China: Two Essential Features Of Utility Model Patent In China

I. INTRODUCTION

Utility model is one of the three types of patents in China. A utility model patent is granted without substantive examination and can be obtained very quickly. It plays a very important role in providing a quick, short term and flexible protection for certain IP assets.

"Utility model", according to Article 2 paragraph 3 of the Chinese Patent Law, means any new technical solution relating to the shape, the structure, or their combination, of a product, which is fit for practical use.

Inventiveness, according to Article 22 paragraph 3 of the Chinese Patent Law, means that, as compared with the prior art, the invention has prominent substantive features and represents a notable progress, and that the utility model has substantive features and represents a progress.

These two basic provisions define the two most significant essential features of utility model patent as compared to invention patent, i.e. narrower protectable subject matter and lower inventiveness requirement.

II. ELIGIBLE SUBJECT MATTER FOR UTILITY MODEL PATENT

a) Subject Matter General

The protectable subject matter for a utility model patent, as implied in the definition of utility model, covers only product having definite shape and/ or structure, and occupying a certain space. Method including use is not eligible for a utility model patent. Also, composition, molecular structure, metallographic phase structure are not eligible for utility model.

However, this doesn't mean that a claim of a utility model patent can not include process or material features. Instead, according to Guidelines for Patent Examination, Part I, Chapter 2, §6.1 of the SIPO, claims of a utility model patent may include names of known processes for defining the shape and/or structure of a product or names of known materials, but may not include steps of a process or processing conditions. So, features such as "welding", "riveting", "compound wood floor", "plastic" or "memory metal" are normally allowable in claims of a utility model patent.

A claim, in which both features of shape and/or structure and features of improvement on a process or material itself are included, doesn't define an eligible subject matter for a utility model patent. See Guidelines for Patent Examination, Part I, Chapter 2, §6.1 of the SIPO.

b) Dressing Equipment Case (Material Feature)

In an invalidation case re Chinese utility model patent No. 9420766.4 titled Dressing Equipment, claim 1 defines a dressing equipment, including a tray and a forcep, characterized in that, said tray and forcep are made of hard plastic, with protection films sealed on their outside.

The court held that,

Claim 1 defines the structure of a dressing equipment, although it includes a material feature, it defines the structure of the product as a whole. Therefore, claim 1 complies with Rule 2(2) (corresponding to Article 2(2) of the current Chinese Patent Law) of the Implementing Regulations of the Patent Law.

Claim 1 therefore defines eligible subject matter for the utility model patent.

The PRB clarified the policy consideration in allowing certain material features in a claim of a utility model patent in an Invalidation Decision re Chinese utility model patent 200620154717.2,

The purpose of the patent system is to encourage innovation, if a utility model patent makes improvement on the shape/structure of a product, it will obviously dampen the enthusiasm of 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 field, the shape/structure of a product is closely connected to materials, and it is not possible to avoid material features completely in drafting.

So, if the improvement is on a material, it is not eligible for utility model protection. While solely application of known materials on a product is allowable for a utility model patent.

c) Connector Assembly of a Reversed Type Case (Process Feature)

In an invalidation case re Chinese utility model patent No. 98209089.7 titled A Connector Assembly of a Reversed Type, claim 2defines a connector assembly according to claim 1, characterized in that, a first module assembly is inserted in said first connector in a regular way, a second module assembly is inserted in said second connector in a reversed way. The court held that,

Although the additional technical features of claim 2 define the ways of inserting the module assemblies into the respective connectors, claim 2 contains all the structural features of claim 1, and therefore defines a technical solution relating to the structure of the product as a whole. Claim 2 complies with Article 2(2) of the Patent Law.

Claim 2 therefore defines an eligible subject matter for a utility model patent in spite of the process features in this case.

d) All Elements Rule of Utility Model Patent

Notwithstanding the limitation to the protectable subject matter, before a utility model patent is announced invalid, all of the features of a claim of the utility model patent shall be considered when assessing its novelty and inventiveness. See Guidelines for Patent Examination, Part IV, Chapter 6 of the SIPO.

Even in litigation, all features of a claim of a utility model patent shall be considered in defining the protection scope thereof according to Article 20 of the Guidelines for Patent Infringement Determination released by Beijing High People's Court in 2013, which reads,

Where a claim of a utility model patent contains features defining neither shape nor structure of a product, said features shall define the protection scope of the utility model patent, and shall be interpreted according to their literal meanings.

III. INVENTIVENESS OF UTILITY MODEL PATENT

a) Inventiveness General

Another essential feature of utility model patent lies in its lower inventiveness requirement than invention patent. This is manifested by two factors according to the Guidelines for Patent Examination, Part IV, Chapter 6 of the SIPO.

The first factor is the number of prior arts which could be taken into consideration in assessing inventiveness of a utility model patent. In particular, the number of prior arts which could be combined to assess inventiveness of a utility model patent is normally limited to two, and only when the combination of prior arts is simply a juxtaposition of these prior arts, may the number of prior arts exceed two.

The second factor relates to the limitation to the technical field of a prior art which could be cited against the inventiveness of a utility model patent. For a utility model patent, prior art in the identical technical field, of course, could be cited against the inventiveness of the utility model patent. At the same time, prior art in proximate or relevant technical field of the utility model patent, can also be cited against the inventiveness of the utility model patent, when there is an explicit teaching in the prior art that would have prompted a person of ordinary skill in the art to find relevant technical measures in said proximate or relevant technical field.

b) Grip Power-meter Case (Limitation to Technical Field of Prior Art)

A significant case made by the Supreme Court in connection with the above second factor in assessing inventiveness of a utility model patent relates to Chinese utility model patent No. 97216613.0, titled Grip Power-meter.

In this case, the PRB made an Invalidation Decision announcing the above utility model patent invalid as lacking inventiveness over the combination of evidence 7 and evidence 2, since both evidence relates to force measuring device and the combination has disclosed all features of the utility model, meanwhile these is a motivation for a person of skill in the art to combine evidence 7 and evidence 2 to obtain the claimed utility model.

While the Supreme Court held that,

The PRB incorrectly applied the law. Although the grip power-meter (of the utility model patent) and the electric scale (of evidence 2 for measuring weight) are all force measuring device, they have different specific uses. Meanwhile, by comparing 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 identical technical field. The utility model patent and the electric scale (of evidence 2) have identical function, and proximate uses, and the principle 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 can not be cited against the inventiveness of the utility model patent.

It seems that the Supreme Court wants to in this case draw a line between inventiveness requirement for a utility model patent and that for an invention patent. The Court stressed the importance of keeping an appropriate criterion of patentability for reaching a balance between encouraging innovation and protection of public interest. For a utility model patent, the Court considered that since it is of a lower inventiveness as compared with an invention patent, the scope of prior art in assessing its inventiveness therefore shall be different from that against an invention patent.

c) Inventiveness Requirement Comparison

This table shows that utility model patent is of lower inventiveness than invention patent. The number of prior arts against the inventiveness of a utility model patent shall normally be no more than two. Also, only prior art in identical technical field and prior art in proximate/relevant technical field with explicit teaching can be taken to assess the inventiveness of a utility model patent.

Originally published August 2015.

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