Interpretation of China's Patent Legal Provisions with Case Studies (Part I)
Ann Yang
2025-12-12 15:16
China's patent legal framework comprises the Chinese Patent Law, Implementing Rules of the Chinese Patent Law, judicial interpretations such as Provisions of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Patent Disputes, Interpretation of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Disputes over Infringement of Patent Rights, Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Disputes over Infringement of Patent Rights (II), and administrative rules including the Patent Examination Guidelines of China. Although China adopts a civil law system rather than a common law system, court judgements concerning relevant disputes, particularly those made by the Supreme People's Court (SPC), remain highly instructive for understanding and applying legal provisions.
We seek to interpret several selected case judgements and their key holdings released by the IP Tribunal of the SPC of China in a two-part series that focusing on patent prosecution (Part I) and patent infringement disputes (Part II), with practical tips for future IP-related endeavors in China.
The selected case judgements are from the Summary of Judgement Key Holdings of SPC IP Tribunal (2024) released in April 2025, available at https://ipc.court.gov.cn/zh-cn/news/view-4234.html.
I. Eligible Subject Matters of Utility Model Patents
【Legal Provisions】
Article 2.3 of the Chinese Patent Law (2020) stipulates:
"Utility model" means any new technical solution relating to the shape, the structure, or their combination, of a product, which is fit for practical use.
In Case 1 below, the SPC applied the 2008 version of the Chinese Patent Law, but the corresponding provision is identical to the 2020 version.
【Current Practice】
The Chinese Patent Law provides that a utility model patent protects products defined by their shape, structure, or the combination. However, in practice, claims may define technical features that appear to be structural but in fact involve material-related description. Whether such claims satisfy the subject matter eligibility requirements is often disputed in utility model invalidation cases. Regarding what constitutes "structure of a product", Section 6.2.2 of Preliminary Examination of Patent Applications for Utility Model (Part I Chapter 2), of the Patent Examination Guidelines of China provides some examples: "A composite layer may be regarded as the structure of the product. Carburized layer, oxide layer and so on of a product pertain to structures of composite layer."
【SPC Case 1】 (2023) SPC IP Admin. Final 607（（2023）最高法知行終607號(hào)）
Key Holdings: If the essential improvement of a technical solution relative to the prior art lies in the shape, structure, or their combination of a product, it constitutes eligible subject matter for utility models. If the essential improvement lies solely in materials or methods themselves without altering the product's shape, structure or their combination, it does not qualify as eligible subject matter under Article 2.3 of the Patent Law.
Case Summary: The case involves a utility model for "Glass Product". The inventive concept aimed to solve the problem that chemically strengthened glass in the prior art could not exhibit the stress profile of thermally tempered glass, thereby improving glass breakage resistance. Claim 1 as granted is as follows: "A glass-based article, comprising a first surface and a second surface opposing the first surface…, defining a thickness (t) of less than about 3 millimeters; and a stress profile extending along the thickness, wherein all points of the stress profile between a thickness range from about 0t up to 0.3t and from greater than about 0.7t to t, comprise the following tangent..."
The patentee argued that the stress layer defined in the claims was equivalent to the carburized layer under the Patent Examination Guidelines of China and thus constituted a structural feature.
However, the SPC held that it did not constitute eligible subject matter. The SPC reasoned that, in the Patent Examination Guidelines’ example, carburized layer is a known material name. When applied to a composite-layer product with a shape or structure, carburized layer defines the product's construction rather than improving the composite layer itself, thus capable of defining a utility model as a structural feature. The patentee failed to prove that the "stress layer" of the present patent was a known material name. Moreover, to solve the technical problem of improving breakage resistance, the patent used ion exchange to create unique stress profile along the glass thickness. All claims defined stress profile (e.g., tangent slopes, maximum CS, maximum CT values, and their ratios) along the glass thickness. Therefore, both the technical problem and technical solution of the present patent demonstrated improvement of the material itself, not the product's shape or structure, and thus could not be recognized as structural features.
II. Assessment of Inventiveness
【Legal Provision】
Article 22.3 of China's Patent Law (2020) states: "Inventiveness means that, as compared with the prior art, the invention has prominent substantive features and represents a notable progress, and that the utility model has sub stantive features and represents progress."
In Cases 2 and 3 below, the SPC applied the 2008 amendment of the Chinese Patent Law, which corresponding provision is identical to the 2020 amendment.
【Current Practice】
In Chinese patent practice, e.g., during the examination of invention patent applications or patent invalidation proceedings, assessing inventiveness requires determining whether or not there exists such a technical inspiration in the prior art as to apply said distinguishing features to the closest prior art in solving the existing technical problem (that is, the technical problem actually solved by the invention). Such motivation would prompt a person skilled in the art, when confronted with the technical problem, to improve the closest prior art to reach the claimed invention.
"Teaching away" is a useful argument by applicants for inventiveness of an invention. It is generally considered as an opposite inspiration in the prior art contrary to the aforementioned technical inspiration, which would deter the person skilled in the art from applying the distinguishing features to the closest prior art.
【SPC Case 2】 (2023) SPC IP Admin. Final 182（（2023）最高法知行終182號(hào)）
Key Holdings: If the closest prior art lacks intrinsic relevance to the invention’s technical problem (or objective) of the invention, or contain teaching away, the person skilled in the art would generally lack motivation to achieve the invention from the closest prior art as a starting point.
Case Summary: Claims 1-2 of the patent involved seek to protect a "telescoping plate connection structure", Claim 3 further defines an "telescoping elevator car" characterized by configured with said structure. The specification states: "This utility model provides a telescoping elevator car that adjusts the car size according to the elevator shaft dimensions, allowing the elevator car to telescope in the front, back, left and right as needed... "
The focus of debate lies in whether there was a motivation to combine Evidence 3 (a patent titled "Length-Adjustable Elevator Beam") and Evidence 4 (a patent titled "Elevator Car") to conclude that Claim 3 lacks of inventiveness. Evidence 3 disclosed in its specification that the prior art relates to an integral structure with a non-adjustable beam length, which fails to accommodate the diverse specifications of different buildings, while the present utility model aims to provide a length-adjustable elevator beam, effectively overcoming the limitation of non-universality inherent in existing fixed beams. Evidence 4 describes in the specification that "Compared with the prior art, this utility model has the advantage of forming a stable car frame with the elevator car enclosure and the roof."
The SPC held that, based on the distinguishing technical features of Claim 3 of this patent in comparison with Evidence 4, the technical problem actually solved by Claim 3 was how to adjust the size of the elevator car to to accommodate elevator shafts of various dimensions, thereby achieving the technical objective of enabling a single elevator to serve multiple purposes. Meanwhile, Evidence 3 taught a telescoping structure for adjusting beams to solve beam non-universality in elevator beams, but it does not offer any technical teaching on adjusting the size of elevator car. On the other hand, the technology of Evidence 4 does not require adjusting the size of the elevator car. Therefore, there is no motivation (or teaching) to combine the technologies of Evidence 3 and Evidence 4.
【SPC Case 3】 (2023) SPC IP Admin. Final 413（（2023）最高法知行終413號(hào)）
Key Holdings: Teaching away is still part of assessment of technical inspiration. Therefore, to determine whether the prior arts contain teaching away, it must be based on the technical problem actually solved by the invention. If the disclosure of the prior art does not hinder a person skilled in the art from solving the technical problem actually solved by the invention, it generally does not constitute teaching away.
Case Summary: The invention application related to a "wire connection contact element", was rejected for lacking inventiveness during examination. The debate centered on whether the references contained teaching away.
The applicant argued that there was teaching away in Reference 1. Specifically, one of the distinguishing features of the application was that the curved region of the support surface's material portion differed from Reference 1 in bending direction and bending angle, and solving the problem of increasing support area for higher reliability. If the material portion of Reference 1 was bent in the same manner, it would lose its critical function of suppressing conductor swing in Reference 1. Therefore, Reference 1 provided teaching away.
However, the SPC held that the technical problem actually solved by the invention involved was to provide a larger support surface for higher reliability. If the disclosed content of the prior art did not constitute an obstacle for those skilled in the art to solve the technical problem, it was generally not considered to constitute teaching away. To solve this technical problem, a person skilled in the art, starting from the position and structure of the relevant components disclosed in Reference 1, would be motivated to abandon Reference 1’s swing suppression function to reach the part’s structure to act as a support surface as in Claim 1 of the invention. This modification was obvious and required no inventive effort. Thus, Reference 1 did not constitute teaching away.
