Guide: How to determine whether or not claims of a utility model patent possess inventiveness?

Introduction: The petitioner filed a request for invalidation of the utility model patent named “button for clothes” (Patent No.: 201020137178.8), patentee of which being a hardware button company. Entrusted by the petitioner, Linda Liu & Partners handled relevant issues of the invalidation procedure of the patent on behalf the petitioner. The Patent Reexamination Board of the State Intellectual Property Office (SIPO) held that: if the claimed technical solution was distinguished from the most related prior art, but the distinguishing feature was a conventional technical means of the field, and there was no evidence showing that the introduction of said distinguishing feature had any unexpected technical effect, then the technical solution of the claim did not possess inventiveness. Finally, the Patent Reexamination Board announced that the disputed utility model patent was wholly invalidated.

Highlight of the case:
The patentee asserted that: (1) Evidence 1 disclosed that grooves were disposed on the inner surface so that the flat outward surface of the feet handle would not be deformed, thus a person skilled in the art had no motivation for disposing grooves on the outer surface of five claws. That is, Evidence 1 disclosed a teaching contrary to the disputed patent. (2) The disputed patent was superior to Evidence 1 on the tightness of connection between the surface part and five claws. (3) Evidences 1 and 2, patent documentations disclosed years ago, both disclosed that grooves were disposed on the inner surface, thus disposing grooves on the inner surface was a technology bias of the field, and the disputed patent overcame such technology bias. A person skilled in the art can anticipate that grooves on the five claws in the disputed patent can increase force of the claws, and it would be stronger if the grooves are disposed on the outer surface rather than on the inner surface.

We argued that: as shown by the description of the disputed patent in combination with the analysis of the prior art, the popper with grooves in the disputed patent was connected more tightly compared to the popper without grooves. However, the description of the disputed patent did not disclose that the popper with grooves disposed on the outer surface had better connection performance than that with grooves disposed on the inner surface, so the conclusion that the popper and the surface part of the disputed patent were connected more tightly over the popper with grooves disposed on the inner surface because of grooves disposed on the outer surface of the five claws cannot be reached. Therefore, the disputed utility model patent did not have unexpected technical effects. The Patent Reexamination Board supported our argument. As shown above, keys to the success of this case lie in in-depth analysis and full preparation.