Introduction
Utility model patents are one of the three types of patents in China, alongside invention patents and design patents, collectively providing an effective pathway for protecting the innovative achievements of various innovators. Determining the subject matter of utility model patent protection is a crucial aspect of utility model patent application and examination practices. This guidance aims to outline the relevant regulations and examples related to the subject matter of utility model patents, guiding innovators to accurately understand the boundaries of utility model patent protection. It seeks to enhance the quality of utility model patent application drafting and responses, thereby promoting the high-quality development of the utility model patent system.
I. Requirements and Elements for Determining the Subject Matter of Utility Model Patent Protection
According to Article 2, Paragraph 3 of the Patent Law, a utility model refers to a new technical solution relating to the shape, structure, or combination thereof of a product, which is fit for practical use. Based on this provision, the subject matter of utility model patent protection must simultaneously possess three elements: product, shape and/or structure, and technical solution. If a utility model patent application claim does not meet the relevant provisions of any of these elements, it does not belong to the subject matter of utility model patent protection. The following sections will primarily outline the relevant regulations concerning these three elements based on the Patent Law, Patent Examination Guidelines, etc.
II. Common Scenarios Involving Products in Utility Model Patent Subject Matter Determination
According to Article 2, Paragraph 3 of the Patent Law, utility model patents only protect products. The product should be an entity manufactured by industrial methods, with a definite shape and structure that occupies a certain space. All methods and naturally occurring items not artificially manufactured do not belong to the subject matter of utility model patent protection. Common scenarios involving product determination in utility model patent protection are as follows:
(a) The Subject Name of the Claims Should Clearly Exclude Methods
If the subject name of the claims is a method, it does not meet the requirements for utility model patent protection. For instance, claim subject names such as a method of manufacturing gears, a dust removal method for workshops, or a data processing method do not qualify.
(b) The Claims May Use the Names of Known Methods to Define the Shape and Structure of the Product
The claims may use the names of known methods to define the shape and structure of the product but should not include method steps or process conditions. For example, the connection relationships of components defined by known processing methods such as welding or hot pressing. Improvements to the method itself, such as processing steps or process methods of the product, do not belong to the subject matter of utility model patent protection. Even if the claims include improvements to the method itself as well as the shape and structure characteristics of the product, they still do not belong to the subject matter of utility model patent protection.
For example, a degradable antibacterial fresh-keeping film sleeve includes claims not only for the shape and structure characteristics of the sleeve body made of degradable film with elastic fixing straps at the ends but also for an improved antibacterial processing method aimed at enhancing the binding strength of the antibacterial agent to the film to ensure antibacterial effects. The process involves cleaning the film with deionized water and ethanol solution, immersing it in an antibacterial solution for 10 seconds, rolling it, and finally segment heating: low temperature at 30-50 degrees Celsius to remove moisture and preheat, and high temperature at 70-85 degrees Celsius to dry. Since the claims include improvements to the method itself, they do not belong to the subject matter of utility model patent protection.
(c) Determination of Subject Matter Regarding Computer Programs
Considering the technical characteristics of computer programs, product claims involving computer programs that only include the names of known computer programs can be considered to belong to the subject matter of utility model patent protection. For claims that include both hardware improvements and computer programs, if the improvement over the prior art lies in the hardware part and the involved computer program is known, they can be considered to belong to the subject matter of utility model patent protection. If the claims include improvements to both the hardware part and the computer program itself, they do not belong to the subject matter of utility model patent protection.
Since utility model patents only protect products, claims formally written as products but essentially belonging to computer program module structures do not belong to the subject matter of utility model patent protection, as they only include program modules based on computer program flows.
For example, a claim seeking protection for a smart door lock with facial recognition technology aims to solve the problem of not being able to unlock a traditional mechanical door lock if the key is forgotten. It includes improvements to the hardware structure and the computer program running in the processor module that implements facial recognition. If the facial recognition program is known and the claim does not involve improvements to the program itself, the claim can be considered to belong to the subject matter of utility model patent protection.
Another example is a claim seeking protection for an automatic traffic light control system, characterized by a central control unit connected to parameter setting input devices, forced switch devices, and multi-level induction coil detection devices, aiming to solve the problem of traffic lights unable to automatically adjust the release time and sequence of vehicles in different directions based on the queue length of stationary vehicles on the road. Solving this technical problem relies on the computer program running in the “central control unit” that implements the function of “analyzing and calculating vehicle detection signals, determining whether there are vehicles on the road and their driving status, and calculating the queue length of stationary vehicles on the road, automatically adjusting the release time and sequence of vehicles in different directions based on the queue length of stationary vehicles on each road.” If this computer program is not a known program, the claim includes improvements to the computer program itself and does not belong to the subject matter of utility model patent protection.
Another example is a claim seeking protection for a semantic dictionary construction device, characterized by including: a sentence filtering module for extracting sentences with the same or similar semantics from the user’s web logs; a word filtering module, …; a word clustering module, …. Although this claim is written in the form of a product claim, it is essentially based on computer flows and written in a way that completely corresponds to each step of the computer flow, essentially belonging to computer program module structures and does not belong to the subject matter of utility model patent protection.
(d) Determination of Subject Matter Regarding Artificial Layout Planning
Artificial layout planning typically refers to the layout planning made for buildings, site spaces, etc., based on human production and living needs, mainly relying on improvements made by human rules and usage methods. Since such applications solve technical problems or achieve technical effects by relying on improvements in artificial planning, the technical solutions claimed do not meet the requirements for technical solutions related to improvements in product shape and structure as specified in the patent examination guidelines and thus do not belong to the subject matter of utility model patent protection.
For example, a claim seeking protection for a signal-controlled special lane at an intersection aims to improve the traffic capacity of intersections. Solving this problem relies on the artificial division of lane functions, which is an improvement in artificial layout planning. Therefore, this claim does not belong to the subject matter of utility model patent protection.
Another example is a claim seeking protection for a garden-style factory building, aiming to solve issues such as poor integration of existing factory buildings, low production matching, many transfer processes in each link, and high circulation logistics costs in each link. Solving this problem relies on the artificial division of the functional areas of the factory building, which is an improvement in artificial layout planning. Therefore, this claim does not belong to the subject matter of utility model patent protection.
III. Common Scenarios Involving the Shape and/or Structure in Utility Model Patent Subject Matter Determination
According to Article 2, Paragraph 3 of the Patent Law, a utility model should be an improvement on the shape and/or structure of a product.
The shape of a product refers to the definite spatial shape that can be observed externally. This includes the two-dimensional or three-dimensional forms of a product, such as a spiral-shaped tool or a profile with a cross-section shaped like an inverted “F”. Products without a definite shape, such as gaseous, liquid, powdery, or granular substances or materials, cannot have their shape protected as a characteristic of a utility model.
The structure of a product refers to the arrangement, organization, and interrelationship of its components. This includes mechanical structures, circuit structures, and composite layer structures. The molecular structure, composition, metallographic structure, etc., of a substance do not fall under the structure of a product protected by a utility model patent. For example, an electrode with changes only in the composition of the welding rod coating does not fall under the subject matter of utility model patent protection.
Common scenarios involving the determination of product shape and/or structure in utility model patent protection are as follows:
(a) Determination of Shape Characteristics
Biological or naturally formed shapes cannot be considered the shape characteristics of a product. For example, the shapes formed by the growth of plants in a bonsai or the shapes of artificial hills.
Shapes obtained by placing or stacking cannot be considered definite shapes of a product. For example, the conical shape formed after stacking cannot be considered the shape characteristic of a pile of construction sand, nor can the trapezoidal shape formed after arranging be considered the shape characteristic of a stack of steel pipes.
It is permissible for a technical feature of a product to include substances without a definite shape, such as gaseous, liquid, powdery, or granular substances, as long as these are constrained by the structural features of the product. For example, in a technical solution for the shape and structure of a thermometer, it is permissible to include alcohol, which does not have a definite shape.
The shape of a product can be a definite spatial shape under certain specific conditions. For example, an ice cup with a novel shape or a parachute. Another example is a steel strip packaging shell used for transporting and storing steel strips, composed of an inner steel ring, an outer steel ring, a binding strap, an outer protective plate, and waterproof composite paper. If the mutual relationships of these components, as defined by the technical solution, form a definite spatial shape when the steel strip is packaged, and this shape is not arbitrary, then the steel strip packaging shell can be considered to fall under the subject matter of utility model patent protection.
(b) Determination of Layered Structures and Circuit Structures
Generally, layered structures and circuit structures belong to the structure of a product. The thickness and uniformity of layers in a composite layer structure do not affect its status as a product structure. However, printed layers do not belong to the structure of a product; that is, information layers containing patterns, text, symbols, etc., formed on the product surface by printing or drawing do not belong to the product structure, such as advertising layers printed on the surface of a bag.
Circuit structures usually include electrical circuits, pneumatic circuits, hydraulic circuits, and optical paths. The definite connection relationships between various components of the circuit can be wired or wireless. For example, the structure of a circuit can be described according to the flow of signals in the circuit: a carbon dioxide gas concentration sensor composed of a signal acquisition unit, a signal sampling unit, an amplification filter circuit, and a shaping circuit. Its characteristics are that the signal acquisition unit collects the concentration signal of carbon dioxide in the air, then inputs the collected signal to the signal sampling unit, which then amplifies the electrical signal through the amplification filter circuit and filters out interference signals of power frequency and other frequencies to obtain an effective carbon dioxide concentration signal, which is then processed by the shaping circuit to obtain a square wave pulse signal.
(c) Determination of Material Characteristics
For product claims involving material characteristics, if they only include the names of known materials, they can be considered to fall under the subject matter of utility model patent protection. If they include improvements to the material itself, they do not fall under the subject matter of utility model patent protection. Since the composition or formula content of substances is a manifestation of the material characteristics themselves, if the product claims include limitations such as “made from 50% A, 40% B, and 10% C”, “adding E to D”, “including one or more of F, G, and H”, or “at least including one of F, G, and H”, it should be clearly stated that these are known.
For example, a claim seeking protection for an air purification filter element is characterized by a hard outer shell made of precision ceramics, and a multi-layer composite core inside the shell consisting of layers of silver-loaded activated carbon, anion stone, and diatomaceous earth. Since the materials of the shell and composite core layers are known, and there is no improvement to the materials themselves, the claim can be considered to fall under the subject matter of utility model patent protection.
Another example is a claim seeking protection for a silk diaper, composed of a main body that fits the buttocks and an elastic waistband connected to the main body. The main body includes a surface layer made of natural silk non-woven fabric, a composite breathable bottom film, and a water-locking absorbent core layer positioned between the two. The water-locking absorbent core is made of a mixture of superabsorbent polymer and wood pulp. If the absorbent core with the characteristic “made from a mixture of superabsorbent polymer and wood pulp” is known, the claim can be considered to fall under the subject matter of utility model patent protection. If it is an improvement to the absorbent core material itself, it does not fall under the subject matter of utility model patent protection.
(d) Determination of Subject Matter for Food-Related Applications
The determination of whether food-related applications fall under the subject matter of utility model patent protection depends on whether they include improvements to the material itself. If they include improvements to the material itself, they do not fall under the subject matter of utility model patent protection. For example, a claim seeking protection for a pastry composed of three layers of cake and seasoning layers sandwiched between the layers, with the cake layers made of flour, corn flour, and glutinous rice flour, and the seasoning layers made of sweet and salty seasonings, respectively. Although it has the characteristic of a layered structure, solving the problem of improving the taste of the pastry relies on the selection or combination of cake layer and seasoning layer materials, which means the claim includes improvements to the material itself and does not fall under the subject matter of utility model patent protection.
IV. Common Scenarios Involving Technical Solutions in Utility Model Patent Subject Matter Determination
The technical solution mentioned in Article 2, Paragraph 3 of the Patent Law refers to a collection of technical means that utilize natural laws to solve technical problems. Technical means are usually embodied by technical features. Solutions that do not use technical means to solve technical problems to achieve technical effects in accordance with natural laws do not fall under the subject matter of utility model patent protection.
New solutions involving the shape and patterns, colors, or combinations of the product that do not solve technical problems do not fall under the subject matter of utility model patent protection. New solutions involving text, symbols, or charts on the surface of a product also do not fall under the subject matter of utility model patent protection. For example, merely changing the text or symbols on the surface of a computer or mobile phone keyboard; a can opener decorated with the shapes of the twelve zodiac animals; or chess or card games distinguished only by surface pattern designs, such as ancient poetry playing cards.
Common scenarios involving the determination of technical solutions in utility model patent protection are as follows:
(a) Determination of Subject Matter for Solutions Involving Surface Patterns and Colors
New solutions involving the patterns, colors, or combinations of the product surface that do not solve technical problems do not fall under the subject matter of utility model patent protection. For example, a claim seeking protection for a raincoat with traditional Chinese elements printed at appropriate locations does not solve a technical problem, as the purpose of the pattern is to use the raincoat as a medium for promoting traditional culture and expressing individuality and aesthetics, which does not fall under the subject matter of utility model patent protection. However, a claim seeking protection for a safety raincoat characterized by fluorescent patterns on the front and back that improve pedestrian safety in low-light conditions does solve a technical problem and falls under the subject matter of utility model patent protection.
(b) Determination of Subject Matter for Solutions Aimed at Aesthetic Appeal
Solutions that improve the shape of a product solely for aesthetic purposes do not solve technical problems and do not fall under the subject matter of utility model patent protection. For example, making a trash can in the shape of a panda for aesthetic purposes does not fall under the subject matter of utility model patent protection.
If a solution not only aims for aesthetic appeal but also utilizes technical means in accordance with natural laws to solve technical problems and achieve technical effects, it can be considered to fall under the subject matter of utility model patent protection. For example, a streamlined car shape not only provides an aesthetic benefit but also effectively reduces wind resistance during driving, solving a technical problem, and thus can be considered to fall under the subject matter of utility model patent protection.
V. Practical Considerations for Utility Model Patent Applications and Responses Related to Subject Matter Determination
(a) Choosing the Appropriate Patent Type
For patent protection of an invention, the appropriate patent type should be selected. Since utility model patents only protect products, technical solutions that essentially include method/material improvements cannot be protected by utility model patents and may consider applying for invention patents. Applications purely for aesthetic purposes cannot be protected by utility model patents but may consider applying for design patents if they meet the relevant design requirements.
(b) Drafting Claims Related to Subject Matter Determination
The examination object for utility model patent protection is all claims. Therefore, when drafting utility model patent applications, equal attention should be paid to both independent and dependent claims. If the independent claim falls under the subject matter of utility model patent protection but the dependent claims do not, the application cannot be granted utility model patent rights.
(c) Considerations for Responses or Amendments Related to Subject Matter Determination
When responding to examination opinions related to the subject matter of utility model patent protection, attention should be paid to the response and amendment methods. Responses should address the deficiencies pointed out in the examination opinion notice while avoiding new issues. Since the examination object for utility model patent protection is the claims, merely amending the specification usually cannot overcome the deficiency of claims not belonging to the subject matter of utility model patent protection. Simple combinations or changes in the expression of claims do not constitute substantive amendments and cannot overcome the deficiency of claims not belonging to the subject matter of utility model patent protection. Simple deletion of technical features in independent claims that do not belong to the subject matter of utility model patent protection may result in the modified claims exceeding the scope of the original application, leading to new issues of non-compliance with Article 33 of the Patent Law.
When responding to examination opinions concerning whether the materials such as compositions are known, reasons or evidence should be provided to explain that the specific composition and its components (and their ratios) in the application are known materials as a whole, rather than merely stating that the individual components of the specific composition are known.
When responding to examination opinions concerning whether a computer program is known, the computer program should be considered as a whole. Reasons or evidence should be provided to explain that the computer program, including its complete execution logic, is known, rather than focusing on whether each instruction or set of program instructions implementing a specific function is known.