CHANG TSI
Insights
Utility model is one of the three types of patents in China. Determining what subject matter of a utility model is patentable is an important part of the practice of utility model prosecution. Recently, the State Intellectual Property Office in China (hereinafter referred to as the "SIPO") issued the "Guidelines on Patentable Subject Matter of Chinese Utility Model Patent" (hereinafter referred to as the "Guidelines"). In the Guidelines, the SIPO published the relevant provisions on patent-eligible subject matters of utility model and gave relevant examples. Reviewing and understanding the Guidelines will help patent practitioners accurately understand the boundaries of the subject matters protected by utility model patents, and promote the improvement of the quality of utility model patent prosecution.
Generally speaking, Article 2, Paragraph 3 of the China Patent Law stipulates that a utility model refers to a new technical solution proposed for shape, structure or combination of shape and structure that is suitable for practical use. From this point of view, "product", "shape/structure" and "technical solution" constitute the three elements of a utility model. Generally speaking, in a claim set of a utility model patent application, if any one of the above three elements is not satisfied, it is not a patent-eligible subject matter of utility model. The Guidelines start from the patent law and patent examination guidelines, and discuss the above three elements one by one. I will analyze and summarize the key contents of the Guidelines as follows:
The Guidelines emphasize that the "product" protected by a utility model should be an object that can be manufactured through industrial methods, has a definite shape, structure, and occupies a certain space. All methods and naturally existing items that have not been artificially manufactured are non-patentable subject matters of utility model patents.
1.1 Regarding subject name
A utility model does not protect “method”. If the subject name of a claim in a utility model application is drafted as "a method for … ", then it is not a patentable subject matter of utility model.
1.2 Regarding names of known methods
Utility model claims can use the “name” of a known method to define the shape and structure of a product. However, it should be noted that the following claims are not able to be granted as utility model:
a) a claim for a method or process;
b) a claim for improvement of a method/process; and
c) a claim including both shape/structural features of a product and improvements to a method.
1.3 Regarding computer programs
A summary of the relevant descriptions on computer programs in the Guidelines is as follows:
According to Article 2, Paragraph 3 of the China Patent Law, a utility model should be an improvement in the shape and/or structure of a product.
The shape of a product refers to the definite spatial shape that the product has and can be observed from the outside. The structure of a product refers to the arrangement, organization, and interrelationship of the various components of the product. Mechanical structure, circuit structure, and composite layer structure belong to the structure of the product.
2.1 Regarding shape
A summary of the relevant descriptions on shape in the Guidelines is as follows:
2.2 Regarding layered structure and circuit structure
Generally speaking, layered structure and circuit structure belong to the structure of a product. The circuit structure usually includes electrical circuits, gas circuits, hydraulic circuits, optical circuits, etc. The determined connection relationship between the various components of the circuit can be a wired connection or a wireless connection. However, the printed layer of a product does not belong to its structure, that is, the information layer containing patterns, texts, symbols, etc., formed on the surface of the product through printing or drawing process does not belong to the structure of the product.
2.3 Regarding material features
A summary of the relevant descriptions on the material features in the Guidelines is as follows:
2.4 Regarding food
Whether a food item is a patent-eligible subject matter lies in whether it includes improvements to its food material. If it includes improvements to the food material, then it is not a patentable subject matter of utility mode.
The Guidelines point out that the technical solution mentioned in Article 2, paragraph 3, of the China Patent Law refers to a collection of technical means that utilize the laws of nature to solve the technical problem. Technical means are usually reflected by technical features. Solutions that do not use technical means to solve technical problems to obtain technical effects that conform to the laws of nature are non-eligible subject matters in terms of utility model.
3.1 Regarding surface pattern and color
A summary of the relevant descriptions on surface pattern and color in the Guidelines is as follows:
3.2 Regarding aesthetic purpose
A summary of the relevant descriptions on aesthetic purpose in the Guidelines is as follows:
Fourth amendments of the Chinese patent law has taken effect on June 1, 2021, wherein, as for Patent Term Adjustment (PTA) for pharmaceutical patents, Paragraph 3 of Article 42 stipulates that, in order to compensate for the time taken for the review and approval of new drugs, for new drug-related invention patents that have been approved for marketing in China, the Patent Administration Department of the State Council shall, at the request of the patentee, grant compensation for the duration of the patent right.
Over the years, Chang Tsi & Partners has maintained a strong relationship and close collaboration with Customs at various levels in China. Participating in intellectual property protection training organised by Customs across the country has been a crucial aspect of Chang Tsi's daily work.
