2026/3/30 11:03:05
This guideline focuses on the communications field and serves as a policy interpretation document under the current patent legal framework. Its core purpose is to guide and regulate the filing of invention patent applications involving standards, promote the effective integration of patents with international standard development, facilitate the coordinated development of technology, patents and standards, help applicants better understand the current patent examination policies of the China National Intellectual Property Administration (CNIPA), improve the quality of patent applications, and ultimately enable patent applications involving standards to become Standard-Essential Patents (SEPs).
I. Basic Concepts
The Standardization Law of the People's Republic of China defines a standard as a unified technical requirement needed in agriculture, industry and other fields. In the ISO/IEC Guide 2, the International Organization for Standardization (ISO) and the International Electrotechnical Commission (IEC) define a standard as:
a document, established by consensus and approved by a recognized body, that provides, for common and repeated use, rules, guidelines or characteristics for activities or their results, aimed at the achievement of the optimum degree of order in a given context.
II. Coordination Between Standards and Patents
A Standard-Essential Patent (SEP) is a patent that is indispensable for implementing a standard. A patent involving standards can only become a bona fide SEP if it is granted and its claims correspond to the standard. The analysis of correspondence between patent claims and standards is also one of the core contents of this guideline.
(I) Analysis of Correspondence Between Standards and Patents
The method to determine whether a patent is an SEP is the analysis of correspondence between standards and patents. The process of correspondence analysis is as follows:
Decompose the technical features of the claims;
Identify the relevant descriptions in the standard;
Conduct a correspondence analysis between the two;
Conclude whether they correspond or not.
A commonly used tool for correspondence analysis is the Claim Comparison Chart (CC Chart).
A claim is deemed to correspond to the standard if the standard’s technical solution falls within the scope of protection of the patent claim — for instance, all technical features of the claim find identical expressions in the standard, or the technical features of the claim generalize the relevant descriptions in the standard.
A claim is deemed not to correspond to the standard if some technical features of the claim are not described in the standard or are inconsistent with the relevant descriptions therein.
If all claims of a patent do not correspond to the standard, the patent is not an SEP.
(II) Patent Strategies at Various Stages of Standardization
The standardization process generally includes the following stages:
proposal, drafting, deliberation, consultation for comments, approval, publication and amendment.
Early stage of standardization (proposal)
Applicants shall judge the development trend of standards and carry out initial patent application layout based on technological pre-research achievements.
Middle stage of standardization (drafting, deliberation, consultation for comments)
Applicants may refine and focus their patent portfolios in line with the discussion and revision direction of the standard draft. For example:
Reasonably adjust the scope of protection of claims in accordance with legal procedures to improve the likelihood of becoming an SEP;
Proactively respond to new technical issues raised in discussions and reasonably layout patents highly consistent with the draft.
Late stage of standardization (approval, publication, amendment)
Applicants may amend the claims of pending patent applications in light of the final standard content to facilitate patent grant. After grant, applicants may conduct patent licensing, cross-licensing, rights enforcement and other activities in the process of patent commercialization and application.
III. Core Application Strategies
The standardization process usually takes several years from the submission of a proposal to the freezing of the standard version. Patent application strategies shall be adapted to this process. Three core strategies are as follows:
(I) Priority System: Early Patent Layout to Secure an Earlier Filing Date
Applicants shall file a patent application as early as possible before submitting a standard proposal, and file a subsequent patent application within the prescribed period (12 months) to claim priority from the earlier application. The subsequent application may optimize and improve the claims, which not only secures an earlier date for assessing prior art but also reserves room for amendments to adapt to subsequent standards.
Notices:
Where claiming domestic priority, the earlier application shall be deemed withdrawn once the priority claim of the subsequent application is filed.
Patent applications filed in foreign countries shall first undergo a confidentiality review by the CNIPA.
(II) Grace Period for Novelty: Remedy for Prior Proposals to Avoid Loss of Novelty
For cases where a patent application is not filed in a timely manner for a proposal presented at a meeting, the Implementing Regulations of the Patent Law (effective 2024) has expanded the scope of applicable grace periods. It now includes disclosures made at academic or technical conferences convened by international organizations and recognized by the relevant competent departments of the State Council. Such disclosures do not cause loss of novelty if a patent application is filed within 6 months.
However, the applicant must:
Make a declaration at the time of filing;
Submit supporting documents within the specified time limit.
This system is only a remedy for exceptional circumstances and is not recommended for regular use.
(III) Delayed Examination System: Postpone Examination to Match the Standard Freezing Date
When requesting substantive examination, an applicant may simultaneously request a delay of examination for 1, 2 or 3 years. Combined with the strategy of deferring the filing of a request for substantive examination, a patent application may remain pending for up to 6 years from the filing date.
This system avoids the scenario where a patent is concluded before the standard is frozen, allowing applicants to adaptively amend claims alongside the standardization process to strive for alignment with the standard. Delayed examination requires no fees or approval and takes effect automatically when substantive examination commences.
IV. Drafting Strategies
Drafting of patent applications involving standards shall balance patent grant eligibility and alignment with standards. The core points are as follows:
(I) General Drafting Strategies
Align claims with standard language to enhance correspondence. Use standard common terminology or generalized expressions in claims, and make the wording as close as possible to the standard. Exclude non-essential features from the perspective of standards in independent claims.
Adopt hierarchical claim design. Draft independent claims with appropriate breadth to cover solutions finally incorporated into standards; draft dependent claims to cover various embodiments and further refine implementations through horizontal and vertical expansion.
Prefer single-sided drafting (from a single executing entity) to reduce difficulties in infringement determination. Multi-sided drafting may be retained if the innovation inherently involves coordinated interaction among multiple participants.
Expand embodiments in the description to support broad generalization of claims and provide directions for subsequent claim amendments. Embodiments may be expanded around different levels of the core inventive concept, various application scenarios, and predictions of standard development directions.
(II) Targeted Drafting Strategies
1. Considerations on Inventiveness
In view of the generational iteration characteristics of communication standards:
Clearly establish the connection between the technical problem, the improvement point and the technical effect in the description.
Highlight core features in the claims.
For applications where improvements lie in adjustment and optimization of technical means
Fully disclose the technical problem and technical effects in the description, emphasize the sufficient disclosure of technical details, and reflect the correlation between technical features, the technical problem and the technical effect. Highlight key core features and the correlation among detailed features in the claims.
For applications solving new problems in a new generation
Detail the technical problems emerging in the new generation in the description, and reflect the deep integration of technical means with the new generation. Reflect new-generation characteristics and define key technical means in the claims.
For applications addressing general technical problems evolving in a new generation
Reflect the deep integration of technical means with the new generation in the description. Highlight specific adaptations made for new-generation scenarios in the claims.
2. Considerations on Parallel Solutions
For the same technical problem, include multiple solutions potentially adopted by the standard as parallel technical solutions in the claims, while reasonably controlling the number of parallel solutions to avoid logical confusion, increased difficulties and uncertainties in examination and infringement determination.
Properly arrange the claim layout: prioritize appropriate upper-level generalization of multiple parallel technical solutions, and avoid over-generalization.
Use non-chain referencing for claims where possible.
Set appropriate emphasis in the description based on the importance of technical solutions and the significance of technical effects, ensuring appropriate detail and clear focus.
3. Considerations on Avoiding Extension Beyond the Original Disclosure
To reserve room for subsequent amendments to align with standards and avoid extension beyond the original disclosure:
Where multiple embodiments may be combined, describe the combination in the description such that a person skilled in the art can directly and unambiguously determine the basis for the combination.
For important combinations of embodiments, describe them as separate embodiments if necessary.
Use standard terminology that accommodates different versions of standards; provide all expressions when terminology varies across versions.
Attach importance to written communications and grounds for amendment when making amendments. Clearly indicate amendments and fully explain the basis thereof when responding to office actions.
4. Considerations on Clarity of the Scope of Protection of Claims
Pay attention to the use and interpretation of technical terminology. For terms not yet included in standards and lacking accepted or generally understood meanings in the field, define their meanings in the claims or explain them in the description.
For technologies introducing artificial intelligence and machine learning into communications, the inventive contribution usually lies in the application of models to communication scenarios. Clarify the correspondence between the input/output data of the model and the data in communication technologies.
When converting technical proposals into patent applications, actively communicate with technical personnel regarding technical terminology and the meaning of technical means to avoid unclear scope of protection in claims.
(III) Tactics for Responding to Office Actions
1. Responding to Inventiveness Rejections in Light of Generational Iteration of Communication Standards
For improvements via adjustment and optimization of technical means
Focus on distinguishing features between the claims and the prior art, as well as the correlation between such distinguishing features and other technical features of the claims. Explain why the distinguishing features and other related features should be considered as a whole. Analyze interrelated technical features in the cited references, and argue that the prior art provides no technical incentive or that there are technical obstacles to combining multiple pieces of evidence with regard to the technical problem actually solved by the invention.
For solving new problems unique to a new generation
Emphasize that the technical problem is specific to the new-generation technical scenario and did not exist in the old-generation scenario of the prior art. Thus, the prior art has no motivation to improve and provides no corresponding technical enlightenment.
For adapting general problems to new-generation scenarios
Stress that the application is applied to a new-generation scenario and its technical means are closely adapted to that scenario. The prior art, belonging to an old-generation scenario, cannot be directly applied to the new scenario to solve the technical problem due to technical limitations.
2. Responding to Rejections Regarding Unclear Claims
Clarify the technical meaning and interpretation of the relevant features. Amend the claims if necessary to overcome the defects.
Applicants shall deeply integrate patent layout with the standardization process, and balance patent grant conditions with standard adaptation requirements, so as to increase the probability of patents becoming SEPs and realize the coordinated development of patented technologies and standards.
