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Maojia LI
Patent Attorney, Partner
Linda Liu & Partners

 
It has been over one year since the new Patent Law entered into force on October 1, 2009. During this period, we have received a lot of questions from our clients about the new Patent Law and have noticed that foreign clients are now very interested in the utility model system in China. We will provide answers to the following frequently asked questions and hope that our answers can be helpful for applicants. We also appreciate your care and support in the past year.

Part I. Questions on Design Patent

The new Patent Law revises many provisions for design patents, and this has drawn wide attention from insiders. The following are common questions and concerns of applicants.

I. Brief Explanation

1. How to draft a brief explanation? Will the brief explanation affect the design patent right?

According to the Patent Law that entered into force on October 1, 2009; where a design patent application is filed with the SIPO, besides a request and drawings or photographs of the design, a brief explanation shall also be submitted. The new Guidelines for Patent Examination defines the content of the brief explanation, that is, the brief explanation shall include the title of the product, use of the product and essential features of the design, and designate one drawing or photograph that best shows the essential features of the design, for publication in the Patent Gazette, wherein the essential feature of the design means the shape, pattern or their combination, or the combination of the color and the shape or pattern, or the position that is different from the prior design. Furthermore, Article 59.2 of the Patent Law prescribes that the brief explanation may be used to interpret the design of the product as shown in the drawings or photographs. In view of the above provisions, many applicants are worried that the essential features of the design stated in the brief explanation may affect the design patent right.

As to whether the essential features of the design affect the validity of the design patent, judging from a seminar that we attended recently, none of the senior examiners from the design examination department and the Patent Reexamination Board of the SIPO thinks that the essential features of the design stated in the brief explanation substantively affect the validity of the design patent. In the invalidation procedure, the patent concerned is compared with the comparative design based on the principle of “whole observation and comprehensive judgment”. In other words, all the features of the patent concerned, not just the essential features of the design, are compared with the comparative design. Even if the comparative design has features identical to the asserted essential features of the design of the patent concerned, the patent concerned will not necessarily be invalidated. On the contrary, if the comparative design does not have any features identical to the asserted essential features of the design of the patent concerned, validity of the patent concerned is not ensured.

As to whether the essential features of the design affect the judgment of design patent infringement, Article 11 of the Interpretation of the Supreme People’s Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Dispute Cases (Legal Interpretation 2009 No. 21) adds the provision that “the features distinguishable from the prior design shall be deemed to have more influence on the whole visual effect.” However, the court does not have a clear answer as to whether “the features distinguishable from the prior design” refer to “the essential features of the design” in the brief explanation. As far as we know, there is currently no design patent infringement case involving an application filed after the enforcement of the new Patent Law, so we have to wait for future court decisions on this issue.

We suggest drafting the brief explanation in a general manner as below, especially when the applicant does not know the prior design well:

(1) The essential features of the present design are shown in the front view (or perspective view) (i.e., designating a drawing that best shows the essential features of the design to make an explanation).

(2) The essential features of the present design lie in the shape (pattern or color) (i.e., using the elements of the design to make an explanation).

Of course, if the applicant knows clearly which part of the design is an improvement or creation, with all the other parts being conventional, the applicant can directly state which specific part of the design reflects the essential features of the design. For instance, for a tire product, the applicant can state that the essential features of the design lie in the tread. However, if the improved part only represents a small proportion of the design, the examiner may deem that the design only differs from the prior design in minor changes in some fine details not sufficient to have a notable influence on the overall visual effect, and this will be detrimental to the argument on “inventive step.” For instance, if the applicant wants to file a design patent application for an electronic rice cooker different from the prior design only in the shape of the control button, which is only a minor design of a detail of the electronic rice cooker and occupies a small part of the overall design, the applicant had better improve the shape or pattern of the other parts in order to obtain a stable patent right. If the applicant cannot determine the position or proportion of the improved part, we suggest drafting a brief explanation like (1)-(2).

2. Must the brief explanation be filed along with the application? Can the brief explanation be filed after the application is filed? Can the brief explanation be amended after being filed?

The new Patent Law prescribes that the brief explanation is a necessary document to be filed, so the brief explanation must be filed along with the application; otherwise the application will not be accepted.

The brief explanation can be amended after being filed, and the applicant had better amend the brief explanation within the time limit for making voluntary amendments, that is, within two months from the filing date. If the applicant amends the brief explanation after receiving a Notification to Make Rectification due to other defects, such an amendment will normally be accepted by the examiner. In other words, it is possible to amend the brief explanation at any time before the application is granted a patent right.

However, the brief explanation can be amended in a very limited way. In principle, any amendment to the brief explanation shall not go beyond the scope of the design of the product shown in the original drawings or photographs; otherwise this amendment will be deemed as going beyond the scope.
  
II. Two or More Similar Designs of the Same Product to be Filed as One Application

1. What should the applicant pay attention to when filing this kind of application?

(1) Each design shall be of the same product;

(2) Similar designs as one application shall be filed on the same day;

(3) The total number of similar designs in one application shall not exceed ten;

(4) The brief explanation shall designate the main design, and the other designs shall be similar to the main design;

(5) To claim foreign multiple priorities, the applicant shall file the application in China within six months from the earliest priority date;

(6) At the time of filing, the views for each design shall clearly show the claimed product to ensure that the views of a divisional application (if any) still clearly show the claimed product.

2. What advantages does this kind of application have?

(1) Cost savings;

(2) Independently enforcing the right of each design, and avoiding the situation in which separate applications for similar designs destroy each other’s patentability and lead to a result of retaining only one design.

3. When two or more similar designs of the same product are filed as one application, if these designs have different priority dates, or if some designs enjoy foreign priorities whereas the others enjoy none, will this be considered a conflicting application?

No. All the designs are filed as one application and share one application/announcement number. To determine whether there is a conflicting application, the focus is on two or more applications filed on different days.

These designs, however, may be separately invalidated, and the invalidation of one design will not necessarily lead to invalidation of the other designs.

For instance, A, B and C are three similar designs of the same product filed as one application. A is the main design and enjoys no foreign priority, B and C claim foreign priorities, and the priority date of B is earlier than that of C. If a reference document published on a day between the priority date of B and that of C destroys the patentability of A, B and C, A and C will be invalidated, whereas the validity of B will be maintained because the priority date of B is earlier than the publication date of the reference document.

4. When the examiner issues a Notification to Make Divisional Application on the grounds that some designs are not similar to the main design, should the design(s) retained in the original application serve as the main design (or multiple similar designs including the main design)? Or, can the applicant arbitrarily choose which design is to be retained in the original application and which design is to be filed as a divisional design? Or, can the applicant not file a divisional application but abandon all or some of the designs that the examiner requires to be filed as divisional applications?

Neither the Patent Law nor the Guidelines for Patent Examination prescribes that “where two or more similar designs of the same product united in one application do not meet the unity requirement, the main design shall be retained in the original application.” If the examiner only states in the notification that the designs do not meet the unity requirement without designating which design shall be retained in the original application, the applicant can indeed arbitrarily choose which design is to be retained in the original application and which design is to be filed as a divisional application.

However, if the examiner has examined the main design and designs similar to the main design and requires the applicant to file divisional applications for designs dissimilar to the main design, the applicant should follow the examiner’s suggestion to file divisional applications for the dissimilar designs mentioned by the examiner. If the applicant does not agree to the examiner’s suggestion on divisional applications, the applicant may hold an interview with the examiner before determining how to file divisional applications.

It should be noted that, no matter whether the divisional applications are filed for the main design and designs similar to the main design, or for other designs dissimilar to the main design, the divisional applications can retain the original filing date. Therefore, no matter how the divisional applications are filed, the patent rights of the designs will not be affected.

Furthermore, after receiving a Notification to Make Divisional Application, the applicant is permitted to not file a divisional application but directly abandon all the designs that the examiner requires to be filed as divisional applications. Of course, the applicant can only abandon some of them.
 
III. Two or More designs of Products Belonging to the Same Class and Sold or Used in a Set to be Filed as One Application

The products here belong to the same class in the International Classification for Industrial Designs and are customarily sold or used at the same time, wherein the designs of the products have the same design concept.

Accordingly, for instance, a garment and a hat in Class 2 (Articles of clothing and haberdashery) can be united in one application, while a sofa and a tea table in Class 6 (Furnishing) can be united in one application.

It should be noted that the design patent application for products in a set should not include similar designs of one or more products. For instance, a design patent application for products in a set including a dinner cup and a saucer shall not include two or more similar designs of the dinner cup and the saucer.
 
IV. Whether Splash Screen Can Obtain a Design Patent

The splash screen is a pattern displayed after the product is electrified, and belongs to a subject matter excluded from design patent protection, so it cannot obtain a design patent in China.
 
V. Whether Preliminary Examination Examines Novelty and “Inventive Step”

Normally, during a preliminary examination of a design patent application, no search is conducted, and the examiner determines whether the design patent application is in compliance with Article 23.1 (novelty) of the Patent Law based on the content of the application document and common knowledge of an ordinary consumer. The preliminary examination does not examine the “novelty step”. In the invalidation procedure, if the petitioner uses Article 23.1 or Article 23.2 of the Patent Law as grounds for invalidation and submits evidence, the Patent Reexamination Board will examine whether the design patent concerned possesses novelty or involves an “inventive step”.

VI. Patent Evaluation Report

1. Does the SIPO only issue a patent evaluation report for design patents filed after October 1, 2009?

The SIPO only issues a patent evaluation report for design patents filed after October 1, 2009 upon the request of the patentee or the interested party.

The interested party refers to any party that has the right to file an infringement lawsuit in the people’s court or request the local administrative authority for patent affairs to handle the infringement dispute.

2. What influence does the design patent evaluation report have over design patent infringement litigation?

The patent evaluation report mainly serves as evidence for the people’s court or the local administrative authority for patent affairs to judge whether to discontinue the relevant procedure. Even if the patentee files an infringement lawsuit without submitting the patent evaluation report, the court will normally accept the case. If the accused infringer files an invalidation request while the patentee does not submit a patent evaluation report, the court may require the patentee to submit the patent evaluation report. If the patentee does not do so, the court may discontinue the trial. If the patent evaluation report submitted by the patentee indicates that the design meets the grant requirements, the court may not discontinue the trial; if not, the court may discontinue the trial.
 
Part II. Questions on Patent Procedures

I. Confidentiality Examination

1. Legislative improvements

(1) Canceling the limitation of first filing an application in China

The third amendment to the Patent Law improves Article 20 and revises the original provision (“the applicant shall first file a patent application with the patent administration department under the State Council”) into “before filing a patent application abroad, the applicant shall request in advance the patent administration department under the State Council for a confidentiality examination” so as to provide more choice and convenience for applicants.

(2) Clarifying the examination target

The third amendment to the Patent Law clarifies the target of the confidentiality examinations as an invention or a utility model, instead of a design.

(3) Adding a penalty provision

If a patent application for an invention or utility model is filed in a foreign country in violation of Article 20.1 of the Patent Law, it shall not be granted a patent right when filed in China.

2. Scope of confidentiality examination

Pursuant to Article 20 of the Patent Law and Rule 8 of the Implementing Regulations of the Patent Law, the patent application necessary for a confidentiality examination shall meet the following conditions:

(1) The substantive content of the technical solution was accomplished within the territory of China;

It should be noted that, for invention-creations developed in Hong Kong, Macao and Taiwan, especially Hong Kong and Macao, there is no explicit provision saying that a confidentiality examination is a must, but we suggest requesting a confidentiality examination.
(2) The applicant intends to file a patent application for the technique in a country other than China.

3. Types of requests for confidentiality examinations

Rule 8 of the Implementing Regulations of the Patent Law prescribes three types of requests for confidentiality examinations, which have their advantages and disadvantages. In practice, the applicant can select an appropriate type of request based on his or her plans and demands. In the following table, we make a comparative analysis of these three types of requests:
 

Note: The SIPO has no specific formal requirement regarding a “detailed explanation of the technical solution” in an Independent Request but requires that it shall describe the subject matter and content of the technical solution in a complete manner and shall not substantively differ from the disclosure of the description and claims of the subsequent foreign application.
 
II. Indication of Genetic Resources Information

Pursuant to Rule 26.1 of the Implementing Regulations of the Patent Law, the genetic resource referred to in the Patent Law means the material obtained from such sources as a human body, animal, plant, or microorganism that contains functional units of heredity and is of actual or potential value.
For an invention-creation developed by use of genetic resources, the applicant shall indicate information regarding the source of the genetic resources, that is,

1. The applicant shall state in the request that the invention-creation in the patent application is developed by use of genetic resources;

2. The applicant shall fill in the Registration Form for Indicating Source of Genetic Resources, indicating the name, obtaining method, direct source and original source of genetic resources.

If it is impossible to state the original source of the genetic resources, the applicant shall state detailed reasons and provide certifying documents if necessary.

For instance, if the direct source of the genetic resources is a certain institution (e.g. a depositary institution) that has no record of the original source of the genetic resources, the applicant may state reasons (e.g. “the depositary institution cannot furnish the original source of genetic resources”) in the Registration Form for Indicating Source of Genetic Resources and provide written certification made by the institution.

The above statement and the Registration Form for Indicating Source of Genetic Resources should normally be submitted at the time of filing the patent application in China or at the time of entry into the Chinese national phase for a PCT international patent application. If the submitted documents are not in compliance with relevant provisions, the SIPO will issue a Notification to Make Rectification, inviting the applicant to rectify. If, at the time of filing, the applicant does not make a statement or does not file the Registration Form for Indicating Source of Genetic Resources, the defect will not normally be discovered by the examiner in the preliminary examination department during the preliminary examination. During the substantive examination, if the examiner in the substantive examination department discovers this defect and deems that the invention is developed by use of genetic resources, the examiner will issue a notification requiring the applicant to submit the Registration Form for Indicating Source of Genetic Resources. Of course, if the invention obviously belongs to genetic resources, the examiner during the preliminary examination may issue a Notification to Make Rectification requiring the applicant to submit the Registration Form for Indicating Source of Genetic Resources.
 
III. Assignment of Patents or Patent Applications

1. Required documents and procedures

(1) Assignment contract/certificate signed by both parties

① The assignment contract/certificate shall be signed by all the assignors and assignees;

② Multiple patents or patent applications with the same assignor(s) and assignee(s) may be united in one assignment contract/certificate;

③ The original or notarized copy of the assignment contract/certificate shall be filed with the SIPO.

(2) Where a Chinese individual/legal entity assigns a patent or patent application to a foreign individual/legal entity, according to the Regulations on Technology Import and Export Administration, the assignor shall register it in the local competent department of economics and trade, and obtain a technology export license.

(3) A request for changing the patentee/applicant shall be filed with the SIPO, and the relevant fee shall be paid.

2. Required fees

For each assignment of a patent or patent application, the fees are approximately RMB900 (USD135) including:

(1) Official fee: RMB200 (approximately USD30)

(2) Fee charged by a patent agency: RMB700 (approximately USD105)

3. Required time

After the request for changing the patentee/applicant is filed, the SIPO normally gives a decision after one or two months.

4. Transactor

Where a patent or patent application is entrusted to a patent agency, the patent agency shall go through the formalities for a change of the patentee/applicant. Where no patent agency is entrusted, the formalities shall be gone through in the name of all the patentees/patent applicants prior to the assignment.
 
IV. Accelerated Examination

1. Accelerated examination system in China

(1) Applicable scope

At present, the accelerated examination system in China only applies to applicants within the territory of China (excluding Hong Kong, Macao and Taiwan). The applicant may request an accelerated examination of a patent application for an invention, utility model or design. The request for an accelerated examination may be filed along with the application or at any time after the application is filed.

(2) Reasons for requesting an accelerated examination are normally limited to the following:

① The invention in the application is vital to national or public interests;

② The invention in the application is listed in major science and technology projects of the nation or province (municipality, autonomous region);

③ The implementation of the invention by other persons after the publication of the patent application severely affects the applicant’s interests;

④ The applicant has implemented the invention to solve the problem of re-employment of laid-off workers;

⑤ The invention of the application is used in important projects for intangible asset investment, or the technique of the application is to be transferred;

⑥ Where the substantive examination of a patent application will be automatically started by the SIPO, this patent application may be treated preferentially;

⑦ A divisional application retaining the original filing date may be examined along with the original application.

With reasons ① to ⑤, the applicant or his or its administration department may file a request for an accelerated examination, and upon approval of the SIPO’s Commissioner, the application may be examined preferentially and also be treated preferentially during the subsequent examination procedures.

(3) Required documents and fees

Where the applicant files a request for an accelerated examination of an invention patent application, the applicant shall submit the Certificate of Accelerated Examination of Invention Patent Application made by the provincial intellectual property bureau and state the reasons for acceleration. The applicant shall also provide auxiliary data, which includes but is not limited to the Certificate of Selecting the Technique of the Patent Application in the National Science and Technology Plan, the agreement or contract on assignment of the patent application, and infringement evidence.

To request an accelerated examination, the fee for each invention patent application is RMB1400 (approximately USD210), and for each utility model/design patent application, RMB1000 (approximately USD150).

(4) Formalities and Examination period

The accelerated examination will start after the request for the accelerated examination by the applicant for an invention patent application is approved by the SIPO and the applicant pays the fee for the accelerated examination.

If the invention patent application for the accelerated examination has entered the substantive examination procedure, the examiner shall issue the first Office Action within two months and conclude the case within six months. If the invention patent application does not enter the substantive examination procedure, the examiner shall conclude the case within one year after the application passes the preliminary examination.

2. Voluntary acceleration of examination

(1) Preliminary examination

The applicant can try to avoid formality defects in the patent application to help the application pass the preliminary examination and enter the substantive examination procedure as soon as possible by taking the following measures:

① Ensuring that the filed application document (request, claims, description, etc.) is complete and complies with all the formal requirements;

② Submitting certifying documents such as a power of attorney, priority certificate, certificate of priority assignment (if necessary) along with the application to reduce the number of the Notifications to Make Rectification;

③ Filing a request for a substantive examination and a request for publication in advance along with the application so as to publish the application and enter the substantive examination procedure as soon as possible.

(2) Substantive examination

① Responding to each Office Action in a rapid and comprehensive manner so as to reduce the number of Office Actions and therefore obtain a patent as soon as possible;

② Trying to hold a personal or telephone interview with the examiner before responding to the Office Action to let the examiner understand the technique of the application, and to provide relevant technical data (if any) to the examiner for his or her reference.

(3) Grant procedure

After receiving a Notification to Grant Patent Right, the applicant should register and pay fees as soon as possible to obtain a certificate of patent.
 
Part III. Latest Development of Utility Model System in China

I. Brief Introduction to Utility Model System in China

1．Basic information

The utility model system was established by the first Patent Law that entered into force in 1985 by referring to laws and regulations of countries like Germany and Japan where the utility model system has a long history. In China, the utility model has the features of fast approval, easiness to grant and low costs. These advantages have been reasonably utilized by more and more applicants during the past twenty years. This system has greatly raised the intellectual property consciousness of individuals and small/medium-sized enterprises.

2．Definition of utility model

Pursuant to Article 2.3 of the Patent Law, “utility model” means any new technical solution relating to the shape, structure, or their combination, of a product fit for practical use.

This provision actually defines the subject matter of the utility model, that is, the subject matter of the utility model shall meet three conditions: product, shape and/or structure, technical solution. No utility model application shall be filed for any method (use) invention. The product shall be an object manufactured by the industrial method, having a definite shape and structure, and occupying a certain shape. The shape of the product refers to a certain space-shape possessed by the product that can be observed from the outside. The structure of the product refers to the arrangement, organization and correlation of each part of the product. For instance, for a chemical product (compound or composite) formed in an uncertain space, no utility model application shall be filed. The technical solution refers to the collection of technical means that are adopted to solve a technical problem in observance of the laws of nature. The technical means is usually embodied by technical features.

3．Examination system

For a utility model patent application, China adopts a preliminary examination system that is different from the substantive examination system, the registration system or the registration plus search report system. Specifically, during the preliminary examination, the examiner only determines whether the application document is complete, meets the requirements or suffers from obvious substantive defects. As long as these conditions are met, the patent can be granted. The examiner normally does not examine the substantive grant conditions such as whether the subject matter of the utility model patent application possesses novelty or involves an inventive step.
 
II. Amended Provisions on Utility Model under the Patent Law and the Implementing Regulations of the Patent Law

1.Two applications for an identical invention-creation

The title means that both an invention patent application and a utility model patent application are filed with the SIPO for the same invention-creation. According to Article 9.1 of the new Patent Law, “Only one patent right shall be granted for any identical invention-creation. However, if an applicant files patent applications for both a utility model and an invention relating to the identical invention-creation on the same day, and the applicant declares to abandon the utility model patent that has been granted and does not terminate, the invention patent may be granted.”

The new Patent Law broadens the scope of “conflicting application” to “any entity or individual”, so “two applications for an identical invention-creation” must be filed on the same day; otherwise the earlier application will destroy novelty of the subsequent application.

Pursuant to Rule 41.2 of the Implementing Regulations of the Patent Law, if an applicant files patent applications for both a utility model and an invention relating to the identical invention-creation on the same day (filing date), he or it shall state that he or it has filed another patent application for the identical invention-creation. If the applicant fails to do so, the issue shall be handled in accordance with Article 9.1 of the Patent Law, that is, only one patent right shall be granted for any identical invention-creation.

According to the above Rule 41.2, upon filing “two applications for an identical invention-creation”, the applicant shall state in the requests of the two applications that he or it has filed another patent application for the identical invention-creation. If the applicant makes no such statement, the utility model patent will normally be granted after a short period of time. In this case, if the examiner, during the examination of the invention patent application, finds out that the utility model for the identical invention-creation has been granted, the examiner will raise an objection in accordance with Article 9.1 of the Patent Law. Then, the applicant can only amend the invention patent application to make the protection scope of its claims different from that of the utility model patent rather than obtain the invention patent by abandoning the utility model patent. In contrast, if the applicant makes such a statement, the applicant can deal with this issue either by abandoning the utility model patent to obtain an invention patent and terminating the utility model patent from the announcement date of the invention patent, or by amending the claims of the invention patent application so as to make the protection scope of the claims different from that of the utility model patent.

2. Other formal requirements

According to the added paragraph 5 in Rule 17 of the Implementing Regulations of the Patent Law that entered into force on February 1, 2010, the description of a patent application for a utility model shall include drawings showing the shape, structure, or their combination of the product for which protection is sought.

This paragraph shows the difference between the utility model patent and the invention patent in the subject matter, that is, the utility model does not protect a method, so the drawings of the utility model cannot merely include a process flow chart, a temperature change curve or the like.
 
III. Influence of Material/Method Features on Protection Scope and Patentability of Utility Model

According to Article 2.3 of the Patent Law, the utility model only protects a product, so the claims of the utility model cannot contain material/method features, that is, the claims cannot contain any improvement on the material/method, such as definitions on the composition and content of the material or the steps and process conditions of the method. However, the claims can use the known material/method names to define the shape and structure of the product.

1. Influence of material/method features on the protection scope of the utility model

Pursuant to Article 7 of the Interpretation of the Supreme People’s Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Dispute Cases (2010), when judging whether the accused infringing technical solution falls within the patent protection scope, the people’s court shall take into account all the technical features of the claims of the patentee. To determine the protection scope of the utility model, certain technical features of the claims such as use of the product, manufacturing process, usage method, composition and content of the material, cannot be ignored because they define the protection scope.

2. Influence of material/method features on the patentability of the utility model

Pursuant to the Guidelines for Patent Examination, especially Part II, chapter 3, section 3.2.5, if one skilled in the art can determine that the material/method features necessarily cause the product to have a particular structure and/or composition distinct from that of the product disclosed in the reference document, the claim will possess novelty. On the contrary, if the difference lies only in the manufacturing method, with the same structure and/or composition of the product, the claim will not possess novelty.

According to the provisions on the examination of the utility model in the invalidation procedure in Part IV, chapter 6 of the Guidelines for Patent Examination, in the examination of inventive step for the utility model, all the technical features in the technical solution, including both material features and method features, shall be taken into account. However, in a case where the material features in the technical solution only differ from the corresponding features of the closest prior art in the material that does not result in any change of the product in the shape, structure or their combination, even if the difference of the material makes the technical solution including the material features achieve a effect better than or different from that of the closest prior art, the material features will not be taken into account in the examination of inventive step for the utility model.

Similarly, if the method features in one claim do not result in a change of the product in the shape, structure or their combination, the method features will not be taken into account in the examination of inventive step for the utility model.

However, if the method features result in a change of the product in the shape, structure or their combination, only the change of the shape, structure or their combination, instead of the method features, will be taken into account in the examination of inventive step for the utility model.

3. Contradiction in the influence of material/method features on the protection scope and patentability of the utility model

As shown above, on the one hand, in determining the protection scope of the claims of the utility model, material/method features in the utility model define the protection scope of the claims together with other features, and further narrow the protection scope. On the other hand, in commenting on the inventive step issue of the claims, these material/method features will be considered to be non-existent and unhelpful for proving the inventive step of the claims if they do not result in any change of the utility model in the shape and/or structure; even if the material/method features result in a change of the utility model in the shape and/or structure. Only the change of the shape and/or structure, instead of improvements on the material/method, will be taken into account.

When drafting the claims of the utility model, the applicant should try not to use the material/method names to define the product unless the applicant is sure that such a material/method leads to the improvement of the product in the shape and/or structure. In this way, the situation in which the definition of the material/method names narrows the protection scope of the claims can be avoided. Moreover, the definition of the material/method names may be unhelpful for proving the inventive step of the claims.
 
IV. Examination of Novelty and Practical Applicability for Utility Model

1. Examination principle on “obvious defect of lacking novelty”

For utility models, China only conducts a preliminary examination that not only focuses on formality defects of the application document but also obvious substantive defects as prescribed by Article 22.2 (novelty) and Article 22.4 (practical applicability) of the Patent Law.

Before the new Patent Law came out, the novelty and inventive step issues of the claims of the utility model were not examined, and this caused instability of the utility model patent and double patenting. Rule 44 of the new Implementing Regulations of the Patent Law prescribes that the examination shall be conducted on the obvious defects of lacking novelty and practical applicability.

Currently, the SIPO adopts the following preliminary examination principle for the utility model: usually, no search is conducted to determine whether the utility model lacks novelty in an obvious way, and the examiner determines whether the utility model obviously lacks novelty based on information of the prior art or a conflicting application obtained normally without a search. However, if the examiner thinks that the utility model obviously copies the prior art or obviously contains the same substantive content as that of another application, the examiner will determine whether the utility model obviously lacks novelty based on the searched reference documents or information obtained in other ways.

The prior art or conflicting application obtained “normally without a search” mainly refers to the prior art (mainly patent literatures) disclosed by the RELATED ART in the description of the utility model, and also includes the following:

(1) Certifying documents submitted by the applicant who requests a grace period of novelty but does not comply with relevant provisions, such certifying documents being sufficient to destroy the novelty of the application;

(2) The earlier application sufficient to destroy novelty of the subsequent application filed by the applicant who claims a non-existent priority;

(3) Reference documents listed in a search report provided by any entity or individual for the examined utility model patent application, such reference documents destroying novelty of the application;

(4) Reference documents listed in an International Search Report or International Preliminary Report on Patentability for a utility model international application entering the national phase, such reference documents destroying novelty of the application;

(5) Information of conflicting applications provided by any entity or individual for the examined utility model patent application, or another utility model patent application previously examined by the examiner and considered by the examiner as a conflicting application;

(6) Relevant prior art provided by any entity or individual for the utility model patent application being examined and such prior art being sufficient to destroy novelty of the application.

2. Examination principle on “obvious defect of lacking practical applicability”

To determine whether a utility model obviously lacks practical applicability, the following three factors shall be taken into account:

(1) Whether the utility model obviously violates the laws of nature, such as a perpetual motion machine;

(2) Whether the utility model obviously produces no effective result;

(3) Whether the utility model utilizes unique natural conditions.
 
V. Balance of Interests in Utility Model System

As shown above, since a utility model patent can be granted without a substantive examination, it has an instable right and can very possibly be invalidated. If the patentee is too careless in enforcing the right of the utility model patent that actually does not meet the grant requirements, the time and energy of the patentee will be wasted and the public interests will be harmed as well. This is unfavorable to both the patentee and other persons, so it is necessary to consider the balance of interests in the utility model system.

The new Patent Law perfects the provision on the utility model patent evaluation report. Pursuant to Rule 56.1 of the Implementing Regulations of the Patent Law, after the announcement of the decision to grant a patent right for a utility model, the patentee or the interested party may request the patent administration department under the State Council to make a patent evaluation report.

The utility model patent evaluation report not only includes whether the claims possess novelty and involve an inventive step but also other substantive grant conditions, for example, whether the description has sufficiently disclosed the utility model, whether the claims are supported by the description, or whether the amendments go beyond the scope.

Once the patent evaluation report is made, it is put into the patent dossier for the public to read and copy it freely, that is, all the public groups including the patentee, business competitors of the patentee, enterprises interested in the business value of the patent may know stability of the utility model patent through the patent evaluation report.

It should be noted that the utility model patent evaluation report is a non-formal judgment of the validity of the patent. Whether or not the utility model patent is valid shall be only decided through the invalidation procedure so the role of the patent evaluation report cannot be arbitrarily exaggerated and the patent evaluation report cannot be deemed as exclusive evidence for proving validity of the utility model patent. The patent evaluation report mainly serves as evidence for the court or the administrative authority for patent affairs to handle a patent infringement dispute. Specifically, the patent evaluation report is used by the court or the administrative authority to determine the stability of the patent concerned so as to judge whether or not to discontinue the relevant procedure upon the invalidation request by the accused infringer.

Besides, the patent evaluation report helps the patentee understand the legal stability of his or its utility model patent so as not to inappropriately enforce the patent right, and helps other entities or individuals understand legal stability of the utility model patent concerned so as not to engage in useless acts to trade the utility model patent that does not meet the grant requirements under the Patent Law, such as patent assignment, or signing of a license contract for patent exploitation.
 

（2010）