Chinese Patent Office to Limit Continuation Practice

According to a newsletter from Liu, Shen & Associates, after July 1, 2006, it will no longer be possible for patent applicants in China to file a divisional application derived from any previously filed divisional applications. "The only exception to this rule pertains to divisional applications derived from a pending divisional application when an unity of invention issue is brought up in the prosecution of the pending divisional application," they write. "This is not the first time that Americans are getting into needless trouble in China where that country is emulating American practice," quips Professor Hal Wegner, an outspoken critic of the current USPTO proposal for continuation practice reform.

Other issues that Liu, Shen identify in the new Chinese patent Examination Guidelines:

• Non-enablement Is No Longer a Defense for Novelty of Compound Inventions
• Chemical Product Characterized By Physical/Chemical Parameters Is Not Recommended
• Novelty of Medical Use Claims Will Be Strictly Examined
• Experimental Data Are Required for All Chemical Products Inventions
• Inventions Relevant to Embryonic Stem Cells Are Unpatentable
• Microorganism Derivatives Claims Are Unacceptable
• Computer Program Medium Is Still Unpatentable
• Three-element Criterion for Invention Relating to Computer Program Is Reconfirmed
• Means Plus Function Is Now Allowable for Defining Product Claim for Invention Relating to Computer Program
• Additional Showing Required in Establishing Novelty of Claimed Product Having Elements such as Performances or Purposes