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Xiaoxiang WANG, Tao CHEN
Patent Attorney
Linda Liu & Partners 
 

Introduction

China is a big country for patent application, and the number of patent applications for utility model is the largest among three types of patent applications. In 2016, the total number of patent applications received by SIPO is 3.465 million, with 1.339 million patent applications for invention, accounting for 38.6%; 1.476 million patent applications for utility model, accounting for 42.6%; and 0.65 million patent applications for design patent, accounting for 18.8 % (data from the annual statistical report of SIPO of 2016).

The proportion of utility model cases is much larger than that of invention cases in the patent administrative law enforcement cases each year. For example, in 2014, local IPR offices received 8,220 of patent dispute cases, with 1,239 invention patent cases, accounting for 15.1%; 3,603 utility model patent cases, accounting for 43.8%; and 3,378 design patent cases, accounting for 41.9% (data from the official website of SIPO).

The number of requests for invalidity declaration of utility models received by the Patent Reexamination Board of SIPO (hereinafter referred to as “the Board”) is also the largest. In 2016, the number of requests filed for invalidating utility model patents is 1,831, and the number of requests for invalidating invention patents is 916. In addition, the number of requests for invalidating design patents is 1,222.

All of the above statistics show that the utility model patent plays a very important role in the three types of patents in China. Then, in practice, how is the stability of utility model patents which do not go through rigorous substantive examination? Which factors will affect the stability of a utility model patent? For this purpose, the author studied 148 invalidation decisions for utility model patents in the electricity field, which were published on the official website of the Board  with decision dates between January and August of 2017. Statistical analysis was performed on these cases to understand and analyze issues related to the stability of the utility model patents in the field of electricity.
 
I. Data statistics

Among the above-mentioned 148 invalidation cases for utility models in the field of electricity, 80 were completely invalidated, accounting for 54%; 25 were partially invalidated, accounting for 17%; and 43 were maintained valid, accounting for 29%. Among the 43 cases, one was maintained valid because the publication date of the evidence could not be determined, and another one was maintained valid because the petitioner made a mistake in submitting a key evidence.

The author has statistically analyzed 200 Invalidation Decisions on utility model patents (regardless of technical fields) issued by the Board with the decision dates between August 12 and October 31, 2016. Of these decisions, 101 were complete invalidation, accounting for 50.5%; 27 were partial invalidation, accounting for 13.5%; and 72 had validity maintained, accounting for 36%.

In addition, 2,966 out of 5,832 invalidation cases for utility model patents with decision dates up to June 2012 were complete invalidation, accounting for 50.8%; 855 were partial invalidation, accounting for 14.7%; and 2,011 had validity maintained, accounting for 34.5%.

The statistical data of the above three different periods differ not too much, which illustrates the current overall situation of the invalidation for utility model patents to some extent. That is, for utility model patents that were requested for invalidation, the proportion of those being invalidated either completely or partially is about 65% to 70%, and the proportion of those maintained valid is about 30% to 35%.
 
II. Factors Affecting the Stability of Utility Model Patents

From the above statistical data, the proportion of the utility model patents being maintained valid is not high. So what are the factors that affect the stability of utility model patents?

First of all, drafting quality is an important factor affecting the stability of utility model patents. In the above-mentioned utility model invalidation cases, there are some utility model patents with very broad claims that obviously cover the existing technology. In that case, the risk of infringement is increased for involving enterprises; correspondingly the possibility of making a request for invalidating the patent is increased, and the patent is more likely to be invalidated.

Next, it is also important for a patentee to handle the invalidation case actively and in a professional way.

In the above-mentioned 148 cases of invalidation, 146 cases had oral proceedings. The two cases without oral proceedings were not normal. In one case, the Board granted the request of using written examination instead of an oral one because the patentee did not submit any statements or opinions except for acknowledging the authenticity of the evidences submitted by the petitioner. In the other case, the patentee amended the claims, and the petitioner withdrew the invalidation request before the oral proceedings.

In the 146 cases that had oral proceedings, 104 cases were with patentee present, and the other 42 cases with patentee absent. Among the 104 cases in which the patentee attended the oral proceedings, 38 cases were maintained valid, 22 cases were partially invalidated, and 44 cases were totally invalidated. Meanwhile, in the 42 cases in which the patentee is absent from the oral proceedings, 5 cases were maintained valid, 2 cases were partially invalidated, and 35 cases were totally invalidated. Apparently, the proportion of patents maintained valid or partially valid in the cases where the patentee attended the oral proceedings and actively responded is far greater than that in the cases where the patentee did not attend the oral proceedings.

The following two cases intuitively show how big the influence is to the invalidation result when a patentee actively responds or otherwise.

Case 1: In the invalidation case with a decision No. 31988, the utility model patent relates to the technical field of biochemical analysis equipment, and more particularly to a differential scanning calorimeter based on USB communication. The petitioner denies the inventiveness of claim 1 by using the combination of Evidence 1 and Evidence 2. Evidence 1 discloses a differential scanning calorimeter that is in the same technical field as that of the present patent, but Evidence 2 discloses a 2.4G electronic tag issuing device with USB interface which pertains to a technical field totally different from that of the present patent. Under such situations, the patentee can argue that Evidence 2 should not be considered in assessing the inventiveness since the technical field is different. However, the patentee neither made an observation nor attended the oral proceedings, with no comments from the beginning to the end. Finally, the Board issued a decision of complete invalidation based on the ground of no inventive step over the combination of Evidences 1-2 and common technical means in the art.

Case 2: In the invalidation case with a decision No. 33061, the utility model patent relates to a photovoltaic module cleaning device based on a wireless charging technology. The petitioner asserted that claim 1 has no inventive step over the combination of Reference 1 and the common knowledge, as well as Reference 2. In this case, References 1 and 2 are quite similar to the present patent. The patentee actively attended the oral proceedings and presented his own opinions. He asserted that, the application of wireless charging technology to the cleaning device for photovoltaic power generation to solve the problems of limited mobile range and work time susceptible to the weather conditions, does not belong to common knowledge in the field; moreover, Reference 2 is not in the same technical field as the present patent and thus cannot be used to assess the inventiveness of the present utility model patent. Finally, the Board was persuaded to maintain the validity of the patent right.

Thirdly, the criteria of assessing the inventiveness of the utility model will exert a great influence on the stability of the utility model patents.

In the above 25 cases which were partially invalidated, 12 cases maintained the validity of their patents based on revised claims, and 13 cases had only some of the claims invalidated. In the 13 cases of partial invalidation and 80 cases of complete invalidation, a distribution of the invalidation grounds used by the Board (only for claim 1) is as follows: inventiveness (75, accounting for 80.6%), novelty (16 cases, accounting for 17.2%), and insufficient disclosure (2, accounting for 2.2%). Other grounds such as unclear protection scope, lacking support by the description, lacking necessary technical features and ineligible objects of protection did not appear.

There is no doubt that inventiveness is the most widely used invalidation ground for utility model patents, followed by novelty. Other reasons such as indefiniteness or lacking of support by the description are also often used by the petitioners, but were seldom accepted and used by the Patent Reexamination Board.

This is because, on the one hand, if novelty or inventiveness can be used as an invalidation ground, there is no need to analyze the other reasons. On the other hand, claim interpretation is heavily involved in the invalidation procedure. Features that appear unclear often can be explained in light of the description. Therefore, it is not easy to make the grounds such as indefiniteness or not-supported stand. In addition, examiners already carried out a rigorous examination on the eligibility of subject matter for a utility model application during the preliminary examination stage, and would not grant patent right for an application that has a technical solution not protectable by a utility model patent. Therefore, the invalidation ground of non-patentable subject matter hardly appears in an issued invalidation decision.

From the above data, it is clear that the assessment criteria for inventiveness of an utility model patent is an important factor that greatly influences the stability of such patent, since inventiveness is the most used invalidation ground. The following sections will elaborate on this factor.
 
III. Criteria of determining Inventiveness of the Utility Model

1. Relevant laws and regulations

It is prescribed in Article 22.3 of the Chinese Patent Law that “Inventiveness means that, as compared with the prior art, the invention has prominent substantive features and represents a notable progress, and that the utility model has substantive features and represents progresses”. Apparently, the requirement of inventiveness for a utility model is lower than that for an invention. However, it is difficult to apply the above provision in the practice because of its ambiguity.

Guidelines for Patent Examination specifically prescribes the difference in requirement of inventiveness for a utility model and for an invention. It is prescribed in Chapter 6 of Part IV of the Guidelines for Patent Examination as below:

“The difference in requirement of inventiveness for a utility model and for an invention is mainly indicated by whether there exists a technical teaching in the prior art. In determining whether there exists a technical teaching in the prior art, a utility model differs from an invention in the following two aspects:

(1) Field of prior art references

For an invention, the examiner shall consider not only the technical field to which the invention pertains, but also the proximate or relevant technical fields, and those other technical fields in which the problem to be solved by the invention would prompt a person skilled in the art to look for technical means.

For a utility model, the examiner will normally focus on the technical field to which the utility model pertains. Where there is a clear technical teaching, for example, where there is an explicit description in the prior art, to prompt a person skilled in the art to look for technical means in a proximate or relevant technical field, the proximate or relevant technical field may be considered.

(2) Number of the prior art references

For an invention application, one, two or more prior art references may be cited to assess its inventiveness.

For a utility model application, normally one or two prior art references may be cited to assess its inventiveness. Where the utility model is made just by juxtaposing some prior art means, the examiner may, according to the circumstance of the case, cite more than two prior art references to assess its inventiveness.”

Therefore, Guidelines for Patent Examination explicitly prescribes the differences in requirement of inventiveness for a utility model and for an invention in the following two aspects: the field of prior art references and the number of the prior art references.
 
2. Relevant cases

Before discussing the Board’s inventiveness determining criteria for utility model patents, first let us have a look at an administrative verdict No.19 (2011) for intellectual property administrative cases, and learn about the opinions given by the Supreme People’s Court on determining the inventiveness of a utility model patent. A brief introduction of the case is as follows:

The claim 1 of the utility model patent No. 97216613.0 is as below:

“A gripping-force measurer, comprising an outer gripping handle, an inner gripping handle arranged in the outer gripping handle, a force measuring sensor connected with the inner gripping handle and a detection display device arranged in a housing, which is characterized in that the force measuring sensor is an elastic body beam having a plurality of dummy clubs, and the force measuring sensor is connected with the inner gripping handle through a gripping-distance regulating device.”

The Board issued an Invalidation Decision No.12613. Evidence 7 discloses a physical measuring device. Evidence 2 discloses a portable digital display electronic scale. The distinguishing feature of claim 1 and Evidence 7 is: (1) the force measuring sensor having an elastic body beam having a plurality of dummy clubs; (2) the detection display device is arranged in the housing. The Board alleged that both the above distinguishing features (1) and (2) are disclosed by Evidence 2; moreover, Evidence 2 pertains to the same technical field of force measuring with the present patent and Evidence 7, so claim 1 does not involve an inventive step over the combination of Evidence 7 and Evidence 2. Thus, the patent right in this case was declared to be totally invalid.

The patentee was dissatisfied and filed an administration lawsuit. The lower court upheld the decision of the Board in the first trial. The patentee appealed. The higher court held that the present patent seeks to protect a gripping-force measurer, while Evidence 2 discloses a portable digital display electronic scale which is a gravity-measuring device; moreover, the two have different purposes and sensor force-receiving directions, thus they pertain to difference technical fields. A person skilled in the art cannot readily conceive of applying the sensor of another technical field to the present field. Accordingly, the court revoked the first trial judgment at the second trial.

The Patent Reexamination Board was dissatisfied with the above judgment and applied for a retrial with the Supreme People’s Court.

The Supreme People's Court held that:

The involving patent is a utility model patent entitled “Gripping-force Measurer”. To assess whether it has inventiveness, the technical field to which the gripping-force measure pertains and the relevant and proximate technical field should be considered at first. Determination of the technical field shall be subject to the content defined in the claims; generally, it is determined in conjunction with the subject matter of the patent and the function and application of the technical solution to be achieved. Its lowest position in the international patent classification table serves as a reference for determining the technical field to which it pertains. The proximate technical field generally refers to a field to which the function and the specific application of the product of the utility model patent are proximate, and the relevant technical field generally refers to a functional field to which the distinguishing technical feature of the utility model patent and the most related prior art is applied. The technical function of the involving case pertains to a force-measuring device and the specific application is to measure the grip force of the hand.

In assessing the inventiveness of a utility model, the examiner will normally focus on a prior art of the technical field to which the utility model pertains. However, when there is a clear technical teaching in a prior art that a person skilled in the art is prompted to look for related technical means in a proximate or relevant technical field, the prior art of the proximate or relevant technical field may also be considered.

In order to assess the inventiveness of the force measuring sensor, the Patent Reexamination Board considered Evidence 2. Although both the gripping-force measurer and the electronic scale are force measuring devices, they have different specific applications and do not pertain to the same technical field. On the other hand, they have the same function, proximate applications, and the principles of force measuring of the two force measuring sensors are basically the same. Thus a hand-held digital display electronic scale can be regarded as in a technical field proximate to that of the involving patent. However, since the prior art does not give a clear technical teaching, it was wrongful application of the law that the Board considered the force measuring sensor of the portable electronic scale when assessing the inventiveness of the patent. Accordingly, the Supreme People’s Court rejected the request for retrial from the Patent Reexamination Board.

3. Fields of Prior Arts

(1) Definition of Technical Field

Regarding technical field, the Guidelines for Patent Examination prescribes in Section 2.2.2 of Chapter 2, Part IIthat “the technical field of an invention or utility model shall be the specific technical field to which the claimed technical solution of the invention or utility model pertains or is directly applied, rather than a generic or adjacent technical field or the invention or utility model per se. The specific technical field usually relates to the lowest position in which the invention or utility model may be classified in the International Patent Classification system”. The same section of the Guidelines provides an example: for an invention relating to an excavator cantilever, the inventive feature is the change from rectangular cross-section as used in the background art to elliptic cross-section for the cantilever. Thus, the technical field is excavator, more particularly, excavator cantilever, not building machine which is generic.

It is acknowledged both in the regulations of the Guidelines for Patent Examination and in the opinions of the Supreme People’s Court that the lowest position of a patent classified in the International Patent Classification system may be referred to when the technical field of the patent is determined. However, it is not explicitly regulated how much the power of reference could be.

In the foresaid 148 invalidation cases, 75 are cases where a patent right is invalidated or partially invalidated on the ground of inventiveness. In these cases, the distribution of the combination of evidences with regard to independent claim 1 is as follows: 38 cases include 1 evidence in combination with the common knowledge, covering 50.7% of the total; 13 cases include 2 evidences in combination with the common knowledge, covering 17.3%; 24 cases include 2 evidences in combination with each other, covering 32%; and 2 cases include 3 evidences in combination with the common knowledge, covering 2.6%. In the 2 cases, the Reexamination Board reviewed claim 1 using several combinations of evidences. In total, the Reexamination Board used 116 evidences, among which 54 evidences have the same classification codes (including the main class codes and secondary class codes) as those of the utility model patents, covering 46.6%, which is less than half of the total.

It can be seen that, the lowest position in the International Patent Classification system that a patent can be classified to indeed serves as a reference for determining the technical field. If the classification codes of a patent are the same as those of an evidence, it can be determined that the patent and the evidence pertain to the same technical field. On the other hand, if the patent and the evidence have different classification codes, the subject matter, the technical function achieved by the technical solution, and the application of the patent should be considered when determining whether or not the patent and the evidence pertain to the same technical field.

In the above case of “grip dynamometer”, the difference between the opinions of the Board and the Supreme People’s Court is as follows: the Board thinks that the grip dynamometer and the portable digital play electronic scale are both used for measuring forces, using essentially the same force measuring principles, and thus both pertain to the technical field of force measuring device; the Supreme People’s Court holds that although the grip dynamometer and the portable digital play electronic scale are both used for measuring forces, they are used for different applications, and thus do not pertain to the same technical field. The opinions of the Board and the Court both make sense. We cannot just say that the Board had a wrong opinion. The fundamental difference lies in different criteria for assessing the inventiveness of a utility model patent.

The strict restriction of technical field when judging the inventiveness of a utility model patent as embodied by the above “grip dynamometer” case greatly lowers the bar for the inventiveness of a utility model patent and exhibits a significant difference from the requirements of inventiveness for an invention patent. Would the Board strictly follow such criteria or adopt an alternative measure in assessing the inventiveness of utility model patents in recent invalidation procedures? Let us see a few examples.

(2) Attitude of the Patent Reexamination Board toward Technical Field and Associated Cases

The Guidelines for Patent Examination has clearly prescribed the difference between the criteria for inventiveness of inventions and utility models. Therefore, in the invalidation cases in the field of electricity collected herein, most of the evidences provided by the petitioners pertain to substantially the same technical field as that of the patent, and there was no dispute. Of course, there were still a few petitioners using evidences in a different technical field, which caused disputes. In some cases, the Board mentioned the technical field of the prior arts, and in some other cases, the Board even used evidences in a different technical field to assess the inventiveness of utility model patents. From these cases, the attitude and practice of the Board may be summarized into several types as shown below.

①Referring to the opinions of the Supreme People’s Court, determining the technical field according to the subject matter, the technical functions achieved by the technical solution, and the application of a utility model patent, and restricting the technical field of the prior art as the same as that of the patent when assessing the inventiveness of the patent. Moreover, when the prior art has provided an explicit technical suggestion, the prior art in a similar or related technical field may also be considered.

A typical example is the foresaid Case 2. The patent and Reference 2 both have cleaning function but different applications. Thus, they pertain to different but adjacent technical fields. Further, the Board points out that there is no technical suggestion of applying the cleaning apparatus in Reference 2 to clean the photovoltaic apparatus.

②Using the prior art that is in the same technical field as the utility model patent, while having different understandings as to the same technical field, from the court’s interpretation in the “grip dynamometer” case. Typical examples include:

Case 3: in an invalidation case with a decision No. 33159, the involved patent according to  claim 1 claims a switch panel. Reference 1 discloses a socket panel. The patentee set forth that Reference 1 pertains to a different technical field from the present patent. Regarding this, the Board gave the following opinions: although Reference 1 relates to a socket panel and the present patent relates to a switch panel, one skilled in the art knows that both panels are common electrical panels used for architecture. Although one is for supplying power for electrical appliances and the other is used as a switch for the same, they have similar structures, sizes and installing positions. Moreover, due to the structure, they both have the deformation problem caused by installation of the base. That is, Reference 1 pertains to the same technical field as that of the patent.

Case 4: in an invalidation case with a decision No. 31773, the involved patent relates to a fruit and vegetable juice extractor with temperature display function. Evidence 8 discloses a mixer. The Board held that, Evidence 8 pertains to the same technical field as the patent because one skilled in the art can easily think of using the mixer of Evidence 8 to process fruits and vegetables, i.e. as a fruit and vegetable juice extractor. This is merely a matter of choice for the object to be processed and does not require creative efforts.

In Case 3, the Board comes to the conclusion that the socket panel and the switch panel pertain to the same technical field after detailed analysis. In Case 4, the Board directly determines that the fruit and vegetable juice extractor and the mixer pertain to the same technical field.

③Using a prior art in the same or adjacent technical field to assess the inventiveness of a utility model patent, and does not differentiate between the same and adjacent technical fields. Typical examples include:

Case 5: in an invalidation case with a decision No. 32291, the involved patent relates to an identifiable barbecue skewer. Reference 1 relates to tableware with RF identification label, for example, a pair of chopsticks. The Board asserted that, although there is a slight difference that the barbecue skewer is a cooking tool while the tableware are for dining, both are frequently used in everyday life and are often used simultaneously at meals. Thus they pertain to adjacent technical fields. One skilled in the art can easily conceive the idea of applying the RF identification label to a cooking tool. Therefore, Reference 1 has the technical teaching on using RF identification technology in barbecue skewers.

Case 6: in an invalidation case with a decision No. 31717, the involved patent relates to a dynamic random access memory body. Evidence 1 discloses an electrical connecting board. Evidence 13 discloses a memory module and its cover. The Board asserts that, Evidence 1, Evidence 13 and the present patent pertain to the same or similar technical fields. The function to be realized and the problem to be solved by Evidence 13 are the same as those of the present patent. One skilled in the art can easily conceive the idea of combining Evidence 13 with Evidence 1 to reach the technical solution for solving the existing technical problem.

In Case 5, the Board comes to the conclusion that the barbeque skewer and the tableware such as chopsticks pertain to adjacent technical fields after detailed analysis. In Case 6, the Board directly determines that Evidence 1 and Evidence 13 pertain to the same or similar technical fields as the present patent.

④No commenting on whether or not the technical fields are the same, but using a prior art with the same function and different application to evaluate the inventiveness of a utility model patent which has a particular application. Typical examples include:

Case 7: in an invalidation case with a decision No. 31181, the involved patent according to claim 1 claims a camera battery with USB interface. Reference 1 relates to a portable battery pack with illumination function. The difference between the two patents lies in that the battery with USB interface for supplying power in claim 1 is a camera battery while Reference 1 uses a portable battery pack. The two batteries are used in different situations. The Board asserts that based on the disclosure of Reference 1, one skilled in the art can easily conceive the idea of using the structure disclosed by Reference 1 in various power sources for supplying power through a USB interface. That is, one skilled in the art can easily conceive the idea of providing the above structure in a camera battery to supply power.

Case 8: in an invalidation case with a decision No. 31621, the involved patent relates to an online circuit board automated inspection and shunting determination device. Evidence 1 discloses a transmission detection device in the semiconductor industry or panel industry. The Board asserts that circuit boards, panels, and semiconductor are common components in the field of electronic industry. All require precise inspection during manufacturing. One skilled in the art can easily conceive the idea of using the detection device disclosed by Evidence 1 for the detection of a circuit board, and making adaptive improvement to the device of Evidence 1 according to the feature to be detected.

Case 9: in an invalidation case with a decision No. 31179, the involved patent relates to a calibration scale system for accurately positioning ring cooling ash unloading trolley. Evidence 1 discloses a precise positioning system of a graduated scale, but does not mention the applications for the precise positioning system. Regarding the difference between the two patents, the Board asserts that Evidence 1 discloses that the precise positioning system of a graduated scale may be used for positioning a mobile vehicle running on a track with regard to the track. Based on the disclosure of Reference 1, one skilled in the art can easily conceive the idea of using the positioning system of the mobile vehicle for positioning the ring cooling ash unloading trolley.

⑤Without considering the technical field, evaluating the inventiveness of a utility model patent using a combination of a prior art in a different technical field and the closest prior art. A typical example is the foresaid Case 1.

Therefore, in the current invalidation procedures, different examiners in the Board do not have a unified practice regarding technical field in assessing the inventiveness of utility model patents.
 
4. Number of Prior Art References

The Guidelines for Patent Examination limits the number of prior art references cited for assessing the inventiveness of a utility model, i.e., generally no more than 2. However, several prior arts may be cited for a utility model that is a “mere aggregation of features”.

In above 75 cases where a patent is invalidated or partly invalidated on the grounds of inventiveness, the distribution of evidence combination against independent claim 1 is as follows: 38 cases include 1 evidence in combination with common knowledge, covering 50.7%; 13 cases include 2 evidences in combination with common knowledge, covering 17.3%; 24 cases include 2 evidences in combination with each other, covering 32%; and 2 cases include 3 evidences in combination with common knowledge, covering 2.6%. It can be seen that the Patent Reexamination Board did consider the number of references and tried to avoid citing 3 or more references to evaluate the inventiveness. However, the use of multiple prior art references in combination still exists.

Case 10: in an invalidation case with a decision No. 32207, the Board asserts that Reference 2, Reference 4, Reference 6 and the common technical means respectively disclose a corresponding part of the imaging module defined by claim 1. Moreover, a technical effect achieved by combining the above known parts is merely an aggregation of functionalities, with no mutual effects between the parts. Therefore, claim 1 lacks inventiveness.

To sum up, there is almost no dispute regarding the number of prior art references cited.
 
5. Other Factors Affecting Inventiveness of Utility Model

(1) Common knowledge

Referring to the foresaid distribution of evidence combination, among the 75 cases where a patent is invalidated or partly invalidated on the ground of inventiveness, 70.7% of the cases cite the common knowledge. This makes two points: first, the Board may use the common knowledge to avoid citing multiple references; second, how to determine common knowledge is also a factor affecting the stability of a utility model patent.

Common knowledge has always been a heated and difficult area in patent examination and invalidation. In neither procedures, the Guidelines for Patent Examination has required for any evidences to be submitted in support of the allegation of common knowledge. For example, in Section 4.3.3 of Chapter 8, Part IV, the Guidelines provides that “the party alleging that certain technical means is common knowledge in the art shall bear the burden of proof for its allegation. If the party cannot provide evidence or cannot adequately prove that the technical means is common knowledge in the art, and if the allegation is not acknowledged by the opposite party, the panel shall not support the allegation”.

In the invalidation procedures, it is workable to use sufficient reasoning to allege that some feature is common knowledge in the art. Generally, in the cases where the distinguishing technical features are held as common knowledge, the Patent Reexamination Board has provided rather sufficient and convincing reasons. However, because no evidences were cited, uncertainty is inevitable in the determination of common knowledge.

Case 11: in an invalidation case with a decision No. 32167, the present patent relates to a remote delivery payment device for fast foods. Evidence 1 discloses a portable payment equipment for fast foods. The present patent is different from Evidence 1 in that “the portable recharge unit comprises a third-party payment platform and a mobile terminal, the mobile terminal being provided therein an information transmission module through which the mobile terminal signal connects to the third-party payment platform, the third-party payment platform being signal connected with a data processing module through a network connection module; the data processing module is signal connected with a storage service module, and the data processing module is signal connected to the message receiving and transmitting module via the network connection module and electrically connects the host controller”. That is, the present patent introduces a commonly known mobile payment technology on the basis of Reference 1. The Board held that one skilled in the art can easily conceive the idea of using a mobile terminal to recharge a recharge card issued by a merchant in the fast food industry via a third-party payment platform, without making creative efforts.

Case 12: in an invalidation case with a decision No. 32949, the present patent relates to a simple base station constructed using urban street light poles. Attachment 1 discloses a steel pipe pole for communication base station. Attachment 2 discloses a base station lamp post tower. Neither of Attachment 1 and Attachment 2 discloses the feature that “the power input end of the mobile communication base station is connected to mains power supply circuit in fixed facilities”. The Reexamination Board held that the above distinguishing technical feature enables the present patent to be powered in the existing fixed facilities, resulting in convenient construction and lower costs. The petitioner did not provide evidence to prove or provide sufficient reasons to allege that the above distinguishing technical feature is a conventional technical means in this field.

As shown by the above cases, common knowledge is an uncertain factor for the stability of utility model patent, as well as for the stability of invention patents. In the foreseeable future, such uncertainty will remain. For a petitioner for invalidation, even if evidences such as text books, technical dictionaries or technical manuals are not available to prove common knowledge in the art, multiple pieces of patent literature can be provided so as to positively influence the evaluation by the collegial panel in the Board.

(2) Other factors

The Guidelines for Patent Examination prescribes in Section 4 of Chapter 6, Part IVthat “for relevant aspects of examination of inventiveness for a utility model patent, including the concept of inventiveness, examination principles for inventiveness, the examination criteria, and the assessment of inventiveness for various types of inventions-creations, Chapter 4 of Part IIshall apply”. Pursuant to this provision, the assessment of inventiveness for utility model and invention patents shall not be differed in the aspects apart from the technical field and the number of prior art references cited.

As for the difference between the criteria for assessing inventiveness for invention patents and utility model patents, there are a few diverse theoretical views. One view is that, in the “three-step method” of assessing inventiveness, the third step has subjective factors such as the technical level of a person skilled in the art and the motivation for improving the closest prior art. Thus, by setting different criterias in the third step, one can adjust the bar for inventiveness. Another view is that, the concept of those skilled in the art should be different for two different types of patents. When determining technical teachings related to evaluation of inventiveness, requirements for one skilled in the art should be lower in the situation of utility models than in that of invention patents.

There indeed exist many factors affecting the criteria of inventiveness in the third step. For example, The Guidelines for Patent Examination prescribes in Section 3.2.1.1 (3) of Chapter Four, Part IIthat “under the following circumstances, it is usually thought there exists such a technical motivation in the prior art. … (iii) the said distinguishing technical feature is a relevant technical means disclosed in another reference document, the function of which in that reference document is the same as the function of the distinguishing technical feature in the claimed invention in solving the redetermined technical problem”. There are three methods for determining the function of the distinguishing technical feature in the prior art: (1) the reference document explicitly describes a function corresponding to the distinguishing technical feature; (2) where the reference document does not contain explicit description, the function of the distinguishing technical feature can be expected by one skilled in the art according to the objective of invention of the reference document; (3) where the reference document does not contain a description, one skilled in the art can determine an objective function of the distinguishing technical feature. When assessing the inventiveness of a utility model patent, if we only use the above method (1) to determine the function of the distinguishing technical feature in the reference document, then the criteria of inventiveness for utility model patents would certainly be lowered and significantly distinguished from that of the inventiveness for invention patents. It should be noted that the above theoretical analysis is not embodied in practice.

In practice, apart from the differences in the foresaid aspects of technical field and quantity of the cited prior art references, there is no apparent difference between the assessment of inventiveness for utility model and invention patents.
 
Postscript

Although the Guidelines for Patent Examination prescribes the difference regarding criteria of inventiveness between utility model and invention patents, in practice it is difficult to accurately handle cases based on the two criteria. As a result, the applicant can hardly have a correct understanding of the inventiveness for utility models, and it increases the difficulty for the petitioner and patentee to predict the result for an invalidation case. This article hopes to help readers know more about the examination criteria used by the Patent Reexamination Board for utility model patents, through analyzing the factors affecting the stability of utility model patent right, especially the inventiveness determination criteria, on a practical level.
 

（2017）