Chinese Patent Law (CPL) protects three types of patents, namely, invention patent, utility model patent and design patent. Among them, utility model patent becomes more welcome to the applicants because of its quick and easy grant. Especially, in a very famous litigation between Chint and Schneider claiming huge damages, Schneider was imposed a compensation of 334.8 million yuan in the first instance judgment while the final reconciliation amount reaches 157.5 million yuan. The patent involved in this case is a utility model of a miniature circuit breaker. Compared with the invention, the utility model does not need to go through the substantive examination, but subject matter of utility model often becomes a very important issue during the examination. Therefore, this article intends to clarify some issues relevant to the subject matter of utility model in accordance with the laws and patent practices.
I. The subject matters for which no patent right shall be granted
1. Article 5 CPL
1) Contrary to the laws, wherein the laws refer to the laws formulated and promulgated by the National People's Congress or its Standing Committee following the legislative procedure. The laws do not include administrative regulations or rules.
Where an invention-creation is contrary to the laws, it cannot be granted for a patent right, for example, gambling facilities, drug-taking appliances, instruments and apparatuses for counterfeiting banknotes. For example, a slot marbles game machine, whose application documents describes that the game machine will eject a certain amount of money when the player achieves a certain amount of points, cannot be granted a patent right.
Where an invention-creation is not contrary to the laws but merely its abuse is contrary to the laws, the invention-creation can be granted for a patent right, for example, various toxicants, anesthetics, sedatives and analeptics used for medical treatment, and playing cards and chesses used for entertainment.
Where merely the exploitation of an invention-creation is prohibited by the laws, the invention-creation can be granted for a patent right, for example, guns and other weapons and their manufacturing facilities.
2) Contrary to social morality, wherein social morality is limited to ethical or moral norms and rules of conduct within the territory of China.
Where an invention-creation is contrary to social morality, it shall not be granted a patent right, for example, an artificial sexual organ not for medical purposes, and applications of human embryos for industrial or commercial purposes.
3) Detrimental to public interest
Where an invention-creation is detrimental to public interest, it shall not be granted a patent right, for example, 1) an invention-creation disabling or injuring a person or damaging property, such as an anti-theft device by causing blindness to the thief; 2) the exploitation or use of an invention-creation that may seriously pollute the environment, disrupt ecological balance, or impair the health of the public, such as, an invention-creation for waste water directly discharged into a river; and 3) words or patterns of an invention-creation concerning an important political event of the State or a religious belief, hurting the sentiments of the people or of an ethnic group, or advocating feudal superstition, such as an invention-creation using the Olympic Five Ring logo.
2. Article 25 CPL
For any of the following, no patent right shall be granted:
1) Scientific discoveries
Scientific discoveries refer to the revelations of substances, phenomena, transformation processes and their features and laws, which objectively exist in the nature.
For example, Newton's three laws, the first law of thermodynamics, and the discovery of combustible ice.
2) Rules and methods for mental activities
Rules and methods for mental activities are rules and methods governing people's thinking, expression, judgment, and memorization.
For example, managing methods in terms of organization and production, traffic rules, teaching methods, etc.
3) Methods for diagnosis or for treatment of diseases
4) Animal and plant varieties (patent right may be granted for the method of producing animal and plant varieties)
5) Substances obtained from methods of nuclear transformation
6) For designs of two-dimensional printing goods, made of patterns, colors or their combination, which serve mainly as indicators.
II. Interpretation of Definition
According to Article 2.3 CPL (hereinafter referred to as A2.3), utility model refers to any new technical solution relating to the shape, the structure, or their combination, of a product, which is fit for practical use.
1. Interpretation of "Product"
1) The "products" shall be objects manufactured by industrial methods, having definite shape and structure, and occupying a certain space.
For example, mechanical products, circuit products, articles of daily use, etc. may get protection.
2) The objects which exist naturally and are not made by man do not belong to the subject matter eligible for patent protection for utility model.
For example, plant potted landscapes, natural stones, insect specimen, etc. cannot get protection.
3) The utility model does not protect the method. The method refers to the technical solutions having operational steps, technological process and conditions and the like with time sequence. Classified by type, the methods mainly include the manufacturing methods, methods of use, methods of communication, processing methods, use of product, and computer programs.
Example 1 (processing steps): an engine timing gear characterized by comprising following processing steps: fine die forging of gear blanks; quenching and tempering, ... ; turning, machining to the expected size; hobbing; shaving ...; inspecting and storing.
Example 2 (methods of use): a meat grinder characterized by sending the cleaned meat strip into a meat grinder chamber, starting a switch of the meat grinder, pushing the meat strip with hand, and the ground meat entering a collection box from an outlet of the meat grinder.
Example 3 (processing methods): a high manganese steel compound gear characterized by casting a gear mold, casting molten steel into the gear mold, and obtaining the gear after cooling and heat preservation.
Example 4 (computer programs): a computer program comprising: step 1…; step 2…; step 7….
Above Examples 1-4 cannot be protected by utility model even though the subject matters of Examples 1-3 are products.
4) The technical solution of "structure + method" cannot be protected by utility model. Specifically, if the claim contains not only the features of shape and structure, but also improvement relating to the method per se, it is not the subject matter eligible for protection for utility model. For example, the claim includes the operational steps, technological process, processing conditions, etc. or names of new methods.
Example 1 (structure + technological process and conditions): a molding mold, comprising a male die and a female die, the male die and the female die moving up and down relative to each other guided by a guide pillar, characterized by (1) disposing the sheet material between the male die and the female die; (2) starting a hydraulic press to make the male die move down slowly, and pressing the sheet material into shaping cavity of the female die; maintaining the pressure at 80-100MPa; (3) raising temperature of the mold to 130℃ and maintaining for 25-30 minutes; (4) cooling the mold and workpiece with cold water; and (5) finally, taking the workpiece out, and performing edge trimming and surface treatment.
Example 2 (structure + manufacturing method): an antibacterial fabric, comprising a fabric and an inorganic antibacterial agent, the fabric being formed by pasting a pure cotton fabric layer and a polyester fabric layer; characterized by, firstly, spraying the inorganic antibacterial agent on the fabric, and then padding, drying and baking the fabric successively.
Example 3 (structure + method): a light steel member for construction, comprising an upper flange plate, a lower flange plate and a web plate, the web plate connecting the upper flange plate with the lower flange plate, characterized by, providing through holes on the web plate for dispersing the vertical external force, heating the steel member in an open fire for 5-10 minutes, and then quickly taking it out and immersing it in water for 50 seconds.
Example 4 (names of new methods): a dental floss box consisting of a box body and a box lid hinged with the box body, the box body and the box lid both being molded by patternless injection molding, characterized in that, the upper surface of the box body is provided with an outlet hole for floss and a blade.
It should be noted that it is possible to have the above Examples 1-4 granted a utility model by appropriate amendments.
5) The technical solution including the shape and structure defined by name of known method is protectable by utility model. It shall be noted that the three elements of "known method", "name" and "the shape and structure defined by" shall be satisfied at the same time.
Example 1: a high wear-resistant solid wood floor comprising a solid wood floor, a wood veneer and aluminium sesquioxide layer, characterized by, coating a urea formaldehyde resin layer on the solid wood floor, pasting the wood veneer on the urea formaldehyde resin layer, and hot pressing the aluminium sesquioxide layer on the wood veneer.
Example 2: a metal matrix for fixing a ceramic fiber body, characterized by, weaving the metal wire through the ceramic fiber body, at least part of woven metal wire exposing on one side of the fiber body, and brazing exposed part of the metal wire with the metal matrix.
Example 3: a pressure regulating valve, comprising a valve body connecting to an inlet pipe and an outlet pipe in which a throttle is provided; wherein the throttle is clamped and fixed at a position where an outer diameter of the outlet pipe is corresponding to an end face of the throttle, by necking, dotting and grooving outer surface of the outlet pipe.
6) Are computer related inventions- creations protectable by utility model?
If a claim does not relate to the improvement of the hardware which obviously only relates to the improvement of the computer program per se, the claim belongs to the process invention and does not belong to the subject matter of utility model.
If a claim merely relates to the improvement of the computer program per se substantively but the claim is drafted as a product claim, the claim belongs to the process invention and does not belong to the subject matter of utility model.
If a claim includes both the improvement of the hardware and the computer program, further determination is required. If the claim relates to the improvement of the computer program per se, it does not belong to the subject matter of utility model; if the computer program involved belongs to the simple program or the conventional applications of the known computer program, it may possibly belongs to the subject matter of utility model.
2. Interpretation of "Shape"
The shape of a product refers to certain space-shape possessed by the product, which can be observed from the outside. The improvement relating to the shape of a product may be the improvement relating to the two-dimensional shape of the product.
1) As for the product which has a non-fixed-shape, its shape cannot be regarded as the shape of a utility model product, for example, the substance or material in gaseous state, liquid state, powder state or particle state, such as ceramic powder, mixed gas, and lubricating oil.
2) The biological shape or naturally-formed shape cannot be regarded as the shape of a utility model product. For example, the shape formed by plant growth, the shape of naturally-formed rockery, etc.
3) A non-fixed shape obtained by means of arrangement or stacking cannot be regarded as the shape of a utility model product, for example, arranging several cups into a shape that is easy to be taken; arranging different ingredients into animal-shaped food.
4) A product with a certain technical feature of a non-fixed shape belongs to the subject matter of utility model, for example, lighters with lighter oil, rotary firing fireworks, screen with quicksand painting, etc.
5) The shape of a utility model product may be a definite space-shape which exists under specific circumstances, such as an ice-cup with a certain novel shape, or a parachute, etc.
3. Interpretation of "Structure"
The structure of a product refers to the arrangement, organization and correlation of each part of a product. The structure includes both the mechanical structure and the circuit structure. The mechanical structure refers to the relative position relationship, coupling relationship, and necessary mechanical matching relationship and so on of the components. The circuit structure refers to the fixed connection relationship amongst the components or elements.
1) The composite layer belongs to the structure of the utility model product. Carburized layer, oxide layer and so on belong to the structure of the composite layer, for example, an aluminum pipe, an outer surface of which is coated with a fireproof coating.
2) The molecular structure, component and metallogaphic structure of a substance do not belong to the structure of the product protected by utility model. For example, a welding rod which has only a change in the composition of soldering paste is not the subject matter of utility model.
3) The utility model may contain the features including the names of known materials. That is, the material known in the prior art may be applied on the product which has its own shape and structure, for example, composite wood floor, plastic cup, heart catheter holder made of memory alloy.
4) The utility model does not protect any form of new materials, and does not protect the technical solutions of "structure + new materials". Specifically, if the claim contains not only the features of shape and structure, but also the technical solution for the material per se, it does not belong to the subject matter of utility model.
Example (new materials): a packing case with multilayer structure, characterized in that: …, wherein the bottom layer of the packing case is WSP type high polymer waterproof material (Supposing WSP type high polymer waterproof material is unknown to the public before the filing date of the utility model).
5) What about the claim containing two or more combined features of the material?
If the material features are obviously known material, the material components in the claim shall be deleted, and only the name of the known material shall be retained according to the provision of A2.3. The applicant shall explain in the Description and provide relevant evidence that the material belongs to the known material.
If the material feature is obviously a new material, the material feature in the claim shall be deleted according to the provision of A2.3 where the material feature is not an essential technical feature.
If it is impossible to determine whether the material is obviously the known material, the examiner will issue a notification for query according to the provision of A2.3. The applicant may make observations and provide relevant evidence.
4. Technical solutions
A technical solution is an aggregation of technical means applying the laws of nature to solve a technical problem. Usually, technical means are embodied as technical features.
1) If the new solution consisting of the shape of a product or of the pattern, color, or the combination thereof in the appearance of a product does not solve any technical problem, it is not the subject matter eligible for patent protection for utility model.
2) The new solution consisting of character, symbol, chart or the combination thereof in the appearance of a product is not the subject matter eligible for patent protection for utility model, for example, a computer keyboard, characterized in that German letters are printed on the keys.
3) The design for the purpose of aesthetic feeling, without adopting technical means, is not the subject matter eligible for patent protection for utility model.
In short, solutions that adopt the technical means to solve the technical problems belong to the subject matter eligible for protection for utility model; and solutions that do not adopt the technical means or solve any technical problems do not belong to the subject matter eligible for protection for utility model.
The above contents discuss various provisions and provide the relevant interpretations of the subject matter for the utility model. In practice, we need to make a specific analysis for the specific problems, and select invention, utility model or design to reasonably protect the substantive content of the inventions-creations. On the other hand, the above analysis can be used for making pertinent arguments when replying to office action to get the utility model granted.