mathematical formulae but no drawings, and no forms in general. They shall not, except where it is absolutely necessary, contain such references to the description or drawings“as described in part … of the description”, or“as illustrated in Figure… of the drawings”;
(5)in order to facilitate understanding of the technical solution de- scribed in the claims, the technical features mentioned in the claims may make reference to the corresponding reference signs in drawings of the description. such reference signs shall be included after the corre- sponding technical features and placed in parenthesis. The reference signs shall be the same as those that appear in the drawings of the de- scription;
(6 )a dependent claim shall refer only to a previous claim or claims. Amultiple dependent claim referring to two or more previous claims shall refer to such claims in the alternative only, and shall not serve as a basis for any other multiple dependent claim,i.e. , the subse- quent multiple dependent claims shall not refer to the preceding multi- ple dependent claims;and
(7)all the pages of claims shall be numbered consecutively in Ar- abic numerals.
7.5 Abstract
The examination of the abstract shall be conducted in accordance with Rule23, including the following:
(1)the abstract shall indicate the title and technical field of the u- tility model, clearly present the technical problems to be solved, the gist and principal use of the technical solution to the problem, especially the technical features which represent the improvement of the shape or structure of the utility model as compared with the prior art. The ab- stractshall not be written as a commercial advertisement or an intro-
duction of the product of a purely functional nature;
(2)the abstract shall not use the title of the utility model as its ti- tle;
(3)the abstract may contain chemical or mathematical formulae;
(4)the whole text of the abstract shall contain no more than 300 chinese characters(including punctuation marks);and
(5)the abstract shall contain a figure accompanying the abstract, which is submitted by the applicant and selected from the drawings of the description and can show the technical solution.
7.6 Format Examination of Application Documents for Publication The provisions in chapter1 , section 4 . 6 of this partshall apply.
8. Examination in Accordance with Article33
The applicant may make amendment to his patent application for utility model in accordance with Article33 . However, the amendment to the patent application documents for utility modelshall not go be- yond the scope described in the initial description and claims.
If the applicant, when amending the application documents, intro- duces any contents which cannot be directly and unambiguously de- rived by a person skilled in the art from the initial description and claims, such amendmentshall be regarded as having gone beyond the scope described in the initial description and claims.
If the applicant deletes one or more features from an application, it may also lead to go beyond the scope described in the initial descrip- tion and claims.
If any technical feature which is included in the initial claims but not described in the initial description is introduced into the description and its contents are extended, such amendmentshall be regarded as go- ing beyond the scope described in the initial description and claims.
If any technical feature, which is not described in the initial de- scription and claims and cannot be unambiguously determined by virtue of the contents of the initial description drawings, is introduced into the description, such amendmentshall be regarded as going beyond the scope described in the initial description and claims.
It shall be noted that:
(1)the correction of obvious mistakes shall not be regarded as go- ing beyond the scope described in the initial description and claims. “obvious mistakes”means the incorrect contents which can be clearly judged from the context of the initial description and claims and with- out any possibility of other explanations or amendments;and
(2)any structure feature, which can be obviously seen from the drawings and has only one possible explanation, may be introduced in- to the description and included in the claims.
In accordance with Rule51, the applicant may amend the patent application documents for utility model on his own initiative within two months from the date of filing. Besides, the applicantshallamend the application documents on the defects pointed out in the Notification up- on receipt ofthe office Action or the Notification to Make Rectification from the patent office.
8. 1 Amendment Made by Applicant on His own Initiative
with regard to the amendment made by the applicant on his own initiative, the examinershall first examine whether or not the date of a- mendment is within two months from the filing date. with regard to the amendment made two months later, if the amended documents re- move the defects existing in the initial application documents, and have the prospect of being granted the patent right, the amended documents may be accepted. with regard to the amended documents which cannot be accepted, the examinershall issue the Notification that Amendments Deemed Not to Haue Been submitted.
with regard to the amendment made by the applicant on his own initiative within the two months, the examinershall examine whether or not the amendment goes beyond the scope described in the initial de- scription and claims. If the amendment goes beyond the scope de- scribed in the initial description and claims, the examinershall issue the office Action to notify the applicant that the amendment is not in con- formity with the provisions of Article33 . If the amendment is still not in conformity with the provisions after the applicant makes observations or rectification, the examiner may make a decision of rejection accord- ing to the provisions of Article33 and Rule44 .
8.2 Amendment as Required by the Notification
with regard to the amendment in response to the notification, the examinershall examine whether or not the amendment goes beyond the scope described in the initial description and claims, and is made as re- quired by the notification. where the rectified documents submitted by the applicant contain amendments which are not made as required by the notification, if the amendments are in conformity with the provi- sions of Article33, the amendments may be deemed to be the amend- ments made as required by the notification and the application docu- ments amended in this way may be accepted, provided that the defects existing in the initial application documents are eliminated in the amen- ded documents and there is prospect for the application to be granted the panted right. where the amended documents are not in conformity with the provisions of Rule51 . 3, the examiner may issue a notifica- tion, state the reason for not accepting the amendment, and invite the applicant to submit an amendment complying with the provisions of Rule51 . 3 within the specified time limit. In the meanwhile, it shall be indicated that if the text of amendment submitted by the applicant is still not in conformity with the provisions of Rule51 . 3,the examiner will continue examination based on the former application documents without the amendments, which may, for example, lead to a decision of granting patent right or decision of rejection.
If the amendment goes beyond the scope described in the initial description and claims, the examinershall issue the office Action to notify the applicant that the amendment is not in conformity with the provisions of Article33 . If the amendment is still not in conformity with the provisions after the applicant makes observations or rectifica- tion, the examiner may make a decision of rejection according to the provisions of Article33 and Rule44 .
8.3 Amendment Made by Examiner Ex officio
The examiner may make amendments to the obvious clerical mis- takes and symbol mistakes in the documents of patent application Ex officio before he issues a Notification to Grant patent Right for utility Model. The contents of such amendment include the following:
(1)request:amend the omission, error or repetition of names of the province(autonomous region, the municipality directly under the central Government), names of the city, postal code and other informa- tion in the address of the applicant or contact person;
(2 )description:amend the obviously improper title and/or the technical field of the utility model;correct wrong or misused words, symbols and signs, etc.;revise obviously nonstandard terms;add titles missing in each part of the description;and delete unnecessary explan- atory notes in the drawings;
(3 )claims:correct wrong or misused words, wrong punctuation marks, wrong reference signs, and add parenthesis to reference signs. But any amendment likely to cause the change of the protection scope falls outside the scope of amendment made ex officio;and
(4)abstract:amend the improper contents and obvious errors in the abstract, and specify the abstract drawing.
The amendment made by the examiner ex officio shall be recorded in the documents and be notified to the applicant.
9. Examination in Accordance with Article31. 1
The examination of a patent application for utility model on the obvious lack of unity shall be conducted in accordance with the provi- sions of Article31 . 1 and Rule34 . In the preliminary examination of the utility model, the special technical features are generally determined on the basis of the background art described in the documents of the application.
with regard to the examination of unity, the provisions in chapter 6, section 2 of partⅡ of these Guidelines shall apply.
10. Examination in Accordance with Rule43
The examination on the divisional application for utility model shall be conducted in accordance with the provisions of Rules42 and 43 . with regard to the examination of divisional application, the provi- sions in chapter1 , section 5 . 1 of this partshall apply, and the provi- sions in chapter6 , section 3 of partⅡ of these Guidelines shall also apply.
11. Examination in Accordance with Article22.2
In the preliminary examination, the examiner generally does not determine on search whether a utility model is obviously lack of novel- ty, but may determine on the information of related prior art or conflict- ing applications obtained not through search.
However, where an abnormal applications for utility model is in- volved, such as an application obviously plagiarizing prior art or repeat- ed submission of an application with substantially identical content, the examinershall judge whether the utility model is obviously lack of novelty depending on the reference document obtained through search or information obtained by other approaches.
with regard to the examination on novelty, the provisions of chapter3 of partⅡ of these Guidelines shall apply.
12. Examination in Accordance with Article22.4
practical applicability means that the product of a patent applica- tion for utility model must be one which can be made or used in an in- dustry and can produce positive effect.
with regard to the examination on practical applicability, the provisions of chapter5 of part Ⅱ of these Guidelines shall apply.
13. Examination in Accordance with Article9
In accordance with Article9 . 1, for any identical invention-crea- tion, only one patent rightshall be granted. In accordance with Article 9 . 2, where two or more applicants file applications for patent for the i- dentical invention-creation, the patent rightshall be granted to the ap- plicant whose application was filed first.
In the preliminary examination, whether or not a patent application for utility model may obtain a patent right according to Article9 shall not be examined through search in general. However, if the examiner knows that there is an applicant who has filed a patent application for the identical invention-creation, he shall conduct the examination.
with regard to the handling of identical inventions-creations, the provisions in chapter3 , section 6 of partⅡ of these Guidelines shall apply.
14. Examination in Accordance with Article20. 1
In accordance with Article20 . 1, where the applicant files abroad a patent application for utility model developed in china, he shall file it in advance with the patent office for confidentiality examination.
In accordance with Rule8 . 1, the utility model developed in china refers to a utility model the substantive contents of the technical solu- tion of which was made within the territory of china.
In preliminary examination, where the examiner finds, with justi- fied reasons,that the applicant filed abroad a patent application in vio- lation of above provisions, the examinershall issue an office Action re- garding the application for utility model with identical contents filed in china. If the observations made by the applicant fail to prove that the application does not fall under the circumstances mentioned above, the examiner may reject the application on the basis of Article20 . 1,Arti- cle 20 . 4,and Rule44 .
15. Examination of International Application Entering the National Phase
This section provides explanations and stipulations only for special issues of the international applications for patent protection of utility model entering the national phase(hereinafter referred to as international application) . For the issues which are the same as those in national applications, other provisions of this chaptershall apply.
15. 1 Determination of the Texts Forming Basis for Examination
15. 1. 1 Request of Applicant
At the time of entering the national phase, the applicant of an in- ternational application shall indicate, in the written entering statement (hereinafter referred to as entering statement), the text which he wishes the patent office use for examination.
The examination of the international application in the national phaseshall be performed, upon the request of the applicant, on the basis of the text indicated in the written entering statement and other texts submitted in a later stage which meet the relevant requirements.
15. 1.2 Text Forming Basis for Examination
The text used as the basis for examination may include:
(1)where the international publication of an international applica- tion is in chinese, the international application as originally filed; where the international publication of an international application is in a foreign language, the chinese translation of the international application as originally filed;
(2)where the international publication of an international applica- tion is in chinese, the claims as amended and submitted under Article
19 of the Treaty;where the international publication of an international application is in a foreign language, the chinese translation of the claims as amended and submitted under Article19 of the Treaty;
(3)where the international publication of an international applica- tion is in chinese, the claims, description and drawings as amended and submitted under Article34 of the Treaty;where the international publi- cation of an international application is in a foreign language, the chi- nese translation of the claims, description and drawings as amended and submitted under Article34 of the Treaty;
(4)the amended text of the application as submitted under Rules
44 and/or 104;and
(5)the amended text of the application as submitted under Rule 112 . 1 .
The submission of the claims, description and drawings amended under Articles28 and 41 of the Treaty shall meet the time limit prescribed in the provisions of Rule112 . 1 .
The texts used as the basis for examination shall be the one indica- ted in the statement concerning the basis for examination. The state- ment shall contain indications in the prescribed items of entering state- ment at the time of entering the national phase, and the complementary indications made by the way of complementary statement within the prescribed time limit after entering national phase. The latter is a com- plement and a correction to the former.
If the applicant indicates in entering statement that there are ele- ments or parts incorporated by reference in the application documents and the filing date for china has been redetermined in the preliminary examination stage, the elements or parts incorporated by referenceshall be considered as part of the application documents originally submit- ted. The applicantshall not be permitted to retain the elements or parts incorporated by reference by the means of requesting to amend the in- ternational application date for china in the process of examination.
where, the amendments made in the international phase fail to be indicated as the basis for the examination at the time of entering thena- tional phase,or where the chinese translation of the amendments is not submitted according to the provisions, it shall not be used as the basis for examination.
15. 1.3 Legal Effect of International Application Documents as originally Filed
where the international publication of an international application is in a language other than chinese, the examination shall be conducted according to its chinese translation. The examiner, generally speaking, need not check the original. Nevertheless, the international application documents as originally filed shall have legal effect and form the legal basis for any amendment to the application documents.
For an international application, the original description and claims indicated in Article33 refer to the description, claims, and drawings of the international application as originally filed.
15.2 Requirements of Examination
15.2. 1 Examination of Application Documents
provisions of the paten Law, its Implementing Regulations and the
Guidelines shall be applied to the form or content of the application documents, except for the following:
(1) where there are no redundant words in the name of utility model, the examinershall not request the applicant to amend or amend them ex officio on the grounds of not complying with the requirements on the number of words in the name as provided for in chapter1 , sec- tion 4 . 1 . 1 of partI of these Guidelines.
(2)where there are no unnecessary words or sentences in the ab- stract, the examinershall not request the applicant to amend or amend them ex officio on the grounds of not complying with the requirements on the number of words in the abstract as provided for in Rule23 . 2 .
(3)The examinershall not request the applicant to amend or a- mend ex officio the description on the grounds of not complying with the requirements on the manner, order and subtitle as provided for in Rules17 . 1 and 17 . 2 .
15.2.2 Examination of unity
In the examination, if the examiner finds, in the application docu- ments used as the basis for the examination, there are multiple claimed utility models between which unity does not exist, the following aspects shall be checked:
(1)whether the multiple utility models lacking unity contain any invention-creation which has not been conducted international search or international preliminary examination in the international phase;
(2)whether the multiple utility models lacking unity contain any invention-creation which has been abandoned by the applicant in the international phase(such as an invention abandoned by an applicant in the international phase by restricting certain claims);and
(3)for situations indicated in point(1)or(2), whether the deci- sion of lacking unity made by the international Authority is correct.
where it is confirmed that the decision made by the International Authority is correct, the examinershall issue the Notification to pay Restoration Fee for unity to notify the applicant to pay the restoration fee for unity within two months. If the applicant fails to pay or pay in full the restoration fee for unity within the prescribed time limit, and fails to delete the utility model(s)lacking unity, the examinershall is- sue an office Action to notify the applicant that the utility model(s)for which an international search has not been conducted shall be deemed to have been withdrawn, and invite the applicant to submit an amended text after deleting such utility model(s) . The examinershall continue the examination based on the text without such utility model(s) .
As for the utility model(s)deleted due to failure to pay theresto- ration fee for unity by the applicant, according to the provisions of Rules115 . 2 and 42 . 1, the applicantshall not request for divisionalap- plication (s). Except for the above circumstance, where the interna- tional application contains more than two utility models, the applicant may file a divisional application in accordance with Rule115 . 1 .
For circumstances where the International Authority has not raised an objection of unity during the search and examination in the interna- tional phase, but actually there is a defect of lacking unity in the appli- cation, the provision in section 9 of this chapter of these Guidelines shall apply.
15.2.3 Earlier Application Being Filed in china
If the international application entering national phase requests pri- ority of the previous application which is filed in china or that of a previous international application having entered chinese national phase, double-patenting may arise. To avoid double-patenting thereof,
the provision of section 13 of this chaptershall apply.
It shall be noted that:if the claim of priority is deemed not to have been made, the previous application may become the prior art or conflicting application which may destroy the novelty of this interna- tional application.
15.2.4 correction of Translation Mistakes
In accordance with the provision of Rule113, before the patent office completes the technical preparation for announcement of a patent right for utility Model, if the applicant finds there are mistakes in the chinese translation of the submitted description, claims or texts in drawings, he may request to correct the mistakes. where the applicant intends to correct the mistakes in the translation, he or it shall file a written request and pay the prescribed fee for the correction of the translation.
