Supreme People’s Court issues fresh guidance on the technical field of prior art utility models

The Supreme People’s Court (SPC) has recently provided clarification on the parameters in determining a technical field of a claimed technical solution, as set out in Article 12 of the Provisions on Several Issues Concerning the Trial of Administrative Cases Involving the Granting and Affirmation of Patent Rights (I) (Fa Shi [2020] No 8, effective as of 12 September 2020).

It is a universally acknowledged fact that the inventiveness threshold for a utility model is lower than that for an invention, as corroborated by Article 22 of China’s Patent Law:

Inventiveness means that, as compared with the prior art, an invention has prominent substantive features and represents a notable progress, and a utility model has substantive features and represents progress.

The lower inventiveness threshold for a utility model also embodies a much narrower technical field of prior art. In Part 4, Chapter 6(4) of the Patent Examination Guideline, the China National Intellectual Property Administration (CNIPA) elaborates on the different approach in terms of ascertaining the technical field to which the prior art belongs:

For an invention, the examiner shall consider not only the technical field to which an invention belongs, but also the proximate or relevant technical fields, and those other technical fields in which the problem to be solved by the invention would prompt a person skilled in the art to look for technical means. For a utility model, the examiner shall normally focus on the technical field to which a utility model belongs. Where there is a clear technical teaching, such as an explicit description in the prior art that would prompt a person skilled in the art to look for technical means in a proximate or relevant technical field, the said proximate or relevant technical field may also be considered.

In short, an examiner may resort to almost all technical fields of the prior art to ascertain the inventiveness of an invention. However, when it comes to a utility model, the prior art is narrowed down to:

• the technical field to which the utility model belongs (namely, the technical field identical with that of the utility model); and
• the proximate or relevant technical field, provided that the prior art provides the aforesaid clear technical teaching.

It is therefore, paramount to determine whether a technical field of the prior art is identical with that of the utility model. The reason is twofold:

• where the prior art is ascertained to fall under other technical fields, such prior art cannot be utilised to assess the inventiveness of a utility model; and
• even if the prior art is ascertained to fall under the proximate or relevant technical field, its eligibility in assessing the inventiveness of the utility model is based on the premise of clear technical teaching.

The SPC has recently published Article 12 of the Provisions on Several Issues Concerning the Trial of Administrative Cases Involving the Granting and Affirmation of Patent Rights (I) (Fa Shi [2020] No 8, effective as of 12 September 2020), according to which, the parameters in determining a technical field of a claimed technical solution are as follows.

When determining a technical field of a technical solution as defined in a claim, the people's court shall give comprehensive consideration to the whole content of the claim including subject title, the description of technical field and background technology in specification, function and usage realized by the technical solution and so forth.

A retrospective look into the SPC’s 2012 IP rights annual report indicates that Article 12 may stem from a retrial case CAO Zhongquan vs SIPO (2012, Xing Ti Zi No.7).

Facts

On 27 November 2008, Shanghai Jingkai Apparel Machinery LTD filed an invalidation request before the State Intellectual Property Office (SIPO), predecessor of the CNIPA, challenging the validity of utility model number 200520014575.5 titled “an oil preserving device for a helical gear set in a sharpening mechanism of a cutting machine”, which is owned by a natural person, CAO Zhongquan. In response to the patentee’s reply defending the inventiveness and validity of the patent at issue, Jingkai submitted its observations and evidence on 26 December 2008, wherein the evidence includes annex 5-1, namely, prior art US3672586. 

On 14 April 2009, the SIPO declared all the claims of the patent at issue invalid based on the reasoning that although Claim 1 of the utility model differentiates from annex 5-1 in terms of application environment and transmission structure, Claim 1 is devoid of inventiveness over Annex 5-1. The SIPO opined:

The differences between the technical solution of Claim 1 and Annex 5-1 rest with: (1) the technical solution of Claim 1 refers to a sharpening mechanism of a cutting machine, whereas the application environment of the technical solution of Annex 5-1 refers to a winding machine; (2) an intermediate gear meshes with an external transmission gear, whereas a gear 146 in Annex 5-1 is engaged with a threaded transmission screw.  Turbo-worm drive, cylindrical gear drive, helical gear drive and bevel gear drive are routine technical means in the technical field.  The cutting machine and the winding machine are both mechanical equipment involving the oil-preserving lubrication of gear set.  According to actual needs, it would be easily conceivable and viable for those skilled in the technical field to replace the screw drive of Annex 5-1 with a helical gear drive and to apply the technology of oil-preserving lubrication of gear set in the winding machine to a sharpening mechanism of a cutting machine, so as to obtain the technical solution of Claim 1. Claim 1, therefore, does not possess substantive features and progress over Annexes 5-1.

Court reasoning

The patentee later brought an administrative litigation challenging the SIPO invalidation decision before the Beijing No 1 Intermediate Court (trial court), which on 23 December 2009 upheld the decision at issue, finding: “Both the utility model at issue and prior art Annex 5-1 are mechanical equipment, which concerns the oil-preserving lubrication of gear set. Thus, they belong to the identical or proximate technical field.”  

The patentee then appealed before the Beijing High Court (court of appeal), but to no avail. The appeal court dismissed the appeal on 6 July 2010, finding that: “Although the utility model at issue and Annex 5-1 are applied in different mechanical equipment, both concerns oil-preserving lubrication of gear set in the mechanical equipment and belong to an identical technical field.”

The patentee filed an application for retrial with the SPC, which granted the application on 21 December 2011, and held an open hearing on 5 March 2012. The SPC rendered a retrial decision on 3 May 2012, revoking the first and second instance decisions and SIPO’s invalidation decision and ordering the SIPO to re-make an invalidation decision based on other grounds and evidence adduced by Jingkai. The SPC, however, did ascertain that the utility model at issue and Annex 5-1 belong to an identical technical field:

With respect to the technical field, CAO Zhongquan argued that the IPC of the utility model at issue is different from that of Annex 5-1, and the technical fields thereof are neither identical nor relevant/proximate, and thus Annex 5-1 could not be used as a reference document in assessing the inventiveness of the utility model. The Court is of the opinion that the technical field of an invention or a utility model seeking protection shall be the specific technical field to which the invention or utility model belongs or is directly applied, rather than a technical field in a higher hierarchy or an adjacent technical field or the invention or utility model per se. The determination of the technical field to which the invention or utility model belongs shall be subject to the content defined in the claim, based on the subject title of the invention or utility model and also taking into account the technical function and usage achieved by the technical solution.  The technical content disclosed in Annex 5-1 relates to the lubrication of the winding machine’s lubrication system. The technical solution of the utility model at issue aims to solve the oil-preserving lubrication of the helical gear set of the cutting machine.  Although the winding machine is a textile machinery and the cutting machine an apparel machinery, and their application environment varies, both technical solutions of the utility model at issue and Annex 5-1 relate to the lubrication of the mechanical system and belong to an identical technical field.  Therefore, the SIPO did not err in using Annex 5-1 as a reference document to assess the inventiveness of the utility model. 

In practice, it is customary to use the international patent classification (IPC) and application environment of a utility model and its prior art to determine whether their technical fields are identical or relevant. In cases where a utility model and the prior art have different IPC and application environments but involve the same technical problems, do they still fall under the identical technical field? The SPC gives an affirmative answer in this retrial case.

Comment

Eight years later and the SPC has now promulgated the judicial interpretation – Provisions on Several Issues Concerning the Trial of Administrative Cases Involving the Granting and Affirmation of Patent Rights (I), wherein Article 12 enumerates an array of elements to be factored in the determination of a technical field of a technical solution, which echoes the court’s reasoning in the retrial of Cao Zhongquan vs SIPO.

Nevertheless, the judicial interpretation overlooked a practical issue: when these parameters point to different technical fields, which factor(s) should be given priority in ascertaining a technical field of a technical solution?

Although the subject case fails to provide a straightforward answer to the question, it at least gives a practical example of a utility model and its prior art document being found to belong to an identical technical field, provided that they refer to the same technical problem, even with different IPC and application environment.

For now, stakeholders may not have much to rely upon in ascertaining the technical field of a prior art. Hopes are high that future SPC guiding cases may expound the circumstances as to how Article 12 will be applied and also whether it will be analogously applied by Chinese courts and/or CNIPA in identifying the technical field of a technical solution in a reference or prior art document for novelty and inventiveness assessment purpose.