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Linda Liu & Partners

 
Abstract: A “utility model” can be granted for any new technical solution relating to the shape, the structure, or their combination, of a product, which is suitable for practical use. However, in practice, the claims of a utility model may also include material features or method features – i.e. features relating to materials and methods. This article discusses a number of cases which illustrate the effects of such features on utility models during examination and invalidation procedures, and show how they influence the assessment of infringements in order to educate the reader on applying for, invalidating, and assessing the infringement of utility models.
 
Key Words: Utility Model, Material Feature, Method Feature, Invalidation, Infringement.
 
I. Introduction
 
The utility model system has been in existence since China established its patent system. The revision of the Patent Law in 2008 further improved the utility model system, e.g., by changing the “patent search report for utility model” system into the “patent evaluation report for utility model” system and by improving the “two applications for an identical invention-creation” system. Due to the advantages of short examination times, low application fees and easy grant, the use of utility models have developed quickly. According to the official statistics of the State Intellectual Property Office, the number of utility model applications was over 220,000 in 2008, over 310,000 in 2009 and over 400,000 in 2010, and this number keeps increasing yearly. Moreover, the value of damages awarded for infringing utility models also keeps increasing. For example, in the utility model infringement case “Zhengtai Group Co., Ltd. vs. Schneider Electric Low Voltage (Tianjin) Co., Ltd.”, the court of first instance ruled that Schneider should pay compensation of RMB 330 million¹ to Zhengtai, and in the second instance, the two parties reached an out-of-court settlement that gave Zhengtai compensation of RMB 157.5 million². For such reasons, domestic and foreign applicants, especially large companies, have begun to pay more and more attention to utility models.
 
Utility models also have some disadvantages such as legal uncertainty, the short duration of protection, and limitations to permitted subject matter. The problem of what is permitted subject matter of a utility model is encountered frequently. A utility model merely protects an improved technical solution proposed for the shape or structure of a product. However, the claims of the utility model sometimes cannot avoid containing features relating to the material used in the invention (“material features”) or methods used to produce the invention (“method features”). Many domestic and foreign applicants are concerned about how material features or method features influence the utility model examination procedure (preliminary examination/reexamination), the invalidation procedure and infringement decisions. This article starts by reviewing the relevant provisions of the Patent Law and its Implementing Regulations as well as the Guidelines for Patent Examination, and then discusses in detail, with the help of case examples, the influence of material and method features on the examination procedure, the invalidation procedure and the assessment of infringements. The article concludes with some suggestions on how to draft utility models having claims which include material features or method features.
 
II. The Provisions on Utility Models having Material Features or Method Features
 
According to the Patent Law, a “utility model” can be granted for any new technical solution relating to the shape, the structure, or their combination, of a product, which is suitable for practical use. This definition was prescribed in Rule 2.2 of the previous Implementing Regulations of the Patent Law (promulgated in 1984 and revised in 1992, 2001) (hereinafter referred to as R 2.2), and then moved to Article 2.3 of the Patent Law (revised in 2008) (hereinafter referred to as A 2.3), because the subject matter eligible for protection by a utility model was considered to be very important and it was no longer appropriate to define it in a merely subordinate law. In 1989, the former China Patent Office issued Announcement No. 20 which introduced many strict restrictions on the subject matter eligible for protection by a utility model. Now all the restrictions have been removed, except the restriction in A2.3³.
 
The product protected by a utility model shall be an object manufactured by an industrial method, having a definite shape and structure, and occupying a certain space⁴. However, a product has many technical features, which may not only include features of shape and structure but also include material features and method features. Sometimes it is necessary to mention all these types of technical features in order to properly limit a claim for a product. In some situations, it is difficult to define a product by only using features of shape and structure. For example, (1) the claims of a utility model may include the name of a known method to define the shape or structure of a product but exclude the steps or processing conditions of the method; the claims may also include the name of a known material; (2) if a claim includes not only features of shape and structure but also an improvement relating to the method or material per se, this claim does not belong to the subject matter eligible for protection by a utility model⁴. The claims of the utility model having material features or method features may be classified into: (1) the claims in which the material features or method features can be identified as known materials or known methods, and (2) the claims whose material features or method features cannot be identified as known materials or known methods, i.e., claims in which some, or all, of the improvement over the prior art relates to material features or method features. Owing to the legal uncertainty of utility models, “the improvement” had better be understood in a broad sense - i.e. when interpreting the claim, one skilled in the art has reason to believe that these features may constitute technical features which influence the novelty and inventiveness of the claim, regardless of whether they actually belong to this kind of technical feature.
 
During examination of the novelty or inventiveness of a utility model application, all the technical features in the technical solution, including material features and method features, shall be taken into account. The provisions regarding the examination of novelty of patent applications are applicable to the novelty examination of a utility model, while the provisions regarding the examination of inventiveness of a patent application are also applicable to the examination of the inventiveness of a utility model application, except for some differences in determination criteria⁵. Due to the particularity of the subject matter eligible for patent protection, some of the provisions may be applied differently when examining the claims of a utility model application having material features or method features. Such differences will be elaborated on in following paragraphs.
 
In utility model infringement judgments, there have been some disputes over whether material features and method features should be taken into account⁵. According to the previously applied “principle of superfluity establishment”, some material features and method features actually may not be essential technical features and thus need not be considered. However, in the court opinion of the patent infringement case “Dalian Xinyi Building Material Co., Ltd. vs. Dalian Renda New-Type Wall Building Material Factory” ((2005) No.1 Civil Judgment of the No. 3 Tribunal), the Supreme People’s Court had the following view: “Firstly, in view of the requirements on the drafting of the claims, all the technical features written by the patentee into independent claims are essential technical features. They shall not be ignored but shall be used in the comparison of technical features. The court does not approve the indiscriminant use of the so-called principle of superfluity establishment. Secondly, the claims play the role of determining the scope of protection, i.e., they show all the technical features included in the technical solution of the invention or utility model to the public so that the public can clearly know what actions will infringe the patent, thereby providing reasonable protection for the patentee and ensuring the freedom of the public in using the technique. Only by giving full and sufficient respect to all the technical features disclosed by the claims can the general public be prevented from not knowing what to do due to unpredictable changes of the content of the claims, thereby guaranteeing the certainty of the legal right and essentially ensuring the normal operation and value realization of the patent system. The patent concerned only has one claim, i.e., an independent claim, which explicitly discloses a wall layer structure of a cylinder bottom and a cylinder tube. Therefore, the court does not accept Renda’s assertion that the wall layer structure of the cylinder bottom of the patent concerned is not an essential technical feature.”⁶ In fact, through this case, the Supreme People’s Court ended the application of the so-called principle of superfluity establishment to patent infringement judgments.
 
Pursuant to Article 7 of Interpretation of the Supreme People’s Court on Several Issues Concerning Applicable Laws to the Trial of Patent Infringement Disputes that entered into force in 2010, when determining whether an accused infringing technical solution falls within the scope of patent protection, the People’s Court shall examine all the technical features of the claims of the patentee; where the accused infringing technical solution includes technical features identical with, or equivalent to, all the technical features of the claims, the People’s Court shall deem that it falls within the scope of patent protection; where the accused infringing technical solution lacks one or more of all the technical features of the claims or contains one or more technical feature that is not identical with, or equivalent to, all the technical features of the claims, the People’s Court shall deem that it does not fall within the scope of patent protection⁷. This judicial interpretation further specifies that the principle of superfluity establishment is not applicable to patent infringement judgment.
 
Therefore, where the claims of the utility model have material features or method features, such features shall be taken into account in the assessment of infringement.
 
III. The Influence of Material Features or Method Features on Utility Models in the Examination Procedure
 
Once a utility model application passes preliminary examination, it will be granted. Before being granted, a utility model application usually needs preliminary examination only. Some utility model applications may initially be rejected and need to undergo a reexamination procedure, which normally examines the defects mentioned in the Decision of Rejection and other similar defects. Preliminary examination mainly focuses on formality defects and obvious substantive defects. Although many provisions are involved, for a utility model claim having material features or method features, it is often necessary to determine whether it belongs to the group of subject matter eligible for protection by a utility model (A 2.2, previous R 2.2).
 
(I) Material Features or Method Features Are Known Materials or Known Methods
 
When a claim of a utility model includes not only features relating to the shape and structure of a product but also material features or method features which are known materials or known methods, the subject matter of this claim is subject matter eligible for protection by a utility model. For example, a known method such as soldering or riveting may be named to define the connection between different parts, and it is possible to use terms like “composite floor boards”, “plastic cup”, “heart catheter holder made of memory alloy”. Additionally, a composite layer may be regarded as being the structure of the product, and the carburized layer, oxide layer etc. of a product can also belong to the structure of the composite layer⁴.
 
In the reexamination case of utility model application No. 200520061438.7 “Microwave Slow Cooker”, the relevant claims were as follows:
 
“1. A microwave slow cooker, comprising: a cooker body (1) for accommodating food, a cover body (2) fitted with the cooker body, characterized in that the cooker body is a composite layer having an outer layer as a heating layer (1.1) for absorbing microwave, an inner layer as a glass or purple sand or ceramic layer (1.3), and a microwave blocking layer (1.2) between the heating layer and the ceramic layer.”
 
2. The microwave slow cooker according to claim 1, characterized in that the heating layer is a glass or purple sand or ceramic layer containing ferrite.”
 
As mentioned by the Patent Reexamination Board (hereinafter referred to as the Board) in the Notification of Reexamination, the feature “the heating layer is a glass or purple sand or ceramic layer containing ferrite” in claim 2 only relates to the composition of the heating layer and is actually a technical solution proposed for the material per se, so it is not subject matter eligible for protection by a utility model. The petitioner then submitted seven attachments to prove that the material defined in claim 2 is a known material in the prior art. In the Board’s opinion, Attachment 5 (Chinese Patent No. 03117774.3) discloses a method of preparing a composite material by combining ferrite as a main phase with a ceramic medium, and other prior art documents (Chinese Patent No. 89105709.9, 00109462.9) also disclose the preparation method of adding ferrite as a magnetic substance to a raw material such as ceramic or glass or purple sand, so “glass or purple sand or ceramic containing ferrite” in the additional technical feature of claim 2 is a known material in the prior art, i.e., claim 2 is not a technical solution proposed for the material per se and its subject matter is eligible for protection by a utility model⁸.
 
In the above case, “ferrite”, “glass”, “purple sand” and “ceramic” are all known materials, but it is not easy to determine whether their combination is a known material. The applicant only managed to convince the Board that “a glass or purple sand or ceramic layer containing ferrite” is indeed a known material by providing a lot of evidence. If the applicant had made the necessary searches during the drafting of the utility model and mentioned the related art of “a glass or purple sand or ceramic layer containing ferrite” into the description, such unnecessary trouble could have been avoided.
 
The above reexamination decision uses the term “known material”, which may be understood in two ways, i.e., in a narrow sense, where it refers to the name of a known material, and in a broad sense, where it refers to any material that has been disclosed in the prior art. If this term is understood in a broad sense by thinking that any material disclosed in the prior art may be included in the claims of the utility model, this will lead to the conclusion that a product claim including a known material consisting of several known components (e.g., the claim includes the feature “a surface layer of a glass-cloth fire-resistant conveying belt comprises 100 parts by weight of chloroprene rubber, 7 parts by weight of masterbatch, 5 parts by weight of magnesium oxide…⁹”) also comprises subject matter eligible for protection by a utility model. Although the above formula is disclosed in the Applied Formula Manual of Fabricated Rubber Product, it is wrong to consider the subject matter of the above claim as being subject matter eligible for protection by a utility model. Therefore, when drafting the claims of a utility model, applicants are advised to interpret the term “known material” in a narrow way.
 
(II) Material Features or Method Features Are Not Known Materials or Known Methods
 
When a claim of a utility model includes not only features of shape and structure of a product but also material features or method features which are not known materials or known methods, the subject matter of this claim is not eligible for protection by a utility model. If a claim contains not only shape and structure features but also improvements relating to the material or method per se, the subject matter of this claim is not eligible for protection by a utility model.
 
A typical example is a wooden toothpick, claimed as follows:
 
“A wooden toothpick, whose main part is cylindrical and whose end parts are conical, characterized in that the wooden toothpick is processed into a predetermined shape, immersed in medical bactericide for 5 to 20 minutes, and then taken out and aired.”
 
Since the subject matter of this claim contains an improvement relating to the method per se, it is not eligible for protection by a utility model⁴.
 
Here is another example:
 
“A rhombic tablet, comprising: 20% of component A, 40% of component B, and 40% of component C.”
 
Since this claim contains an improvement relating to the material per se, it is not eligible for protection by a utility model⁴.
 
Clearly, the way a claim is drafted has a big influence on the determination of whether or not the subject matter of a claim is eligible for protection by a utility model. If the characterizing portion of a claim only includes material features or method features, this claim will normally be considered to be an improvement relating to the material or method per se and thus does not contain subject matter eligible for protection by a utility model.
 
For example, in the reexamination case for utility model application No. 01267192.4 “Composite Solid Well Cover for Underground Pipeline”, the claim concerned is as follows:
 
“A composite solid well cover for an underground pipeline, comprising a well body (2) and a cover body (1), an inner circumference of the well body matching an outer circumference of the cover body to form an integral part, both the well body (2) and the cover body (1) comprising a base-material outer layer (4) and a steel-bar inner layer (3), characterized in that the base-material outer layer is a base-material outer layer (4) with a uniform and dense structure.
 
In the preliminary examination procedure, the SIPO stated that the feature in the characterizing portion of claim 1 was a component of a substance but not a structural feature and that claim 1 did not comprise subject matter eligible for protection by a utility model. In the reexamination procedure, it was only after redrafting the claim that the applicant was able to convince the Board that claim 1 overcame the above defect¹⁰.
 
IV. The Influence of Material Features or Method features on Utility Models in the Invalidation Procedure
 
The preliminary examination procedure mainly examines formality defects and some obvious substantive defects of the utility model, whereas invalidation mainly focuses on substantive defects of the utility model. In the invalidation procedure, for a utility model having material features or method features, the following provisions are applicable: whether the claims belong to the subject matter eligible for protection by a utility model (A 2.3), whether the description has a sufficient disclosure (A 26.3), whether the claims possess novelty (A 22.2) or inventiveness (A 22.3), whether the claims are clear (A 26.4), and so on. These provisions will be introduced in the following paragraphs.
 
(I) Subject Matter Eligible for Patent Protection
 
Since the preliminary examination examines for the defect of subject matter excluded from patent protection, the possibility that such a defect exists and is found during an invalidation procedure should be low, but, despite this, some controversies still exist.
 
For example, in the invalidation case for utility model No. ZL01258913.6 “Cultural Slate Wall Member”, claim 1 of the utility model concerned is as follows:
 
“A cultural slate wall member, comprising a natural slate plate, characterized in that: one surface keeps its original roughness, and other surfaces are flat so that the bottom surface is smooth; the top is made into a convex tenon and the bottom is made into a concave groove so that it is shaped like a rabbet joint on a German ship’s deck; a stone adhesive is used to glue slate bars together to make them firmer and smoother, and the end surface of the slate bar is flat; the slat bars in different lengths may be combined into blocks, and the blocks then constitute a large slate plate, and finally the circumference of the slate plate is framed to form the cultural slate wall member.”
 
The party requesting invalidation asserted that the characterizing portion of claim 1 disclosed a method of manufacturing the member and did not belong to the group of subject matter eligible for protection by a utility model, thereby violating Rule 2.2 of the Implementing Regulations of the Patent Law (Note: new A 2.3). In the collegial panel’s opinion, although claim 1 of the utility model concerned uses features similar to the steps of a process to define the product, claim 1 includes not only method features but also features of shape and structure of the cultural slate wall member, i.e., although claim 1 includes method features such as “made into” and “glue”, such features are known methods, so claim 1 of this utility model does comprise subject matter eligible for protection by a utility model¹¹.
 
The above invalidation decision uses the term “known method”, which may be understood in two ways, i.e., in a narrow sense, where it refers to the name of a known method, and in a broad sense, where it refers to any method that has been disclosed in the prior art. If this term is understood in a broad sense by thinking that any method disclosed in the prior art may be included in the claims of the utility model, this will lead to the conclusion that a product claim including several known methods for manufacturing a product (e.g. “drying for an hour under 80℃) and known usage methods (e.g. “filling purified water into a drink bottle till it reaches 95% of the volume of the drink bottle”) also comprises subject matter eligible for protection by a utility model. Such a conclusion is obviously inappropriate. Therefore, when drafting the claims of a utility model, applicants are advised to interpret the term “known method” in a narrow sense.
 
(II) Novelty and Inventiveness
 
Since a utility model protects the shape and/or structure of a product, for a claim of a utility model having material features or method features it is necessary to determine whether the material features or method features of this claim imply that the claimed product has a certain specific shape and/or structure. It should be noted that all the technical features deserving attention should be disclosed in the claim, and that technical features not disclosed in the claim normally will not be taken into account in the novelty or inventiveness assessment.
 
For example, in administrative invalidation case for utility model No. ZL03282585.4 “Anti-slip Plastic Woven Bag”, claim 1 of the patent concerned is as follows:
 
“An anti-slip plastic woven bag woven by polypropylene or polythene filaments, characterized in that one or more symmetrical or dissymmetrical anti-slip belts protruding from the bag surface are woven respectively on two bag surfaces at two sides of a longitudinal central line of the woven bag.”
 
In the patentee’s opinion, unlike the technical solution of Evidence 1, claim 1 of the patent concerned uses a protrusion weaving method and achieves unexpected technical effects, thereby possessing inventiveness. The Beijing Higher People’s Court (hereinafter referred to as the Higher Court) states that claim 1 of the patent concerned only defines the raw material without mentioning which weaving method is used. In the Higher Court’s opinion, although the embodiments of the description mention “protrusion weaving method”, this disclosure does not enable claim 1 to possess inventiveness¹².
 
However, if the applicant adds “protrusion weaving method” to claim 1 to make it possess inventiveness, will the subject matter of claim 1 no longer be eligible for protection by a utility model? This leads to a new problem. Sometimes it is indeed a dilemma whether to add material features or method features to a claim. A compromise is to write the known materials or known methods into the claim and explain in the description that these materials or methods are known.
 
1. Material Features or Method Features Are Known Materials or Known Methods
 
When material features or method features included in a claim of a utility model are known materials or known methods, these features should be taken into account in the novelty and inventiveness assessment. In the case where other technical features of the claim are disclosed by a certain prior art document, if known material features or known method features (here we are mainly referring to known materials or known methods included in the claim) are different from the prior art document, this claim will possess novelty (except in the cases where these features are common technical means), but it will be difficult to make this claim possess an inventive step. Whether or not this claim possesses an inventive step mainly depends on the degree of difficulty of proving the following proposition—“these features are known, but it is not common knowledge to apply these features to the present invention to solve the actual technical problem targeted by the present invention, and the prior art does not give any hint to do so.” Please see the following examples:
 
In the administrative invalidation case for utility model No. ZL97241484.3 “S-Pipe Concrete Distributing Valve”, claim 1 is as follows:
 
“An S-pipe concrete distributing value, characterized in that a valve plate (5) and a valve ring (4) are made of ordinary steel as base material, with hard alloy anti-wear rings (4-1), (5-1) inlayed on a fitting surface thereof.”
 
In the Board’s opinion, none of references 1-3 mention the material of the valve plate and the valve ring, i.e., none of references 1-3 disclose the technical feature “a valve plate and a valve ring are made of ordinary steel as base material” of claim 1 of the utility model, so claim 1 of this utility model possesses novelty; however, in view of costs and industrial applicability, it is common knowledge in this field to use ordinary steel as the base material of a valve plate and a valve ring, so claim 1 does not possess inventiveness. Sany Heavy Industry Co., Ltd. did not agree with the Board and asserted that material features in a utility model should not be taken into account. Sany appealed to the Beijing No. 1 Intermediate People’s Court (hereinafter referred to as the No. 1 Intermediate Court) and then to the Higher Court. Both the No. 1 Intermediate Court and the Higher Court upheld the Board’s decision¹³.
 
In an administrative invalidation case for utility model No. ZL200720175451.4 “Non-Woven Fabric Sleeve for Plant Climbing Column”, claim 1 is as follows:
 
“A non-woven fabric sleeve for a plant climbing column, being cylindrical on the whole, characterized in comprising an inner layer (1) and an outer layer (2) outside the inner layer (1), the inner layer (1) being attached to a cylindrical object (3).”
 
In the Board’s opinion one difference between claim 1 of the utility model and Attachment 1 is that claim 1 relates to a non-woven fabric sleeve whereas Attachment 1 relates to a plastic sleeve; the material feature of claim 1 applies a known material in the prior art to a product having a shape and a structure, and does not belong to a solution proposed for the material per se; Attachment 1 does not disclose or imply that materials other than plastic may be used as a sheath layer of a plant climbing column; Attachment 2 uses a non-woven fabric carpet as a base for growing a plant, without mentioning that non-woven fabric may be used as a material for plant climbing. Apparently, Attachment 2 does not teach that the non-woven fabric sleeve can be applied to Attachment 1, so claim 1 possesses inventiveness¹⁴.
 
Additionally, in the administrative invalidation case for utility model No. ZL01264722.1 “Alkali Button Battery with No Mercury”, claim 1 of the utility model is as follows:
 
“An alkali button battery with no mercury, comprising a positive electrode piece, a negative electrode cover, a negative electrode zinc gel, a sealing rubber ring, a positive electrode shell, and a membrane, characterized in that an indium or stannum layer is electroplated on a negative electrode piece of the battery and indium metal is added to the zinc gel to replace mercury.”
The cited prior art reference discloses that a nickel or copper layer and a stainless steel layer can be laminated together, while claim 1 of the utility model concerned uses an electroplating method. In the Board’s opinion, when using a technique in which a negative electrode current collector having a laminated structure may be easily dislocated and cause leakage, one skilled in the art could easily conceive the idea of avoiding a laminating method and using an electroplating method to obtain a smoother copper surface on a stainless steel layer, i.e., replacing the laminated structure of the prior art with the structure of an electroplated nickel or copper layer on a stainless steel piece to prevent leakage, and thus replacing the laminated method with the electroplating method in order to prevent leakage.
 
The patentee asserted that the Board’s opinion was totally opposite to the common knowledge in the button battery manufacturing field, and appealed to the No.1 Intermediate Court.
 
In order to determine whether the above technical solution can be easily envisaged by one skilled in the art, the No.1 Intermediate Court entrusted the Intellectual Property Judicial Expertise Institute of the Software and Integrated Circuit Promotion Center of the Ministry of Industry and Information Technology with the task of offering an expert opinion, and the team of experts drew the following conclusions based on the three materials provided by the No.1 Intermediate Court:
 
1. the battery cover “punched with a thin steel plate and plated with nickel or gold” (the negative electrode portion of the battery) used by the prior art mercury battery is one factor which causes leakage;
2. in order to prevent leakage of the mercury battery, it is an effective means to replace the battery cover “punched with a thin steel plate and plated with nickel or gold” with a battery cover made of a composite metal belt formed by pressing nickel, stainless steel and copper together (i.e. having a laminated structure).
 
Based on this expert opinion, the No.1 Intermediate Court entered the following judgment—“With no other contrary evidence sufficient to refute the above conclusions, the current evidence shows that the laminated structure will not more easily cause leakage than the electroplating method. On the contrary, the electroplating method will more easily cause leakage than the laminated method. The prerequisite for the Board to deny the inventiveness of claim 1 of the patent concerned does not exist, so claim 1 possesses inventiveness¹⁵.”
 
In the above cases, the material feature “ordinary steel” enables claim 1 of the utility model to possess novelty but not inventiveness; the material feature “non-woven fabric” and the method feature “electroplate” enable claim 1 of the utility model to possess both novelty and inventiveness. As for the material feature “non-woven fabric”, Attachment 2 does not teach that it is used for a plant climbing column. As for the method feature “electroplated”, the expert opinion of the institute is helpful in the determination of whether or not it is common knowledge in this field to use this feature to prevent leakage from a button battery. If the applicant had disclosed in advance, in the description of the utility model, information that would have prevented the method feature from being considered common knowledge in this field (e.g. the above conclusions), a lot of trouble might have been avoided.
 
To sum up, in invalidation proceedings, if known material features or known method features are necessary in order to prove the novelty and inventiveness of the utility model, then these features should be included in the claims. For very crucial material features or method features, in addition to mentioning the features in the description, the applicant is advised to disclose, if possible, in the description the information necessary to prevent these features from being considered common knowledge. For example, the applicant can list contrary teaching given by the prior art; the difference between the role of these features in the prior art and the role of these features in the utility model; or some beneficial effects. This is beneficial when arguing inventiveness issues in invalidation proceedings.
 
2. Material Features or Method Features Are Not Known Materials or Known Methods
 
If material features or method features are not known materials or known methods, these features may be considered to be the improvement over the prior art taught by the utility model. In this situation, the applicant should try to avoid including these features in the claims, because it is difficult to determine whether these features imply that the claimed product has a certain specific shape and/or structure, and these features cannot be taken into account in the assessment of novelty and inventiveness.
 
For example, in the administrative case for utility model No. ZL200320110412.8 “Bamboo Mat”, claim 2 of the utility model is as follows:
 
“The bamboo mat according to claim 1, characterized in that the main-reinforcement polyester yarn belt uses 30×1 threads in a longitudinal direction and 30×3 polyester yarn in a latitudinal direction, with a width of 5 mm and a thickness of 1.5 mm.”
 
Claim 2 describes the “main-reinforcement polyester yarn belt” in detail, so one skilled in the art has reasons to suspect that this is the improvement taught by the utility model. In the Board’s opinion, the feature “the main-reinforcement polyester yarn belt uses 30×1 threads in a longitudinal direction and 30×3 polyester yarn in a latitudinal direction” in claim 2 is a method feature, and as the difference in the method for preparing the main-reinforcement polyester yarn belt does not lead to changes in the shape, the structure, or their combination, of the bamboo mat, then this method feature will not be taken into account when assessing inventiveness, and as a consequence claim 2 does not possess inventiveness¹⁶.
 
As shown from this case, if the improvement relates to material features or method features, such features do not bring any benefit to the claim, for the following reasons: (1) if the applicant argues that such technical features are known, then the applicant may also need to argue that they do not belong to the common knowledge in this field; otherwise the claim will not possess inventiveness; (2) if the applicant argues that such technical features are the improvement of the utility model, the claim may run the risk of not containing subject matter eligible for protection by a utility model.
(III) Other Provisions
 
If a claim of a utility model has material features or method features, some other defects may occur, e.g., insufficient disclosure of the description (A 26.3) or lack of clarity of the claim (A 26.4).
 
For example, in the administrative invalidation case for utility model No. ZL200720052939.8 “Glueless Composite Pre-Printing Paper”, claim 1 of the utility model is as follows:
 
“A glueless composite pre-printing paper, characterized in comprising a paper layer (1), an ink layer (2) printed on the paper layer (1), and a glueless composite thin film (3) hot-pressed on the ink layer (2), the glueless composite thin film (3) being a biaxial stretching polypropylene thin film having a functional layer (31) that may be hot-pressed with ink, the functional layer (31) being an ethylene-butylene copolymer, an ethylene-octene copolymer, …”
 
In the opinion of the party requesting revocation of the utility model, the inclusion of materials such as a “biaxial stretching polypropylene thin film” and an “ethylene-butylene copolymer” in the claims cause the utility model concerned to violate Article 26.3 of the Patent Law; and the term “hot-press” causes claim 1 to be unclear and violate Rule 20.1 of the Implementing Regulations of the Patent Law (Note: new A26.4).
 
In the Board’s opinion, such materials are known materials in this field and can be commercially purchased, so the utility model concerned complies with Article 26.3 of the Patent Law; the term “hot-press” is common knowledge in this field and does not cause claim 1 to be unclear. The party disagreed with the Board’s opinion and filed an administrative litigation. The No. 1 Intermediate Court upheld the Board’s decision¹⁷.
 
Although neither of the Board and the No. 1 Intermediate Court considered the claim of the utility model as suffering from the above defects, there is still a possibility for other utility models to suffer from the above defects due to the use of material features or method features in the claims. For example, if the functional layer (31) in the above claim includes a rarely used material and the description does not describe this material specifically, then the description may suffer from the defect of insufficient disclosure. Thus, when material features or method features included in a claim are known materials or known methods, it is not easy for such features to cause the above defects. However, when such features are not known materials or known methods, then the possibility that the above defects will occur will increase.
 
V. The Influence of Material Features or Method Features on Utility Models in the Assessment of Infringement
 
The scope of protection of an invention or a utility model shall be determined by the terms of the claims, and the description and the appended drawings may be used to interpret the content of the claims (A 59.1). Each claim consists of technical features. All the technical features in a claim define its scope of protection. Thus, as long as a technical feature is included in a claim, it will play the role of defining the scope of protection of this claim to some extent¹⁸. In the assessment of infringement, all the technical features of a claim shall be taken into account.
 
A utility model protects the shape or structure of a product. However, if a utility model claim includes material features or method features, although such features may not necessarily cause changes in the shape and/or structure of the product, these features normally will be taken into account in the determination of the scope of protection and in the assessment of infringement. Especially, if it is judged from the disclosure of the description of a utility model that the method features or material features lead to the main functions and the features of shape and structure of this utility model, then the method features or material features should be taken into account in the determination of the scope of protection and in the assessment of infringement.
 
If a utility model claim has material features or method features, then, if the other technical features (i.e. features other than material features or method features) of this claim cover the accused infringing product and if the accused infringing product also include the same material features or method features, there will be literal infringement of the claim. This situation is rare. In most cases, the material features or method features included in the accused infringing product are somewhat different from those of the claim of the utility model, so it becomes necessary to determine whether there is equivalent infringement.
 
(I) Material Features or Method Features Are Known Materials or Known Methods
 
If the other technical features (i.e. features other than material features or method features) of the claim of the utility model cover the accused infringing product, and if the material features or method features included in the claim are known materials or known methods, then there will be a large probability that the corresponding materials or methods in the accused infringing product will be considered to be equivalent to the material features or method features of the utility model concerned, so there will be an equally large probability that equivalent infringement is occurring.
 
For example, in the infringement case for utility model No. ZL200620113956.3 “Highly Wear-Resistant Blade Inlayed with Hard Alloy Block”, the claim concerned is as follows:
 
“A highly wear-resistant blade inlayed with a hard alloy block, comprising a blade body, characterized in that an outer edge of the blade body is inlayed with at least one hard alloy block whose top is protruded from the outer edge of the blade body.”
 
The No.1 Intermediate Court entered the following judgment—“The blade edge of the utility model concerned is inlayed with a hard alloy block, whereas the blade edge of the accused infringing product is inlayed with diamond. However, diamond is a commonly known material with high hardness, and replacing a hard alloy block with diamond is considered to be equivalent replacement, so there is equivalent infringement.” Both the plaintiff and the defendant were dissatisfied with the court decision and appealed. In the Higher Court’s opinion, for improving wear resistance of the blade, the diamond and the hard alloy block have basically the same function and can achieve basically the same effect, so there is equivalent replacement, and the first-instance decision was upheld¹⁹.
 
Additionally, in the infringement case for utility model No. ZL200620122731.4 “Oil Fume Cleaning Plate for Anti-Fire Cooking Range”, the No.1 Intermediate Court entered the following judgment—“The replacement of the stainless steel fibril layer of the utility model concerned with the nickel-chrome-aluminum fibril layer does not achieve any unexpected technical effect and is considered to be equivalent replacement, so there is infringement²⁰.”
The above cases show that material features or method features are technical features which deserve attention in the assessment of infringement. Since “hard alloy block” and “stainless steel” are known materials, such material features are allowed to exist in the claims of the utility model. The roles of such material features or method features in the product and their effects will influence the assessment of infringement. If the other technical features (i.e. features other than material features or method features) of the claim of the utility model concerned cover the accused infringing product, and if the material features or method features of the accused infringing product and the corresponding features of the claim of the utility model realize basically the same function and do not achieve any unexpected technical effect, then there will be a large probability of equivalent infringement. This restricts the arbitrary drafting of the role of material features or method features and the exaggeration of their technical effects in the description.
 
(II) Material Features or Method Features Are Not Known Materials or Known Methods
 
If the other technical features (other than material features or method features) of the claim of the utility model concerned cover the accused infringing product, and if the material features or method features included in the claim are not known materials or known methods, especially when such material features or method features are considered to be the improvement of the utility model over the prior art, then there is a small probability that corresponding materials or methods in the accused infringing product will be considered to be equivalents of the material features or method features of the utility model concerned, so there is an equally small probability for equivalent infringement.
 
For example, in the infringement case for utility model No. ZL97218912.2 “Plasticized Asphalt Anti-Corrosion Adhesive Tape”, the claim of the utility model concerned is as follows:
 
“A plasticized asphalt anti-corrosion adhesive tape, characterized in having a structure of an inner layer, an intermediate layer and an outer layer, wherein the inner layer material is oxidized asphalt + additives, the intermediate layer material is reinforced glass fiber, and the outer layer material is high-intensity fiber cloth; the intermediate layer material and the inner layer material cover the surface of the outer layer material in sequence and are rolled over to form a belt”.
  After comparing this claim with the accused product, the court found that the inner layer material of the utility model concerned is oxidized asphalt with additives whereas the inner layer material of the accused product is plasticized asphalt with no additive, etc. Since the two have different material features and different technical solutions, there is no literal infringement. The inner layer material of the utility model concerned and that of the accused product are oxidized asphalt and plasticized asphalt respectively. The description of the utility model concerned describes that the oxidized asphalt is No. 10 construction asphalt oxidized under a high temperature of 180℃ or above, whereas the plasticized asphalt of the accused product is No.10 construction asphalt heated and modified with resin. Thus, the oxidized asphalt and the plasticized asphalt are not the same material and there is no evidence to prove that the two materials can achieve the equivalent effect. In addition, the inner layer material of the utility model concerned has additives and can provide anti-aging and flame-retardant effects. The accused product does not have any additives and correspondingly cannot provide such a technical effect. Therefore, there is no equivalent infringement²¹.
In the above case, the inner layer material consists of oxidized asphalt and some additives, so one skilled in the art can easily believe that the improvement of the utility model concerned lies not only in the shape and structure of the adhesive tape but also the material that it is made from. This material feature has a large influence on the shape and structure of the claimed product, and leads to the main functions of the claimed product. In this situation, unless there is literal infringement, it is difficult for the equivalent infringement principle to apply. This case shows that the role of material features or method features cannot be ignored in the assessment of infringement for utility models, especially when such features cause changes in the shape or structure of the claimed product or lead to the main functions of the claimed product.
 
To sum up, during the drafting of the claims of a utility model, it is absolutely necessary to treat carefully the material features or method features relating to the innovation; otherwise the related product may lack protection. If it turns out that a utility model would indeed be unsuitable for protecting the product, then the applicant can choose to file a patent application instead.
 
VI. Drafting of Utility Models Having Material Features or Method Features
 
The above sections have discussed the provisions regarding utility models having material features or method features as well as the influence of material features or method features on utility models in the examination procedure, the invalidation procedure and the assessment of infringement. As stated above, for a product in which the innovation lies mainly in material features or method features, the applicant may file a patent application. Of course, currently it is allowed to file both a utility model application and a patent application for the same invention in China (R 41). If it is difficult to determine which features contribute to the invention then in order to obtain IP protection as soon as possible, the applicant may file applications for a patent and a utility model at the same time.
 
During the drafting of the claims of a utility model, if material features or method features can be avoided, then we suggest that such features should not be included in the claim. However, if the claims of the utility model cannot avoid including material features or method features, then such a situation will also be allowable. The following paragraphs introduce some issues which deserve attention during the drafting of a utility model claim having material features or method features.
 
(1) The characterizing portions of the claim should only not include material features or method features; otherwise there is a large risk that the claim will not contain any subject matter which is eligible for protection by a utility model.
(2) The material features or method features included in the claim should not be unknown materials or unknown methods, and in particular, they should not be described as being the of the utility model improvement over the prior art; otherwise there is a large risk that the subject matter of the claim will not belong to the group of subject matter eligible for patent protection. Such features will possibly be taken into account in the assessment of novelty and shall be taken into account in the assessment of infringement, but it is difficult for them to be taken into account in the assessment of inventiveness.
 
(3) The claims should not use a combination of known materials and/or known methods to express a certain material feature or method feature. Whether such a combination remains a known material or a known method would be open to discussion. In fact, a combination of known materials is not necessarily a known material, while a combination of known methods is not necessarily a known method. If such a combination cannot be avoided, it is suggested to perform the appropriate searches during the drafting of the claim and to discuss such a combination in detail in the description in order to convince one skilled in the art that such a combination still is a known material (e.g. the reexamination case for “Microwave Slow Cooker”) or a known method. If the applicant can prove that such a combination is known in this field, it is preferred to use the commonly accepted name for it. What is the most important is that the applicant should avoid describing such a combination as being an innovative feature of the utility model.
 
(4) The applicant should try to use the names of known materials or known methods to express material features or method features included in the claim. In such a way, there is a reduced probability that the claim will be considered as containing subject matter which is not eligible for protection by a utility model. Such features should be taken into account in the assessment of novelty and inventiveness, and in the assessment of infringement, and there is a large probability that the Doctrine of Equivalents can be applied.
 
(5) For very crucial known material features or known method features, the applicant had should disclose in the description any information that can help prevent such features from being considered common knowledge. For example, the applicant can list contradictory teaching taught in the prior art, the difference between the role of these features in the prior art and the role of these features in the utility model, or some beneficial effects of these features. Of course, it is not suggested that one should arbitrarily draft the role of material features or method features or exaggerate their technical effects in the description, as doing so may have an adverse effect on the application of the Doctrine of Equivalents during the assessment of infringement.
 

（2012）