Objections Raised During Examination of Chinese Patent Applications: Analysis and Practical Recommendations

As you know, China today ranks first in the world in terms of the number of valid patents for inventions. By 2025, an even larger number of Chinese companies began to apply for patents in the Russian Federation, which indicates the growth of innovative activities and the dynamic development of Chinese business in Russia. The growth in the number of applications for inventions and utility models filed in the Russian Federation by Chinese applicants is observed mainly in various areas of digital technologies, such as the management of information and computer technologies using artificial intelligence.

In this article, we will consider the most common objections faced by Chinese applicants when entering the national phase in the Russian Federation (with international applications under the PCT procedure or applications with conventional priority), as well as provide recommendations for overcoming them.

Formal remarks

• An application for an invention does not pass the test for multiple dependence

In China, as in the Russian Federation, a multiple dependent clause cannot serve as a basis for another multiple dependent clauses. In other words, you can't build "multilayered" multiple-dependent links. It is also unacceptable to create formulations that lead to ambiguity of the scope (uncertainty when combining features). However, a dependent clause can refer to two independent clauses at once through an alternative (the conjunction "or"), which is unacceptable in the Russian Federation.

Recommendation: Balance between compactness and clarity; highlight key combinations of features in separate paragraphs; check the absence of logical contradictions between the points; avoid referring to multiple independent clauses through an alternative. Rewrite the multi-dependent clauses as a series of separate clauses, each of which refers to a single independent clause.

• The application does not meet the requirement of unity of invention

In China, each application must relate to only one invention or utility model. However, a group of inventions or utility models is allowed if they are connected by a single inventive idea. In the Russian Federation, several independent clauses are not acceptable for a utility model at all. With respect to a group of inventions in the Russian Federation, the requirement of unity is considered to be fulfilled only if all inventions are characterized by at least one common special technical feature. A special technical feature means a characteristic of the invention that contributes to the state of the art, i.e. has not been known from previously published sources of information.

Recommendation: Single out a general special technical feature from the description for the entire group of inventions and adjust the claims before filing them in the Russian Federation. If there are no general special technical features, then select one invention for further examination (main one); If the applicant wishes, file divisional applications for the remaining inventions.

• Changes have been made to the original application or drawings have been added that go beyond the substance

The reason is a desire to eliminate errors or ambiguities, to introduce additional implementations and modifications not covered in the original materials.

Recommendation: make corrections and additions strictly only in terms of eliminating technical errors. Do not allow the inclusion of new drawings, examples, do not supplement the description with new aspects in relation to the previously announced technical solution.

• Procedural violations related, for example, to the failure to miss the 31-month deadline for entering the national phase of the Russian Federation under the PCT procedure or late filing of a translation.

Foreign applicants are not always familiar with the features and terms of the procedure in Russia.

Recommendation: keep a calendar of deadlines, control the submission of the transfer and the payment of fees in order to prevent misses.

Substantive comments

• Non-patentable subject matter

One of the frequent objections is related to the fact that the claimed solution is not recognized as an invention within the meaning of Article 1350 of the Civil Code of the Russian Federation. We are talking, for example, about business methods, methods of presenting information or computer programs as such. The wording used in China does not always emphasize the technical nature of the solution, as required by Russian practice.

Recommendation: When preparing the application materials, it is necessary to clearly indicate the technical result and the technical nature of the invention, avoiding describing the solution as a business method or a simple algorithm without reference to technical means.

• Lack of novelty

Rospatent may conclude that the claimed solution is already known from the state of the art and is not new. During the translation and adaptation of the application, inaccuracies, ambiguity of features, different professional terminology applied to the patented subject matter and its elements, as well as there may be sources of the state of the art that are relevant for the Russian Federation (not identified during the examination in China).

Recommendation: Before submitting an application, conduct an additional search for the state of the art, taking into account Russian realities, and clearly indicate the differences between the declared solution and known analogues.

• Lack of inventive step

Another common objection is if the claimed solution is considered obvious to a person skilled in the art and can be created on the basis of information disclosed in a combination of two or more sources of information known before the date of filing of the application, with the achievement of a similar technical result. The criteria for assessing the inventive step in China and Russia are different, and when adapting the application, Chinese applicants do not always emphasize and confirm the technical result with experimental data (in Russia, a technical result is not classified as technical if it is due only to the semantic content of the information or non-technical properties (for example, aesthetic or economic, refers only to the convenience of the user).

Recommendation: The description should disclose in detail the technical result, it is desirable that it be supported in the description by some technical indicators (singular), distinctive features of the invention and show why the solution is not obvious.

• Lack of industrial applicability

Rospatent may indicate that the claimed invention cannot be used in industry, agriculture, health care or other fields. The reason is that the application does not contain specific examples of implementation confirming the possibility of practical application in the conditions of the Russian Federation.

Recommendation: Add examples and descriptions of how the solution can be used to demonstrate its feasibility and industrial applicability. Additional examples are provided in response to the request for examination, are attached to the application materials, but will not be published when the decision to grant a patent is made.

• Insufficiency of disclosure of the invention

An objection arises when the description of the application does not allow the skilled person to reproduce the invention to the extent of the claims stated in the claims, in particular, there are no examples at all, or when translating from Chinese or English into Russian, technical details are lost or descriptions are simplified.

Recommendation: Carefully check the quality of the translation, make sure that the description and drawings contain all the necessary information for the practical implementation of the solution.

• Improper extension of disclosure (formula not based on description)

Rospatent may indicate that in the process of adapting the text, new features were added that were not in the original application, which violates the requirement to preserve the content; or the features are translated into broader terms that cover more embodiments than are claimed in the original application materials. When translating or adapting, applicants sometimes try to clarify the wording by introducing new elements that are not disclosed in the original or incorrectly translate the terms originally used.

Recommendation: when preparing for the national phase, strictly preserve the original content of the application and not add new features, and monitor the accuracy of the translation.

General recommendations

Thus, summing up the above examination comments faced by Chinese applicants in the national phase in the Russian Federation, below are some tips that may be useful before filing an application with the Patent Office:

1. Check the claims for multiple dependencies and adjust them according to the requirements in the Russian Federation.
2. Before filing the application, adjust the claims in accordance with the requirements for unity of invention, as a last resort, leave only one (two) main claims, file separate applications for the remaining claims.
3. Pay special attention to the quality of the translation of the description and claims, the translation should not confuse or expand the scope of claims.
4. Monitor the deadlines (31 months to enter the Russian Federation under the PCT, 3 years to submit for examination, 2 months to send the translation).
5. Do not expand the disclosure when adapting the translation, do not enter additional information, new drawings.
6. Conduct additional analysis of the state of the art applicable to the Russian Federation.

And also, when responding to requests, send additional examples of implementation to confirm industrial applicability and experimental data to confirm the possibility of achieving the technical result(s).

Despite the fact that the patenting systems in Russia and China are similar in terms of the main criteria, they still differ in procedures, wording and practice of application of the norms, therefore, when filing an application, it is better to involve a Russian patent attorney who is familiar with the practice of Rospatent.