Features of utility models not necessarily precluded from protection

By Jiang Fengtao and Yang Cunji, Hengdu Law Offices
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Autility model protects only the new technical solution to the form or structure of a product. In the claim, if the technology to be protected is just a replacement of material of one constituent part with another known material, it will not be deemed as innovative in normal conditions.

A replacement of a material, easy as it seems, may also bring tangible change to the product and create beneficial technical effect, thereby being innovative.

江锋涛 Jiang Fengtao 恒都律师事务所 管理合伙人 Managing Partner Hengdu Law Offices
江锋涛
Jiang Fengtao
恒都律师事务所
管理合伙人
Managing Partner
Hengdu Law Offices

This article focuses on a specific case and analyses the effect of a material’s features on a utility model, providing a perspective that is usually ignored in the examination of utility models.

Material differences

In a dispute over the invalidity of the utility model patent “Light waterproof heat resistant composite board”, the patented technology was a light waterproof heat resistant composite board. The board was comprised of a foam substrate and a hard panel formed through mould pressing, characterized by a waterproof adhesive layer between a surface of the foam substrate and the bottom surface of hard panel. The adhesive layer was formed by the firm adhesion of a waterproof adhesive material; the other surfaces of the foam substrate were covered by a polymer cement-based waterproof adhesive material.

During the invalidation procedure, the petitioner argued that the only difference between the patented technology and the prior art was the material and the structures of both were completely identical. The petitioner further argued that as a result, the patented technology lacked novelty and inventiveness.

The patent re-examination board reviewed the patented technology and prior art. The board held that the patented technology had the distinctive technical feature of “the other surfaces of the foam substrate are covered by a polymer cement based waterproof adhesive material” in comparison to the prior art.

杨存吉 恒都律师事务所 律师
杨存吉
恒都律师事务所
律师

The distinctive technical feature prevented water from seeping into the foam substrate through the bottom surface and other sides of the foam substrate, the board found. Moreover, it allowed cement mortar to be directly laid on a base layer surface, allowing adhesion between the foam substrates of adjacent composite boards and direct sealing of the seams between the hard panels with a polymer cement based waterproof adhesive material. The board thus held that the patented technology had novelty and inventiveness.

The court of first instance reviewed the case and upheld the board’s decision. The court of second instance argued that the distinction between the patented technology and the prior art was not just the replacement of a typical waterproof material. Rather, it held, the distinction lay in the structures of the various parts of the patented technology and those of the prior art, which had been achieved through the use of different waterproof materials on different surfaces of the foam substrate.

Case analysis

Under the Patent Law, utility models protect only the proposed improved technical solution to the form or structure of a product. The structure of a product refers to the arrangement and organization of, and the relationships between, the product’s constituent parts. The structure includes not only what those constituent parts are and their quantity, but also includes the mutual organizational relationships between those parts. Changes in the number of constituent parts, replacement of one or more of the parts and changes in their organizational relationships will alter the structure of the product.

In this case, the composite board in the prior art consisted of three parts, an insulating layer, a protective layer and a waterproof adhesive layer. The waterproof layer made of a waterproof material covered the six surfaces of the insulating layer, therefore the six surfaces have an equal relationship.

By contrast, the patented technology was a composite board whose upper surface of the foam substrate was covered with a layer of a waterproof adhesive material while other surfaces were covered by a polymer cement-based waterproof adhesive materials. The patented technology thus essentially had four component parts: The foam substrate, the hard panel, the first waterproof layer composed of the first waterproof adhesive material and the second waterproof layer composed of the second waterproof adhesive material, therefore the six surfaces of the foam substrate no longer shared an equal relationship.

Which is to say, by using different waterproof materials for different surfaces of the foam substrate, the patented technology was made to be distinct from products of prior art, both in terms of the number of parts constituting the patented technology and the organizational relationship among the constituent parts. This distinction is not simply a replacement of materials; rather, it is a tangible impact on the structure of the product after replacing certain materials.

Replacing a certain material of the multiple constituent parts of the product enables each material to play its proper role, so they can each exhibit their respective advantages in actual application of a product and contribute to a beneficial technical effect.

The replacement of materials therefore may not be taken for granted when assessing a utility model’s inventiveness. Deep consideration must also be given to whether replacing the materials
will lead to a tangible change in the product’s structure and create a beneficial technical effect.

In the claim, if the technology to be protected is only the replacement of all of the materials of one constituent part with another known material, the replacement will not lead to the change of the product’s structure, and the technology will not possess inventiveness.

If, however, the technology to be protected is a replacement of some material of one constituent part with another known material and the constituent part becomes two constituent parts, or if fully replacing multiple constituent parts made of different materials with another known material and changing the multiple constituent parts into one, it’s necessary to consider whether the technology has tangible progress and inventiveness as a result of the replacement of material.

Jiang Fengtao is the managing partner and Yang Cunji is an associate of Hengdu Law Offices