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A Study on a Utility Model Case in Electrical Field
Lei ZHOU
Chinese Patent Attorney
Linda Liu & Partners
I. Special Problems faced by Technical Solutions in Electrical Field in the Application for Utility Model in China
Utility model is one of the three patent types in China and favored by applicants due to its fast granting, lower requirement for inventive step, lower application cost and basically the same post-grant protection force as invention.
For the objects protected by utility models, it has been prescribed in the third subparagraph of Article 2 of the Chinese Patent Law that: utility model means any new technical solution relating to the shape, structure, or their combination, of a product, which is fit for practical use. In brief, utility models protect the improvements of “hardware” rather than “software”. However, some products in the electrical field may not be the “hardware” in a narrow sense as they may also contain, apart from some mechanical or physical parts, logical units which operate based on electric signals, such as “controllers” or “processors”, which control other units or process the signals provided by other units by implementing some logical functions. So, referring to the above provision of the Chinese Patent Law, it is known that some problems might arise when applying a utility model for the above kind of products. Whether such products are protected by utility models, how to acquire the protection of utility models and what problems might arise in the process of enforcing the granted rights are topics that deserve a thorough study.
In the following part, the writer hopes to share some practical experience and reflections by a case analysis.
II. Case Brief
A foreign client entrusted Linda Liu & Partners to apply for a utility model in China for a product of “mower”. The solution of this utility model can be described as: presetting multiple rotational speed values, detecting the load borne by the rotary blades of the mower, and based on the detected load, controlling the rotation speed of the rotary blades by selecting one of the preset multiple rotational speed values.
This solution is a classic example of the technical solutions mentioned above, and the real form of the product usually is: adding to a conventional mower a sensor which is capable of detecting the load of the rotary blades and a controller which performs processing and controlling based on the detected load. The Claims written by the client are basically consistent with the real form of the product, which is, a mower comprising rotary blades, an electric motor, a load sensor, a controller and other units. In the Claims, the controller is defined by its function, i.e., for setting multiple rotational speed values, switching between the multiple rotational speed values based on the detected load, and then controlling the rotation speed of the electric motor based on the determined rotational speed value, and the Description further specifies the controller by describing the controlling procedure.
The writer was concerned about the Claims written by the client because according to the examination standards for utility models in China, defining the controller by functions such as “setting, switching, controlling the rotation speed” might be regarded as an “improvement of methods”, so that the application might be rejected for the reason that the product is not protected by utility models.
The writer suggested amending the application documents from two aspects while to the largest extent keeping the scope of protection claimed in the original application documents unchanged as requested by the client.
1. Split the functions of the “controller” into three basic functional units, namely, “setting the rotational speed values”, “switching between the rotational speed values” and “controlling the rotation speed”, which are defined in the Claims as “a setting module” for presetting a plurality of rotational speed values; “a switching module” for switching between the multiple rotational speed values based on the detected load and transferring the related description of “controlling the rotation speed” to the electrical motor, i.e., the electrical motor changes the rotation speed according to the results output from the switching module.
2. Add to the Description the disclosure of how to implement the functions of the respective units in the Claims through hardware. In particular, for the setting module and the switching module, the method of affecting the hardware circuit at a “register” level of these two modules and the method of affecting these two modules based on ASIC (application-specific integrated circuit), the programmable logical units or the general processor combined with logic instructions were added respectively.
The Description thus drafted could, on one hand, support the scope of protection claimed in the Claims, and on the other hand, in the course of patent rights enforcement, the disclosure in the Description could also provide various kinds of implementation modes (especially a method of effecting an ASIC which is similar to the actual product, and a method of effecting the invention based on the programmable logical units or the general processor combined with logic instructions) to help to determine the scope of protection of the Claims, if the “setting module” and “switching module” in the Claims were regarded as being defined by their functions.
With such amendment, the utility model was granted the patent right.
III. Reflections on This Case
The writer conducted a search within the range of the granted utility models by using the keywords of “processor/processing module”, “controller/controlling module” and the like, and found that the Claims of some of the granted utility models contained the units like “processor/processing module” and “controller/controlling module”, but this kind of units could only achieve a single function or an existing function not multiple functions combined together, which was consistent with writer’s practical experience. That is, currently in China, there is a high risk of rejection if there exist units such as a controller or processor in the Claims of a utility model which are defined by using “relatively complicated” logics derived from the combination of functions, because the examiner might think that the solution is an improvement of method which is excluded from the scope of protection of utility models.
Generally speaking, there are two kinds of solutions when you receive this kind of Office Action.
One of the solutions is to clarify that the logic followed by the controller or processor belongs to the prior art without any improvement of method; however, this kind of solution usually needs the evidence to prove that it belongs to the prior art, and according to Prosecution History Estoppel, this clarification might bring adverse impacts to the patentee in the future patent right enforcement, for example, it might affect the evaluation of inventive step.
The other solution is to clarify that the controller/processer is affected by hardware. This solution usually needs the recordation of the examples of controller/processer affected by hardware in the Description, for example, the method of affecting a hardware circuit at a “Register” level and the method of effecting the invention based on ASIC, the programmable logical units or the universal processor combined with logic instructions. However, for the latter, namely the implementation mode based on programmable logical units or the universal processor combined with logic instructions, there is still possibility that it might be determined as an “improvement of method” and thus excluded from the scope of the protection of the Claims, if the logic for executing the “logic instructions” is complicated. In fact, the real product is usually implemented by hardware plus logic instructions, and it would be unfavorable for patentee in the course of right enforcement if the scope of protection in the Claims fails to cover the implementation mode of hardware plus logic instructions.
Taking the said risks and potential problems into consideration, splitting the logic functions and writing the Claims in the form of multiple modules might be an appropriate way for such kind of solutions represented by the above mentioned case in the application of utility models in China.
There still exit uncertainties in the right enforcement after this kind of utility models are granted. For example, whether the “setting module” and “switching module” apply to the case of exception to the functional definition and are not interpreted as the functional definition, whether the scope of the “setting module” and “switching module” could be explained as covering all the modes that realize their functions based on hardware (including the programmable logical units or the universal processor) and whether it could cover the modes which realize the functions of the “setting module” and “switching module” and other modules by integrating these functions in the same ASIC, the same programmable logical unit or the same universal processor. And all these issues need the clarification by more judicial interpretations and precedents.
It is our sincere hope that you could find our practice and reflection informative and helpful.
