On 2 November 2023, the China National Intellectual Property Administration (CNIPA) released its Guidelines for Judging the Objects of Utility Model Patent Protection (“the Guidelines”).
This article is an interpretation of the main contents of the Guidelines. By combining the relevant provisions of the Patent Law and the Patent Examination Guidelines, the three objects protected by utility model patents, i.e., products, shapes and/or configurations, and technical solutions, are sorted out as follows:
I. Judgement on the object of utility model patent protection involving products
Judgement on the object of utility model patent protection involving products are as follows.
1. The claimed subject matter name should explicitly exclude methods
If the subject name of the claim is a method, it does not meet the requirements for the object of protection of a utility model patent. For example, the claim subject name is a method of manufacturing gears, a method of dust removal from a workroom, or a method of data processing.
2. Claims may use the name of a known method to limit the shape, construction of the product
The claim may use the name of a known method to define the shape and structure of the product, but may not include the steps of the method, process conditions, etc. For example, the connection relationship of the parts defined by using known processing methods such as welding, hot pressing, etc.; improvements to the method itself, such as improvements to the processing steps and process methods of the product, do not belong to the object of utility model patent protection. Even if the claim contains both the improvement of the method itself and the shape and construction characteristics of the product, it still does not belong to the object of utility model patent protection.
2. Judgment on object of computer programs
Combined with the technical characteristics of computer programs, for product claims involving computer programs, if only the name of the known computer program is included, it can be considered as the object of utility model patent protection. For product claims that contain both hardware improvement and computer program, if the improvement of the prior art lies in the hardware part, and the computer program involved is known, it can be considered as the object of utility model patent protection; if the claim contains both the improvement of the hardware part and the improvement of the computer program itself, it does not belong to the object of utility model patent protection.
3. Judgment on object of artificial layout planning
The artificial layout planning to solve technical problems or achieve technical effects must rely on the improvement of artificial planning, and the technical programme to be protected by its claims does not substantially conform to the requirements of the Patent Examination Guidelines concerning the improvement of technical programmes for the shape and structure of products, and thus does not belong to the objects protected by utility model patents.
II. Judgment on the object of the utility model patent protection involving shape and/or construction
According to Article 2(3) of the Patent Law, a utility model shall be an improvement proposed for the shape and/or construction of a product. Judgment on the object of the utility model patent protection involving shape and/or construction are as follows.
1. Judgment on object of shape features
a) Biological or naturally occurring shapes cannot be used to characterize the shape of a product.b) A non-determinable shape obtained by placement, stacking, etc. cannot be used as a shape feature of a product.c) It is permissible for a technical feature of a product to be a substance of indeterminate shape, such as a gaseous, liquid, powdered, or granular substance, if it is limited in that product by the structural features of that product.d) The shape of a product may be a defined spatial shape that is characteristic of a particular situation. Examples include ice cups with novel shapes, parachutes, etc..
2. Judgment on object of laminar structure, line construction
a) Generally, the layer structure and line structure belong to the construction of a product. The thickness and uniformity of the layers in a composite layer structure do not affect its construction as a product. However, the printed layer of a product does not belong to the construction of the product, i.e., the information layer containing patterns, words, symbols, etc. formed on the surface of the product by means of printing or drawing does not belong to the construction of the product, e.g., the advertisement layer printed on the surface of the bag.b) The wiring configuration usually includes electrical circuits, pneumatic circuits, hydraulic circuits, and optical circuits. The connection relationship determined between the various components of the circuit may be a wired connection or a wireless connection.
3. Judgments on object of characterization of materials
For product claims containing material features, if they contain only the name of a known material, they can be the subject of utility model patent protection; if they contain improvements to the material itself, they are not the object of utility model patent protection.
4. Judgment on object of food
The judgment of whether a food belongs to the object of utility model patent protection depends on whether it contains an improvement of the material itself; if it contains an improvement of the material itself, it does not belong to the object of utility model patent protection.
III. Judgment on the object of utility model patent protection object judgment involving technical solutions
The technical solution referred to in Article 2(3) of the Patent Law refers to a collection of technical means utilizing the laws of nature for the technical problem to be solved.
1. Judgement on object of combining schemes with surface patterns and colors
Patterns, colors on the surface of the product or new solutions for their combination, which do not solve technical problems, do not belong to the objects protected by utility model patents.
2. Judgment on object of programs aimed at aesthetics
The program of improving the shape of the product only for the purpose of aesthetics does not solve the technical problem and does not belong to the object of utility model patent protection. For example, a program to make the shape of a trash can into a panda shape for the purpose of aesthetics does not belong to the object of utility model patent protection.
IV. Recommendations for Judging and replying on the object under the utility model patent applications
1. For patent protection of an invention, the appropriate type of patent should be well selected.2. The examination on the object of utility model patent protection is element in the whole claims, therefore, when writing a utility model patent application, the independent claims and dependent claims should be given the same attention, if the independent claims belong to the utility model patent protection object, but when the dependent claims do not belong to the utility model patent protection object, the application can not be granted the utility model patent right either.3. In replying to the examination opinions concerning the object of protection of the utility model patent, attention should be paid to the manner of replying and amending, not only to respond to the deficiencies pointed out in the Notice of Examination Opinions, but also no new problems occurred; in replying to the examination opinions concerning whether the materials such as the compositions are known materials, it should be stated by way of sufficiently stating the reasons or adducing evidence that the specific compositions of the application and the various components contained therein ( and its proportion), as a whole, are known materials, rather than simply stating that the components of the specific compositions in the present application are known; in replying to the examination opinion concerning whether a computer program is known, the computer program should be regarded as a whole, and it should be stated by way of fully stating the reasons or adducing evidence that the computer program which contains the complete execution logic of the computer program is known, rather than concentrating on each instruction or realization of a certain function of the computer program.
According to the Patent Law, utility model patent applications are not subject to early publication and substantive examination in the examination and approval process, and there are only three stages: acceptance, preliminary examination and authorization, i.e., China implements a preliminary examination system for utility model patent applications, instead of a substantive examination system, a registration system, or a registration and search report system. Specifically, in the preliminary examination, the review department only examine whether the application documents are complete, whether the application documents meet the requirements, and whether there are obvious substantive defects. If these conditions meet the requirements, the patent right can be granted. On the other hand, the substantive conditions for granting a patent right, such as whether the subject matter of the utility model patent application is novel and inventive, are usually not examined. Since utility model patents can be granted without substantive examination, they are favored by applicants, however, utility model patents also have weaknesses such as unstable rights and high invalidity rate. As stipulated in Article 56(1) of the Rules for the Implementation of the Patent Law , after the announcement of the decision of granting the utility model patent right, the patentee or the interested party of the utility model patent may request the patent administrative department under the State Council to make a patent evaluation report to assess whether the claims have the right to be granted, and to determine whether the claims are valid. The evaluation report shall explain whether the claims possess novelty and inventiveness. In addition, a utility model patent may be invalidated by invalidation proceedings. Moreover, due to the existence of unclear boundaries for the determination of the object of protection of utility model patents, it leads to the applicant applying for products, shapes and/or constructions and technical solutions that do not belong to the object of utility model protection, and thus failing to obtain the authorization, or it leads to the applicant readily abandoning the products, shapes and/or constructions and technical solutions that belong to the object of utility model protection, and thus causing the loss to the applicant or the patentee.
The publishment of the Guideline thoroughly implement the tasks and deployments of the “14th Five-Year Plan for the Protection and Utilization of National Intellectual Property Rights” , strengthen the protection of intellectual property rights at the source, reinforce the supervision of the quality of intellectual property rights applications and registrations, guide the innovation subjects to accurately understand the boundaries of the object of protection of utility model patents, promote the improvement of the quality of the writing and replying of utility model patents, and push forward the high-quality development of the utility model patent system.