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China’s Supreme People’s Court has shed light on the scope of protection of utility model patents, as Xiaojun Guo of CCPIT Patent and Trademark Law Office explains.
A utility model, according to the Chinese Patent Law, means any new technical solution relating to the shape and/or the structure of a product which is fit for practical use. The utility model patent plays a very important role in China in providing quick, short-term and flexible protection for certain creations.
As implied in its definition, a utility model patent protects only products having a definite shape and/or structure and occupying certain space. Methods including use, composition, molecular structure, and metallographic phase structure are not eligible for utility model patent protection.
This doesn’t mean that a claim of a utility model patent cannot include any process or material features. According to the Guidelines for Patent Examination of the State Intellectual Property Office, claims of a utility model patent may include names of a known process for defining the shape or structure of a product or names of a known material. Features such as “welding”, “compound wood floor”, “plastic” and “memory metal” are normally allowable in a utility model patent.
"The inventiveness requirement for a utility model patent is lower than that for an invention patent in two respects."
The Patent Reexamination Board (PRB) expounded the policy consideration in allowing certain material features in a claim of a utility model patent as follows: “If a utility model patent has made improvement on the shape/structure of a product, it will obviously dampen the enthusiasm of an inventor in researching and developing new technologies and in filing new applications, to exclude protection of a utility model solely because the claims of the utility model patent include known materials.
“In certain technical fields, the shape/structure of a product is closely connected to material and it is not possible to avoid material features completely in drafting.”
Novelty and inventiveness
All features in a claim of a utility model patent shall be considered when assessing its novelty and inventiveness, and the inventiveness requirement for a utility model patent is lower than that for an invention patent in two respects, according to the Guidelines for Patent Examination.
First, the number of prior art pieces which can be combined to assess inventiveness of a utility model patent is normally limited to two, and only when the combination is simply a juxtaposition of prior art may the number exceed two. Second, prior art pieces in proximate or relevant technical fields of a utility model patent can be cited against the inventiveness of the utility model patent only when there is explicit teaching in the prior art that would have motivated a skilled person to find relevant technical measures in the proximate or relevant technical field.
In an invalidation case of a utility model patent titled “Grip power-meter”, the PRB found the patent invalid as lacking inventiveness over two pieces of evidence, since both pieces relate to a force-measuring device and their combination disclosed all features of the claim; meanwhile there is a motivation for a skilled person to combine them to come to the claimed utility model.
In 2012, the Supreme People’s Court rejected the decision and held that:
Although the grip power-meter (of the utility model patent) and the electric scale (of evidence 2 for measuring weight) are all force-measuring devices, they have different specific uses. Meanwhile, by comparing the weight and gripping force of a human hand, the subjects exerting the forces are different and the directions of the exerted forces are different… (the utility model patent and evidence 2) don’t belong to an identical technical field.
The utility model patent and the electric scale (of evidence 2) have identical functions, and proximate uses, and the principles for measuring forces by their sensor are basically identical. The electric scale is in a technical field proximate to the utility model patent. Meanwhile, there is no explicit teaching in the prior art (that evidence 2 would be combined with evidence 7 to obtain the utility model patent). Evidence 2 cannot be cited against the inventiveness of the utility model patent.
Away from shape and structure
In 2017 the Beijing High Court released Guidelines 2017 indicating that where a claim of a utility model patent contains features defining neither the shape nor the structure of a product, the features shall define the protection scope of the utility model patent. This implies that even the non-shape/structure features shall define the protection scope of a utility model patent.
But the Supreme People’s Court thinks otherwise. In a recent retrial case, in September 2017, the utility model patent in dispute claims “a rectangular seal ring” and explains that “polytetrafluoroethylene is bonded to the rubber by hot pressing”. The defendant offered a prior art defence, in which the polytetrafluoroethylene is embedded in a rubber ring by cold processing and is detachable from the latter. The High Court of Jiangsu Province sided with the defendant on the prior art defence in the second-instance decision.
The Supreme People’s Court upheld the decision and rejected the retrial request of the plaintiff by holding that: “The subject matter to be protected by a utility model patent is a technical solution constituted by the shape, structure or their combination; the features other than shape and structure can’t contribute to the novelty and inventiveness of the claims of the utility model patent.
“In examining whether or not a prior art defence can stand, it shall not be considered in principle whether those non-shape/structure features have been disclosed in the prior art or not… In this case, the feature ‘hot-pressing’ is neither a shape feature nor a structure feature and therefore doesn’t define the protection scope of the patent. The prior art defence shall not be affected even if the prior art doesn’t disclose the feature ‘hot pressing’.”
The Supreme People’s Court denies non-shape/structure features in a novelty/inventiveness assessment and in defining the protection scope of a utility model patent, while it looks as though the non-shape/structure features will lead to invalidity of the claims of a utility model patent.
Xiaojun Guo is a patent attorney with a lawyer’s qualification at CCPIT Patent and Trademark Law Office. He has extensive experience in prosecuting patent applications for inventions, utility models and designs, and in patent litigation. He can be contacted at: email@example.com
CCPIT Patent and Trademark Law Office, utility model patents, Chinese patent law, PRB, novelty, patent examination, Beijing High Court, flexible protection