Qing QIN, Patent Attorney

 

Article 40 of Chinese Patent Law provides that if the Patent Office, when examining a utility model patent application, finds no grounds for rejection upon the preliminary examination, the Office shall decide to grant a utility model patent. As is shown, utility model patents are not subject to the substantive examination, and what are often encountered in the process of examination of such applications are issues of industrial applicability, rather than those involving inventive step.

 

With the technological development and progress, more and more invention-creations made in the field of electronics rely on software features, such as computer programs, to make them work. In the recent examination practice, we have noticed that examiners tend to consider such technical features defined using computer programs not to be subject matters for utility model patent protection. Following is a discussion focusing on how to apply for utility model patents claiming technical solutions containing computer program features and argue for their patentability.

 

I. Relevant Provisions of Current Patent Law and Examination Guidelines

 

Paragraph 3 of Article 2 of the Patent Law stipulates that, a utility model refers to a new technical solution which, suitable for practical use, is made in relation to the shape, structure, or their combination, of a product.

 

Moreover, the following is provided in Section 6.1, Chapter Two, Part I of the Guidelines for Patent Examination:

 

A utility model patent only protects a product which should be manufactured in an industrial process, have a definite shape, structure, and occupy a certain space. All methods and naturally occurring objects that are not artificially made are not subject matters eligible for utility model patent protection. These methods include, among other things, methods of manufacturing, use, communication and processing, computer programs, and use of products for specific purposes.

 

An invention-creation may include improvements to the shape or structure of a product, as well as improvements to the particular method or process used to make the product, or materials that make up the product themselves. However, a utility model patent only protects a technical solution improving the shape and/or structure of a product.

 

The name of a known method may be used in the claims to define the shape and structure of the product, but shall not contain the steps, process conditions, etc. of the method.

 

Anything that claims both feature of shape and/or structure, and improvements made to the method itself, such as technical features that define the manufacturing method, method of use, or computer program of the product is not subject matter eligible for utility model patent protection.

 

As is shown in the above-mentioned relevant provisions of the Patent Law and Guidelines for Patent Examination, the utility model patents only protect products. We note that the recent patent examination practice have further underscored the requirement that if the claims contain both shape, structure and process features, it should be ensured that they do not contain improvement made to the method itself, or that the method feature is known in the art. These points are further elaborated in a study of the specific cases below.

 

II. Case Study

 

Case One

 

In Case One, claim 1 comprises a feature that "a processing device, configured to receive at least one of face images, iris images and retinal images collected by the multimodal biological information collection device, and determining identity information matching it based on the images".

 

In the office action, the examiner held that the above feature involves computer program, the solution of the technical problem relies on computer program, and the description shows that the improvement of the technical solution lies in the computer program, that is, it essentially contains an improvement made to the method itself, so it is not a subject matter eligible for the utility model patent protection as stipulated in the Patent Law.

 

In further communication with the examiner, the examiner considered that the processing device in the technical solution of the claims involved computer program and that no evidence could prove the feature was known to the public.

 

In this regard, the applicant searched around the above feature, and cited the reference document CN113014543A in his response, pointing out that the main device 204 in CN113014543A (equivalent to the processing device of the present application) is based on the received biological data for identification, and the biological data may specifically include data collected by the subordinate device 202 to identify the user's biometrics, such as fingerprint data, face images, iris data, retina data and other physiological feature data. Accordingly, the applicant argued that CN113014543A disclosed the said feature in claim 1, the feature was well known in the art and did not constitute the improvement point of present application; hence the claims of the application did not contain any improvement made to the method itself, and were subject matter for utility model protection as stipulated in the Patent Law. In the end, the examiner accepted the applicant's argument and granted the utility model patent.

 

Case Two

 

Claim 1 of Case Two comprises a feature that "a judgment module for identifying a data version of the main module and the backup module, and based on the data version, controlling the update module writing data from the main module to the backup module or controlling the import module importing data from the backup module to the main module".

 

In the office action, the examiner commented that realization of the above feature required improvement or development of specific computer program according to the needs, and since computer programs were method features, the technical solution essentially contained an improvement to the method itself, and they were hence not subject matter eligible for the utility model protection as stipulated in the Patent Law.

 

Although this utility model application had been drafted in such a way that the individual modules are functionally defined and the relationship among them limited, the examiner still determined whether its function could only be realized by software means, such as computer program, and further determined whether its improvement related only to the method itself. Therefore, in the latest examination practice, the issue of subject matter of utility model protection cannot be avoided simply by functionally defining the individual modules in the drafted claims.

 

In further communication with the examiner, the examiner pointed out that if the applicant considered the said feature as well known in the art and that they did not constitute the improvement point of present application, he should provide corresponding evidence. In response, the applicant cited an reference document CN114371960A to prove that this feature is known in the art, and do not constitute the improvement point of present application, and hence the claims of the application are subject matter eligible for utility model protection as stipulated in the Patent Law.

 

III. Enlightenment

 

For utility model applications relating to computer programs, it should, first of all, be considered whether the invention point contains an improvement to the method itself and whether it is a subject matter eligible for utility model protection. If an improvement to the method itself exists in the technical solution, or the product or structure shall be manufactured by a new method, it is recommended that the applicant change the type of application to an invention application, or file a new invention application for the method itself; and where the technical solution involves a method but the method is known in the art, it shall be considered a subject matter eligible for utility model patent protection.

 

At the same time, it is particularly important to note that for a utility model patent application that claims a technical solution comprising a process or software feature, it should be possible for the application documents to prove that the invention point only lies in the hardware feature, not in the software or process feature. That is, the applicant should clearly state and explain in detail in the description that the relevant method is known in the art, and he is able to provide evidence to show it is prior art when the examiner challenges it, so as to make things conducive to any subsequent argument and modification that are likely to be made.

 

 

 

 

Author:

Ms. Qing QIN

Ms. Qin received her degree of Bachelor from Shandong University in 2013, and her master's degree from Shandong University in 2016. Ms. Qin joined Panawell in 2019, and she specializes in patent search, drafting, prosecution, reexamination, invalidation, litigation and counseling in the field of optics, physics electronics, communication, and etc.