INSIGHTS On January 3, 2025, an announcement regarding litigation was issued by CALB (HK3931) on the Hong Kong Stock Exchange, revealing that CATL had filed a new patent lawsuit against CALB and Hangzhou Pengxing Automobile Sales Service Co., Ltd. This event is expected to trigger a fresh round of extensive discussions within the industry about the ongoing patent battle between the two parties, further emphasizing the importance of high-quality patents in China. The quality of utility model patents has become a focal point of attention within the Chinese patent industry.
In the author’s opinion, a utility model patent application is not inherently of low quality. If strategically designed, a utility model patent can provide solid legal protection for technological innovations. Given China’s pivotal role in global innovation, understanding the intricacies of its patent system is crucial for international businesses seeking to protect their intellectual property within the country.
According to the Patent Examination Guidelines of China, during the preliminary examination stage, examiners shall assess whether a utility model patent application obviously lacks novelty and inventiveness. Under the framework of China’s Patent Law, there are differences in the examination rules for utility model patent applications compared to that of invention patent applications. One of the key differences lies in the standard for inventiveness:
The requirement for the inventiveness of a utility model patent applications in China is less strict than that for the inventiveness of an invention patent applications.
Those differences are primarily reflected in the assessment whether there are "technical inspirations" in the prior art. As regards the technical inspirations, the criterial on the utility model patent applications differs from that on the invention patent applications.
This article will analyze the examination trends of utility model patents in China from the perspective of the assessment of the technical inspirations and a summary of relevant judgments, aiming to provide clearer guidance for the application of utility model patents in China and share some practical drafting skills.
Ⅰ. Identification of Technical Inspirations for Utility Model Patent applications
When trying to identify technical inspirations for utility model patent applications, the following factors should be taken into consideration:
(1) the technical field of the prior art; and
(2) the quantity of the prior art references.
As presented in Table 1, this article will discuss how the technical inspirations are identified for utility model patent applications and invention patent applications, emphasizing the key differences in the evaluation criteria between them. Specifically, Table 1 highlights that, for the utility model patent applications, the technical field of the prior art is strictly limited, and usually the prior art references from the very technical field to which the application relates will be considered, while for the invention patent applications, a broader range of technical fields will be taken into consideration.
Table 1: Identification of Technical Inspirations
As shown in the table above, utility model patents and invention patents have different requirements for the technical field of the prior art when identifying technical inspirations. For utility model patents, the technical field of the prior art is strictly limited, and only the reference documents from the very technical field to which the application relates can be considered during the examination. Only if the prior art provides an enlightenment on the related or similar technical fields, they can be considered. Therefore, when assessing the inventiveness of a utility model patent application, the following two key factors should be considered:
The Patent Examination Guidelines and typical cases of China’s Supreme Court offer clearer definitions for the term “technical field.” According to the Guidelines, the technical field refers to the specific sector to which the technical solution applies, associating with the hierarchically lowest indexing group in the international patent classification system.
The Supreme People’s Court of China, in Case No. (2011) Zhi Xing Zi No. 19 (a guiding typical case in the 2022 Intellectual Property Annual Report), also mentioned that the technical field is determined from the content defined in the claims, based on the title of the subject matter, in combination with the technical functions and the use of the technical solutions, and with reference to the hierarchically lowest indexing group in the international patent classification system.
Regarding similar and related technical fields, typical cases from the Supreme Court also offer a relatively clear definition. A similar technical field refers to a technical field which is similar to that of the patent application in terms of function and use; a related technical field refers to a technical field where the distinguishing technical features are applied.
Additionally, regarding the identification of technical inspirations, the requirement on the quantity of the prior art references for utility model patent applications is different from that for invention patent applications. Specifically, fewer prior art references, typically one or two, can be cited to evaluate the inventiveness of a utility model. If multiple prior art references are cited, the premise that the utility model is the result of a "simple combination" of the existing technologies should be met.
In Section 4.2 of Chapter 4 of the Patent Examination Guidelines, a clear definition for "simple combination" is provided. In the case of inventions to be combined, a “simple combination” generally refers to the fact that the existing technical features are simply combined or engaged, each of them works in its usual way, without correlation among the technical features and mutual support in functionalities. The overall technical effect is merely the sum of the individual effects of each part to be combined. If the technical features cooperate with each other and functionally support each other, it should not be regarded as a “simple combination.”
Ⅱ. Summary of Judgments by the Supreme Court on Utility Model Patent Applications
In order to provide practical insight into how the Patent Law of China is applied in real-world scenarios, we present a selection of landmark cases from the Supreme Court of China. These cases illustrate the application of patent law principles, particularly the evaluation of novelty and inventiveness for utility model patent applications. Each case highlights how the Court interprets various aspects of the patent law, such as the effect of method features on the product’s structure and function, the role of the subject matter in defining the scope of protection, and the identification of related technical fields for assessing inventiveness.
The cases selected here are intended to be shared with patent applicants, attorneys, and IP professionals. The cases demonstrate the nuances in the Chinese legal system in evaluating patents and offer insights into how to skillfully draft, prosecute and defend the patent applications.
Case 1: ZL201520898029.6 — A Glue-Free Environmentally Friendly Winding Roll
Case Topic: Evaluation of the novelty and inventiveness of a utility model patent application that includes method features.
Independent claim of the patent application: 1. A glue-free environmentally friendly winding roll, including the final ring on the outermost layer of the roll , wherein a pressed part protruding along the axial direction of the roll is formed near the tail end of the roll’s final ring, and the pressed part is formed by co-clamping or co-extruding one or several turns of reel paper along with the final ring of the roll through a mechanical interlayer pressing manner.
The technical feature of "the pressed part is formed by co-clamping or co-extruding … through a mechanical interlayer pressing manner" in claim 1 of the application is a limitation on the method of forming the pressed part. The “mechanical interlayer pressing” is distinct from adhesive bonding, and it affects the shape and structure of the roll. This term should be considered as having a limitation effect when evaluating the novelty and inventiveness. As for the term “clamping or extruding”, since clamping and extruding are both specific ways of mechanical interlayer pressing and they do not have an effect on the shape and structure of the product, this term should not be considered when evaluating novelty and inventiveness.
Summary of Judgment: In cases where a claim includes both product features (such as shape and structure) and method features (such as the manufacturing process),if the method features can directly affect the product’s overall structure, , it is necessary to compare the specific shape and structure generated by the method with the shape and structure in the prior art, rather than comparing the method features themself with the method in the prior art, during the evaluation of the novelty and inventiveness.
Case 2: ZL201620056618.4 — Mobile Phone Pedometer
Case Topic: Whether the subject matter defined by purpose can substantially define the protection scope of a utility model patent application?
Independent claim of the patent application: 1. A mobile phone pedometer, wherein the mobile phone pedometer comprises a base, a swing frame with a mobile phone holding space, and an electromagnetic drive device driving the swinging frame to swing; swinging frame is swingably disposed on the base; electromagnetic drive device comprises a permanent magnet block held on the swinging frame and an electromagnetic generator capable of generating identical magnetic polarity to corresponding poles of the permanent magnet block when energized; wherein an electromagnetic coil of the electromagnetic generator is positioned below the permanent magnet block.
The technical solution of the patent application is not directly related to pedometer software or hardware. It is actually a device which can hold the mobile phones and shake them automatically. As the mobile phones are being swung, the mobile phone software and hardware would mistakenly recognize that the mobile phone user is in motion and thus record steps. The so-called “pedometer” only describes one of the uses of the product, which has no effect on the shape and structure of the product itself. Regardless of whether a mobile phone is placed on the claimed product or whether the placed mobile phone has a pedometer function, the solution can swing the mobile phone automatically and continuously when powered on. Thus, the wording “pedometer” in the subject matter neither have an actual limiting effect on the protection scope, nor form a technical feature distinguishing the patent application from the prior art.
Summary of Judgment Summary: To determine whether the subject matter defined by purpose can substantially define the protection scope of a utility model patent application, it should be evaluated based on the application type of the utility model, on the relationship between the subject matter and the technical solution defined by the claim, and on whether the subject matter has a substantial effect on the shape and structure of the object to be claimed.
Case 3: ZL201620169331.2 — Dual-Layer Metal Wiring Layout Structure of Aluminum Gate CMOS
Case Topic: The identification of similar and related technical fields in the inventiveness analysis of a utility model, and the effect of material features on the inventiveness evaluation.
Independent claim of the patent application: 1. A layout structure of dual-layer metal wiring of aluminum gate CMOS, characterized in that, the layout structure includes:
a first metal layer, a second metal layer stacked on the first metal layer, and an isolation layer of insulating medium arranged between the first metal layer and the second metal layer.
In the early days of the semiconductor industry, metal aluminum was generally used as the gate material of CMOS, and silicon was widely used as the gate material thereafter. Although the development of gate materials from aluminum to silicon is indeed an improvement on semiconductor devices, the difference between aluminum gate and silicon gate has no substantial effect on the technical solution of the dual-layer metal wiring layout structure adopted by this patent application, and the choice of gate material should not be regarded as a technical contribution of the application. Therefore, the layout structure of dual-layer metal wiring of aluminum gate CMOS in the application has the same function and similar use as that of the dual-layer metal wiring structure of silicon gate CMOS, and the principles of improving CMOS integration are basically the same. Thus, the silicon gate CMOS double-layer metal wiring structure can be regarded as the same or similar technical field.
Summary of Judgment: When identifying the technical field of a utility model patent application, the technical solution defined by the claims should be the basis, starting with the subject matter, and in combination with the function and purpose of the claimed technical solution. The technical fields with similar functions and uses to the claimed technical solution form the similar technical fields; and the technical fields in which the technical features distinguishing the claimed technical solution from the closest prior art are applied form the related technical fields.
Case 4: ZL201520594810.4 — Heat Dissipation Matrix for Sealed PTC Thermistor Heater
Case Topic: The effect of the coordination between distinguishing technical features and other technical features on the determination of the motivation for improvement.
Independent claim of the patent application: 1. A heat dissipation matrix for accommodating a PTC heating component, characterized in that, the matrix comprises a cavity body, wherein the cavity body has a hollow accommodating cavity extending along the length direction of the cavity body, a plurality of heat dissipation fins are centrally fixed on the outer surfaces of the top and bottom of the cavity body, respectively, and the length of each heat dissipation fin along the width direction of the cavity body is less than the width of the cavity body; the upper and lower parts of the left inner wall of the cavity body within the accommodating cavity are respectively provided with a first positioning rib extending along the length direction of the cavity body, correspondingly, the upper and lower parts of the right inner wall of the cavity body within the accommodating cavity are respectively provided with a second positioning rib extending along the length direction of the cavity body, the left inner surface of the accommodating cavity between the two first positioning ribs is an outwardly convex arc surface, and the right inner surface of the accommodating cavity between the two second positioning ribs is also an outwardly convex arc surface, the left and right outer walls of the cavity body are both groove-shaped structures extending along the length direction of the cavity body, the distance between the two first positioning ribs and the distance between the two second positioning ribs are both less than the thickness of the PTC heating component, the distance between the first positioning rib and the second positioning rib located at the upper part and the distance between the first positioning rib and the second positioning rib located at the lower part are both less than the length of the heat dissipation fins along the width direction of the cavity body.
The technical problem to be solved by Evidence 1 in this case is that the overall positional space of the PTC heating core within the aluminum tube is too large, causing the PTC heating core to not be in the middle position along the width direction when the aluminum tube is pressed, resulting in uneven force distribution along the width direction of the aluminum tube during being pressed. To ensure that the PTC heating core is centered along the width direction when placed in the aluminum tube, Evidence 1 provides positioning strips on the sidewalls to limit the movement space of the PTC heating core along the width of the aluminum tube. If the sidewalls of Evidence 1 bulge outward during being pressed, the positioning strips would inevitably move outward, increasing the distance between the positioning strips and the PTC heating core, thereby enlarging the movement space of the PTC heating core within the aluminum tube. This would make it difficult to center the PTC heating core along the width direction of the aluminum tube, contradicting the inventive purpose of Evidence 1. Considering that the outer surface of Figure 3 of Evidence 1 is an inwardly concave arc structure, although the inner surface of the cavity between the positioning strips of Evidence 1 is also an outwardly convex arc, it does not achieve the technical effect of the cavity sidewalls deforming outward under force, and thus there is no issue of needing space to accommodate outward deformation of the sidewalls. Based on Evidence 1, a person skilled in the art would not have the motivation to modify by providing groove-shaped structures on both outer sidewalls to offer space for accommodating outward deformation.
Summary of Judgment : In the inventiveness evaluation, if the technical features distinguishing the claimed technical solution from the closest prior art have a coordinated relationship with other technical features, and the technical effects produced by the distinguishing technical features and the technical problems solved are premised on the technical effects of other technical features, and the corresponding technical features in the closest prior art cannot produce the same technical effects on the basis of its inventive purpose and concept, a person skilled in the art would have no motivation to make improvements on the prior art, and thus the claimed technical solution would be non-obvious to the artisans skilled in the art.
Ⅲ. Considerations of drafting Utility Model Patent Applications
Based on the analysis of technical inspirations and summary of judgments by the Supreme Court, the following are some practical considerations on drafting utility model patent applications are as follows.
Structure of Claim Tree: Drafting dependent claims based on the essential technical features from the independent claims is recommended. Such layout strengthens the patent’s stability, making it more defensible against invalidation challenges. When trying to extract technical features to define the technical solution, the definition in multiple aspects is appreciated, rather than being limited in only one aspect, while focusing on “synonymous expressions”. This approach avoids diminishing novelty and inventiveness of the technical solution during the examination process due to the use of similar limitations, and helps to establish comprehensive protection for the technical solution.
Describe Technical Effects in Detail: Clearly describe the technical effects in the specification, outlining the process and principles of the claimed technical solution. This not only avoids the problem of insufficient disclosure, but also better supports the claims and improves the stability of the patent.
Coordination Between Technical Features: Pay attention to the coordination between technical features in the technical solution to ensure that the coordination between these features can produce the expected technical effects and solve the specific technical problems. Such implied coordination and cooperation relationship helps to complete the loop of the entire invention concept and avoid problems such as logical inconsistency.
By following these strategies, patent attorneys can enhance the quality of utility model patent applications, making them more competitive and stable in infringement lawsuits and invalidation procedures. In conclusion, understanding the unique patent examination standards for utility model patent applications in China is crucial for international businesses seeking to protect their intellectual property. By focusing on clearly defined technical fields, carefully considering the prior art, and following the judicial precedents set by the Supreme Court of China, patent attorneys can improve the quality of patent applications. Adopting a strategic and comprehensive approach will increase the likelihood of granting of a patent and provide better protection for patent holders in infringement disputes and invalidation proceedings.
Author Bio
Mr. Chen Qiuming has more than 8 years of experience in intellectual property (IP), specializing in drafting patent applications. He has worked on high-profile cases for companies in the new energy, semiconductor, and medical device sectors. Mr. Chen is skilled in patent portfolio management, strategic patent filings, and IP quality assessments. He holds a Bachelor of Engineering degree from Anhui University of Technology and is a licensed patent attorney in China. He can be contacted at qiuming.chen@purplevineip.com.
