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What you see is not what you get: introduction to Chinese utility model patent

Nov 22, 2018 By Xiaojun Guo

“Utility model”, according to 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. Utility model patent plays a very important role in China in providing a quick, short term and flexible protection for certain creation.

Subject Matter

A utility model patent, as implied in its definition, protects only product having definite shape and/or structure and occupying certain space. Method including use, composition, molecular structure, metallographic phase structure are not eligible for utility model patent protection.

This doesn’t mean that a claim of a utility model patent can not include any process or material features. According to the Guidelines for Patent Examination of the SIPO, claims of a utility model patent may include name of known process for defining the shape or structure of a product or name of known material. Features such as “welding”, “riveting”, “compound wood floor”, “plastic” or “memory metal” are normally allowable in a utility model patent.

The Patent Reexamination Board 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 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 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 arts 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 arts, may the number of prior arts exceed two. Second, prior arts in proximate or relevant technical field 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 arts 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 Patent Reexamination Board found the patent invalid as lacking inventiveness over two pieces of evidence, since both evidence relates to force measuring device and their combination has disclosed all features of the claim, meanwhile these is a motivation for a skilled person to combine them to come to the claimed utility model.

The Supreme 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 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.

Features other than shape and structure in defining the protection scope

The Beijing High Court has released Guidelines (2017) indicating that, where a claim of a utility model patent contains features defining neither shape nor 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 Court thinks otherwise. In a recent retrial case, the utility model patent claims “a rectangular seal ring” and defines that “polytetrafluoroethylene is bonded to the rubber by hot pressing”. The defendant contended prior art defense, in which prior art the polytetrafluoroethylene is embedded in a rubber ring by cold processing and is detachable form the later. The High Court of Jiangsu Province sided with the defendant on the prior art defense in the second-instance decision. The Supreme 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 defense 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 defense shall not be affected even if the prior art doesn’t disclose the feature “hot pressing”.

The Supreme Court denies the non-shape/structure features in novelty/inventiveness assessment and in defining the protection scope of a utility model patent, while it looks like that the non-shape/structure features will lead to invalidity of the claims of a utility model patent.