The Supreme People's Court, in an administrative appeal case, pointed out that the claims of utility model patents may include the names of a known material, which means that a known material from the prior art may be applied to a product with a certain shape or structure. However, if the core of the claim lies in the proposed improvements to the material itself, the claim would not be patentable subject matter for utility model patent.
Company A is the patentee of a utility model patent titled "Glass-based Articles and Devices Comprising the Same" (hereinafter referred to as “the Patent”). Claim 1 of the Patent recites: "1. A glass-based article, comprising: a first surface and a second surface opposite the first surface, defining a thickness (t) less than about 3 mm; and a stress distribution extending along the thickness, wherein, all points of the stress distribution within the thickness range from approximately 0t up to and including 0.3t and from greater than approximately 0.7t to t include the following tangent, the absolute value of its slope is greater than about 0.1 MPa/mm, wherein the stress distribution includes a maximum CS, DOC, and a maximum CT less than approximately 71.5/√(t)(MPa)..."
Party B filed a request for invalidation against the Patent. The CNIPA issued the invalidation decision (hereinafter referred to as the "Disputed Decisions"), stating that the stress distribution and other parameters defined in the claims of the Patent did not constitute a new and practically applicable technical solutions related to the product’s shape or structure. As such, the solution was not patentable subject matter for utility model patent. Therefore, the Patent was declared invalid in its entirety.
Dissatisfied with the ruling, Company A filed a lawsuit with the court of first instance. Company A argued that the Patent involved a technical solution defining a three-layer macrostructure of glass, which constituted an improvement to the composite layer structure of glass articles. This solution was analogous to the "carburized layer" example cited in the Guidelines for Patent Examination and thus was patentable subject matter for utility model patent.
The court of first instance issued an administrative ruling, dismissing Company A's lawsuit. The court of first instance held that the Patent essentially only obtained the stress distribution curve by measurement means, and then artificially defined different stress distribution regions at different thickness intervals of the glass based on the slope of the curve’s tangent and changes in stress values. This did not constitute patentable subject matter for utility model patent. The technical solutions defined in the claims of the Patent did not constitute a new and practically applicable technical solutions related to the product’s shape or structure, or combination thereof. As such, the solution was not patentable subject matter for utility model patent.
Dissatisfied with the ruling, Company A filed an appeal. The Supreme People's Court made the final judgment, dismissing the appeal and upholding the original judgment.
The court's effective judgment held that, according to Article 2(3) of the Patent Law, utility model patents only protect products, and such protection shall be limited to improvements made to the product’s shape or structure. Therefore, to assess whether a technical solution falls within patentable subject matter for utility model patent, the key determination is whether the improvement over the prior art lies in the product’s shape, structure, or a combination thereof, rather than modifications to methods or materials. The claims of utility model patents may include the names of a known material, which means that a known material from the prior art may be applied to a product with a certain shape or structure. However, if the core of the claim lies in the proposed improvements to the material itself, the claim would not be patentable subject matter for utility model patent.
In this case, a person skilled in the art, after reading the patent specification and claims, will understand that the inventive concept of the Patent is to address the problem in the prior art, where chemically strengthened glass cannot exhibit the stress distribution of thermally tempered glass. By employing ion exchange, the glass article claimed in the Patent exhibits a unique stress distribution along its thickness, thereby enhancing crack resistance. Therefore, both the technical problem to be solved by the Patent and the solution’s technical means demonstrate that the Patent focuses on improving the material itself, rather than improving the product's shape or structure. The disputed decision and the first-instance judgment's determination did not err in determining that the Patent did not fall within the scope of utility model patent protection.
As for Company A’s appellate argument that the stress layer defined in the patent claims is equivalent to the “carburized layer” specified in the Patent Examination Guidelines – both being structural features – such claim was untenable and hereby rejected. “Carburized layer” is the name of a known material. When it is applied to a composite layered product with specific shape and structure, it serves to define the product’s structural configuration, rather than represent an improvement to the carburized layer itself. Therefore, it may properly function as a structural feature for defining utility model patents. However, Company A did not prove that the “stress layer” referenced in the Patent is a name of a known material. In addition, the Patent’s improvement lies in the material itself, so it cannot be recognized as a structural feature. In summary, Company A’s appellate claims are untenable and should be dismissed.
Through the above judgment, the Supreme People's Court has clarified the determination principles when the material characteristics are involved in the utility model patent. That is, if the core of the claim lies in the proposed improvements to the material itself, the claim would not be patentable subject matter for utility model patent. Only when the improvement made relative to the prior art lies in the shape, structure or a combination thereof can it be recognized as falling within the patentable subject matter for utility model patent.
(2023) Zui Gao Fa Zhi Xing Zhong No. 607
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