Does Chinese Patent Examination Lack Rigor?

Question

Based on a few utility patent prosecution histories I've looked through (at least based on their "translated" documents in USPTO Global Dossier), it appears that Chinese examiners make little effort to search for prior art or make substantive arguments against claims. For instance, in one case the PCT prior art documents and arguments against patentability of all claims were merely regurgitated, after which an allowance was granted on all (slightly amended) claims.

It this "weak" examination of Chinese applications I've looked at representative of SIPO as a whole? If so, are Chinese patents worth much?

Answer 1

By way of preface, this is all opinion. As far as I know, there are no empirical studies on this.

I suspect that a US or EP examiner is much more likely to reject an application for lacking novelty or being obvious (compared to China, or for that matter, Japan, the UK, Australia, Canada etc). If your yardstick for rigor is the likelihood of rejection, then certainly those other jurisdictions are less rigorous.

However, I would question whether that is an appropriate definition for rigor. Certainly a US examiner combining 4 unrelated documents to justify a non-obviousness rejection or an EP examiner declaring that all the novel features of a claim are mere implementation details with no technical effect based on the common general knowledge does not necessarily seem rigorous to me. Instead, in my view, it demotes the patent application process in the US and EP to a crapshoot, where you can do no more than hope the examiner is in a good mood on the day.

That said, what you describe of Chinese examination seems generally representative of my experience. The Chinese examiner will generally adopt the IPRP (or the US or EP analysis, if they are available), and expect the applicant to address the rejections there. However, I should note that that is common among most offices (other the US and EP). And in fact, national offices adopting the analysis from the international phase is precisely one of the intentions of the PCT system. The fact that the US and EP choose to repeat the search and examination anew in most cases does not make them more rigorous necessarily (and I would cynically suggest they just want more search fees for themselves).

Are Chinese patents worth much?

It depends if you think a patent for one of the world's largest economies and the world's largest consumer market has any value. A Chinese patent would certainly be my third choice of jurisdiction (after the US and EP).

In fact, from the point of view of an applicant (and ignoring broader externalities), weak examination is great. An invalid granted patent has significantly more value than a refused application.

Answer 2

I have a slightly different conclusion drawn based on my experience.

I see that chinese examiners are tedious in searching prior art and their objections are almost always described in a detailed manner, which means they have at least checked that specific part of the cited prior art. I've seen them quite reluctant to grant an inventive step which usually forces chinese attorneys to narrow down the claims in a rediculously detailed manner (which in my view makes the claims non-enforcable). I am also under the strong impression that you have less chances to get a patent granted in China if you are a European (or US) applicant, than if you are a chinese one. Even smaller chances if you are a Japanese applicant! To be fair, though, US applicants have a harder time in EPO than Europeans and vice-versa, as well.

The examination style is certainly different from that of the EPO or the USPTO, but this is something expected. Chinese patent law is younger than the European or American one.

Regarding the quality of a granted patent, I tend to agree with Maca. A person working with patents may well understand that a certain granted patent is worthless. The problem is that he is rarely the one running the business or even worse, he is not a potential client. The decision maker or the potential client does not understand patents and he is usually scared off by granted patents. After all, we rarely can guarantee that the owner of a low-quality granted patent will NOT proceed to litigation, can we?