Features of utility models not necessarily precluded from protection

Autility model protects only the new technical solution to the form or structure of a product. In the claim, if the technology to be protected is just a replacement of material of one constituent part with another known material, it will not be deemed as innovative in normal conditions.

A replacement of a material, easy as it seems, may also bring tangible change to the product and create beneficial technical effect, thereby being innovative.

This article focuses on a specific case and analyses the effect of a material’s features on a utility model, providing a perspective that is usually ignored in the examination of utility models.

Material differences

In a dispute over the invalidity of the utility model patent “Light waterproof heat resistant composite board”, the patented technology was a light waterproof heat resistant composite board. The board was comprised of a foam substrate and a hard panel formed through mould pressing, characterized by a waterproof adhesive layer between a surface of the foam substrate and the bottom surface of hard panel. The adhesive layer was formed by the firm adhesion of a waterproof adhesive material; the other surfaces of the foam substrate were covered by a polymer cement-based waterproof adhesive material.

During the invalidation procedure, the petitioner argued that the only difference between the patented technology and the prior art was the material and the structures of both were completely identical. The petitioner further argued that as a result, the patented technology lacked novelty and inventiveness.

The patent re-examination board reviewed the patented technology and prior art. The board held that the patented technology had the distinctive technical feature of “the other surfaces of the foam substrate are covered by a polymer cement based waterproof adhesive material” in comparison to the prior art.

Jiang Fengtao is the managing partner and Yang Cunji is an associate of Hengdu Law Offices