table of contents
I. Introduction
2. Criteria for recognition in the field of technology
(1) The technical field and the "three-step method" judgment rules
(2) The influence of the application field on the judgment of the technical field
(3) Conversion to the field of invention, combined invention and technology
III. Conclusion
I. Introduction
The legislative purpose of the Patent Law is to protect the legitimate rights and interests of patentees, encourage inventions and creations, promote the application of inventions and creations, improve innovation capabilities, and promote scientific and technological progress and economic and social development. It can be seen that the patent system should not only safeguard the legitimate rights and interests of patentees, but also fully consider the legitimate rights and interests of the public, so as to achieve a balance between the two. In order to achieve this balance, it is necessary to set reasonable standards for granting patents. For invention or utility model patents, it is necessary to establish reasonable criteria for judging inventive step. If the inventive step standard is set too low, it will make it easier for patent applications with a low degree of innovation to be granted or invalidated, which will inevitably restrict the dissemination and utilization of technology, which is not conducive to scientific and technological progress and social development, and harms the interests of the public. If the inventive step standard is set too high, it will be much more difficult to grant a patent application, which will detract from the incentive effect of patent law on technological innovation. Article 22 of the Patent Law stipulates that the inventiveness of an invention refers to the invention having outstanding substantive features and significant progress compared with the prior art, and the inventiveness of a utility model refers to the substantive characteristics and progress of the utility model compared with the prior art. It can be seen that the inventive step standard of a utility model patent stipulated in the Patent Law is lower than that of an invention patent. The determination of whether an invention-creation is inventive shall be based on the knowledge and ability of a person skilled in the technical field to which it belongs, and by comparing the technical solution of the invention-creation with the prior art. The inventive step criteria for invention patents and utility model patents are different, so the prior art fields considered in technology comparison should also be different, which is an important aspect reflecting the difference between the inventive step standards of invention patents and utility model patents.
The technical field refers to the specific technical field to which the claimed invention or utility model belongs or is applied, and is not a superior or adjacent technical field, nor is it the invention or utility model itself. [1] When determining the technical field of a technical solution limited by a claim, the people's court shall comprehensively consider all the contents of the claims such as the title of the subject matter, the description of the technical field and background art, as well as the functions and uses realized by the technical solution. [2] The technical field is one of the prerequisites for the determination of inventive step, and when making the judgment of inventive step, the characteristics of the technical field to which the patent application belongs should be fully considered, and the judgment should be made based on the knowledge level of those skilled in the art. In particular, for the judgment of the inventive step of a utility model patent, the technical field is directly related to whether the comparison document can be used as prior art. Although the Guidelines for Patent Examination and the corresponding judicial interpretations provide principled provisions on the determination of the technical field, the judgment of the technical field is often extremely controversial when it comes to the case itself. This paper sorts out the cases involving the identification of the technical field, starts from the perspective of "clarifying the judgment of technical enlightenment", "technical issues", "application fields", and the relationship with "diversion of invention" and "combination invention", refines the rules for the identification of the technical field in judicial practice, and puts forward suggestions and opinions on the existing problems, and discusses the judgment of inventiveness and the impact of the technical field on the prior art defense.
2. Rules for the identification of technical fields
01/The technical field and the "three-step method" judgment rules
As we all know, judging "inventiveness" usually adopts a "three-step method" judgment method, the first step is to determine the closest prior art. The second step is to determine the distinguishing features of the invention and the technical problems that the invention actually solves. The third step is to determine whether the claimed invention is obvious to a person skilled in the art, that is, whether the prior art gives an inspiration to apply the above-mentioned distinguishing technical features to the closest prior art and solve the existing technical problems (the technical problems actually solved by the invention).
However, in order to distinguish between inventions and utility models, the Patent Law makes a distinction. [3] The Guidelines for Patent Examination define the technical fields of the two rules: for invention patents, it is necessary to consider not only the technical field to which the invention patent belongs, but also its similar or related technical fields, as well as other technical fields in which the technical problems to be solved by the invention can prompt those skilled in the art to seek technical means.
In the case of a utility model patent, the focus is generally on the technical field to which the utility model patent belongs. However, if a clear revelation is given in the prior art, for example, there is a clear record in the prior art, prompting those skilled in the art to search for relevant technical means in a similar or related technical field, the similar or related technical field may be considered. [4] In the author's opinion, according to the Patent Examination Guidelines, the judgment of the technical field should still return to the "three-step method" in essence, and the technical field should not be a prerequisite for judging inventive step.
1. There is no clear technical inspiration
(1) "Grip dynamometer" case
In the dispute over the confirmation of the utility model patent entitled "grip dynamometer"[5], claim 1 protects a grip dynamometer, and one of the points of dispute is that the portable digital display scale of Evidence 2 is the same, similar or different technical fields of the patent constituted by the portable digital display scale. In this regard, the State Intellectual Property Office believes that the patent claims to protect a grip dynamometer for measuring the grip force of the human hand, and evidence 2 discloses a portable digital display scale, and the force direction and structure of the sensors of the two are the same, and the difference between the two is only that the force object is different when measuring the force, and they all belong to the technical field of the force measuring device in a broad sense. Considering from the final product form of the two, the two should also belong to similar technical fields, in the actual design of the force measurement device, the gravity measurement device and the grip force measurement device are all using the pressure sensor or tension sensor commonly used in the force measurement field, for the technical personnel in the art, it is easy to think of the replacement of the sensor, and it is obvious and does not need to pay creative labor.
The Beijing High People's Court held that the patent in question claimed to protect a kind of handshake dynamometer, and the technical problem to be solved was to provide a hand-held dynamometer with accurate detection, simple structure and convenient operation, while Evidence 2 disclosed a portable digital display electronic scale and a gravity measurement device, and the purpose of the invention of the two and the direction of force on the sensor were different, and they belonged to different technical fields, and those skilled in the art could not easily think of applying sensors in other technical fields to this field.
The Supreme People's Court held that the patent involved in the case was a utility model patent named "Grip Ergometer", and to determine whether it had an inventive step, it should first determine the technical field to which the Grip Ergometer belongs, as well as the related and similar technical fields. The determination of the technical field shall be based on the content limited by the claims, and shall generally be determined according to the subject matter of the patent, combined with the technical functions and uses realized by the technical solution. The lowest position of a patent in the International Patent Classification provides a reference for the determination of its technical field. The similar technical field generally refers to the field that is similar to the function and specific use of the utility model patent, and the relevant technical field generally refers to the functional field in which the distinguishing technical features of the utility model patent and the closest prior art are applied. The technical function of the patent involved in the case is a force measuring device, and the specific purpose is to measure the grip strength of a human hand.
In this case, the technical solution of claim 1 of the patent in question is different from the content disclosed in the closest prior art evidence 7 (a physical force tester), and the technical feature is that the load sensor is different, and the force sensing device is the relevant technical field of the patent in question. In order to evaluate the inventiveness of the load cell, the CNIPA considered Exhibit 2 (a portable digital display scale for gravity measurement) and compared its load cell with the sensor in the patent in question. Although both a handgrip dynamometer and an electronic scale are force measuring devices, they each serve a different specific purpose. At the same time, compared with the grip force of gravity and human hand, the force object is different, the direction of force is also different, gravity is simply downward, and the grip force of human hand is not simply downward but from the periphery to the center, so the two do not belong to the same technical field. However, the patent in question has the same function and similar use as the portable digital display electronic scale, and the force measurement principle of the two load cells is basically the same, and the portable digital display electronic scale can be regarded as a similar technical field of the patent in question.
However, since the prior art did not give clear technical enlightenment, the State Intellectual Property Office made an error in applying the law when considering the load cell of the portable electronic scale when evaluating the inventiveness of the patent in question. In the present case, prior art in the same, similar, and related technical fields has a different role in commenting on inventive step. When commenting on the inventiveness of a utility model patent, if the closest to the prior art is combined with a related or similar prior art, the condition is that a clear technical inspiration is given in the relevant and similar technical solutions, and the clear technical inspiration refers to the technical inspiration clearly recorded in the prior art or the technical inspiration that a person skilled in the art can directly and undoubtedly determine from the prior art.
(2) "Oil retention device" case
In a utility model patent dispute entitled "Oil Retention Device for Helical Gear Set in Cutter Sharpening Mechanism"[6], the patent in question claimed to protect an oil-retaining device for helical gear set in the cutter sharpening mechanism. Annex 5-1 used by the Requestor discloses the lubrication of gears in the winding machine. The original trial court held that the cutting machine grinding mechanism and the winding machine are both mechanical equipment, and both involve the problem of oil-retaining lubrication of the gear set (although the present patent is different from the mechanical equipment applied in Annex 5-1, they both involve the oil-retaining lubrication of the gear set in the mechanical equipment and belong to the same technical field). ）。 The right holder asserts that the present patent is different from the international classification symbols of Annex 5-1, and that the two are neither the same technical field, nor are they similar or related technical fields, so they cannot be used as a comparative document for judging the inventive step of the patent. The Supreme People's Court held that the determination of the technical field to which the invention or utility model belongs shall be based on the content limited by the claims, and shall generally be determined according to the title of the subject matter of the patent, combined with the technical function and use realized by the technical solution. The technical content disclosed in Annex 5-1 relates to the lubrication problem of the lubrication system of the winding machine, and the technical solution of this patent is to solve the oil-retaining lubrication problem of the helical gear group of the cutting machine. Although the winding machine belongs to the textile machinery and the cutting machine belongs to the garment machinery, the two are different in the application environment, but the technical solutions of the patent and the comparative documents all involve the lubrication of the mechanical system and belong to the same technical field.
However, the present patent is an oil-retaining device for the helical gear group in the cutting machine grinding mechanism, and according to the claims and the description of the present patent, in order to achieve its invention purpose, the patent discloses an oil baffle wall around the helical gear position and the intermediate gear position, and the splashed lubricating oil is retained around the helical gear; The main technical problem to be solved by the technical scheme of the lubrication system disclosed in Annex 5-1 is the effective delivery of lubricating oil to lubricate the internal components of the winding machine, rather than to prevent the lubricating oil from splashing and polluting the cloth. For those skilled in the art, on the basis of seeing the technical scheme disclosed in Annex 5-1, the technical characteristics of the shield 200 and the baffle plate 206 in the lubrication system are improved without motive, and then applied to the cutting machine grinding mechanism to solve the technical problem of preventing lubricating oil splashing and keeping lubricating oil around the helical gear to be solved by the present patent. Therefore, Annex 5-1 does not have any technical inspiration for those skilled in the art to obtain the technical solution and technical effect of the patent for which they can obtain the protection claimed.
2. Have a clear technical inspiration
(1) The case of "safety bottle cap".
In the dispute over the confirmation of the utility model patent named "a safety bottle cap"[7], the exclusive claim 1 in question in question requests the protection of a safety bottle cap, and evidence 1 discloses a water cup cover with a straw, and the difference between the two is that claim 1 of the patent limits the relevant technical features of the "push rod" and the ventilation device of the ventilation valve. Exhibit 4 discloses a medical stopper. The right holder argues that the products of Evidence 1 and Evidence 4 belong to different technical fields, and that Evidence 4 stops flowing a closed liquid, such as an infusion liquid, and that the patent stops flowing an open circulating gas. The Supreme People's Court held that the technology involved in this patent is in the field of product packaging, and the function and function of the ejector rod are to control the discharge of hot gas by locking the nozzle to ensure the safety of use. Exhibit 4 and Exhibit 1 disclose the contents of the interception of the hose by pushing the push rod inward to deform the hose, and the realization of the flow of the hose by pulling the push rod outward to restore the initial state of the hose. Although Exhibit 4 deals with the field of medical devices, Exhibit 4 discloses the content of blocking and circulating gases or liquids by controlling the left and right movements of the ejector rod, and there is a clear teaching. Therefore, a person skilled in the art has an incentive to apply the above-mentioned technical means in evidence 4 of a similar technical field to the product packaging. The clear teaching in this case should refer to a clear technical revelation.
(2) "Charging device" case
In the invalidation procedure of the utility model patent entitled "absorption charging device"[8], claim 2 refers to claim 1, and its additional technical features further limit the structure of the transmission assembly, while comparative document 3 discloses a method for supplying power to the trading device, the power supply module and the electrical components of the trading device. The patentee argues that the transmission mechanism of the comparison file 3 is used for ATM, which is different from the technical field of the patent, and the transmission medium is different. In this regard, the State Intellectual Property Office believes that the patent is a utility model patent named "absorption charging device", and the field of application of the transmission assembly with the distinguishing feature of the closest prior art comparison document 1 is the relevant technical field of the patent. Comparison Document 3 is indeed a transmission mechanism on an automated trading device (ATM), but it also discloses a transmission mechanism used in vending machines, various trading devices such as exchange devices (see paragraph 0001 of the instruction manual of comparison document 3), and the roller structure of the utilization of pulley transmission roller assembly disclosed in comparison document 3 belongs to the common transmission mechanism in the field of mechanical transmission, and a clear technical enlightenment has been given, and the pulley transmission roller assembly can be utilized, therefore, only in terms of the transmission assembly in the additional technical features, the transmission mechanism in comparison document 3 is only used in other technical fields to transmit different conveying mediums. The technical field of the comparison document 3 belongs to the relevant technical field of the transmission assembly of the present patent, and the comparison document 3 gives a clear technical enlightenment, and the person skilled in the art has clearly given the technical enlightenment that the rubber roller can be used to transmit the battery of the charged device according to the comparison document 3 under the technical enlightenment that the rubber roller can be used to transmit the battery of the charged device, according to the enlightenment that the comparison document 3 further gives the transmission of the motor and the pulley to the driving roller, so that the person skilled in the art has the motivation to further improve the scheme of combining the motor driving rubber roller transmission battery in the comparison file 1, so as to obtain the technical scheme of using the roller structure of the motor drive belt drive roller assembly to transmit the charged device。
(3) "Water valve adjustment handle" case
In the procedure for confirming the right of the utility model patent entitled "a high-sensitivity water valve regulating handle" [9], claim 1 of the present patent requests protection of a high-sensitivity water valve regulating handle, including a handle lower cover arranged at the bottom of the handle mounting pad and a counterweight arranged between the handle mount and the handle lower cover, evidence 1 is a faucet installation structure, and the patent is a water valve adjusting handle, therefore, the two belong to the same technical field. The structure of the counterweight is not disclosed in Exhibit 1. It can be seen from this that the technical problem actually solved by the present patent relative to Evidence 1 is to increase the weight of the handle and improve the sensitivity of operation. Evidence 4 discloses a knob switch structure in the cab, and the evidence discloses the technical concept of arranging a counterweight assembly in the knob and positioning the annular counterweight block on the counterweight frame in order to solve the technical problems of light knob and poor stability, so as to ensure the stability of the knob operation. Judging from the subject name, the patent is "water valve adjustment handle", and evidence 4 is "human-computer interaction operation switch in the cab", although the two have different application environments, but from the functional point of view, both are switches. For those skilled in the art, whether the prior art gives a technical enlightenment for installing a configuration block in a switch. The Supreme People's Court held that, driven by the technical problem of increasing the weight of the handle to improve operational sensitivity, a person skilled in the art to which the patent belongs was motivated to seek enlightenment in the prior art related to the switch structure [this is not a clear technical enlightenment]. Although it is not explicitly mentioned in Exhibit 4 that the use of counterweights is to solve the technical problem of improving the sensitivity of operation, it can ensure the stability of the operation of the knob and will inevitably improve the sensitivity of the operation, and there is no obvious difference from the purpose of the invention to be achieved by the present patent. Therefore, those skilled in the art have the motivation to apply the counterweight disclosed in Exhibit 4 to Exhibit 1 to solve the same technical problem, so there is a combined technical enlightenment in Exhibit 1 and Exhibit 4. In this case, the Supreme People's Court returned to the technical issue itself, although the technical fields of the application of the "configuration block" technical scheme are different, starting from the "three-step method" of inventive judgment, and then evaluating whether the comparative documents give technical enlightenment, this return to the starting point of inventive judgment is in line with the law of invention and creation, and should be taken seriously.
3. Identify the technical field from the perspective of technical issues
It is necessary to judge the technical problems actually solved by the patent and the technical problems actually solved by the comparison documents, and the relationship between the two is particularly important for the judgment of the technical field. If the two are the same or similar, they should be considered to belong to the same or similar technical field, even if there is a difference in the subject matter of the invention. [10] In other words, when judging the technical field, if the technical solution of the claimed protection and the technical solution of the comparison document solve the same specific problem, they can be considered to belong to the same technical field.
(1) "Computer radiator" case
In the procedure for confirming the right to a utility model patent named "laptop radiator"[11], Annex 1-1 used by the petitioner discloses a laptop bracket, which can also be used as a heat sink (Annex 1-1 is designed to solve the problem that the laptop is not easy to dissipate heat when placed flat on the desktop), and the right holder believes that the two belong to different technical fields. In this regard, the Beijing Higher People's Court held that claim 1 requested the protection of a laptop radiator, and Annex 1-1 disclosed a laptop bracket. The background technology part of Annex 1-1 states that Annex 1-1 is to solve the problem that the laptop is not easy to dissipate heat when placed flat on the desktop. Therefore, claim 1 and Annexes 1-1 are both designed to solve the problem of heat dissipation in notebooks and belong to the same technical field.
(2) Proposal for "health equipment"
In a dispute over the confirmation of a utility model patent titled "health device"[12], the utility model involved in the case provided a health device to facilitate the user's health care and help him maintain his health. "Health device" of the utility model refers to a device that can provide health care, rehabilitation, nursing, massage or any combination thereof. Those skilled in the art should be able to understand that the health device can also be used for other body parts such as the neck, and the utility model does not limit in this regard. Exhibit 2 discloses a "massage pillow" with a massage function. It can be seen that the technical fields involved in this patent and Exhibit 2 are similar to the technical problems to be solved.
(3) The "dumbbell" case
In the procedure for confirming the rights of a utility model patent named "dumbbell"[13], the rights involved in the case claimed protection of a dumbbell. The utility model aims to provide a dumbbell to solve the problem that existing dumbbell production cost is high, and skin and OEM are easy to fall off. In order to achieve the above purpose, the technical scheme adopted by the utility model is...... The signboard is integrally formed at the end of the cladding layer by adopting a hot-pressing molding process. Exhibit 10 discloses a wheel trim cover for wheel covers, which are not easy to loosen and fall off when pressed on the wheels, and can combine the characteristics of each part. The top surface of described wheel trim cover has a one-piece hot-pressed molding or injection-molded product logo and/or decorative pattern. The Supreme People's Court held that, judging from the title of the subject, the patent is "dumbbell" and evidence 10 is "wheel decorative cover", although dumbbell and wheel decorative cover do not belong to the same or similar technical field, what should be resolved in this case is whether the prior art gives a technical enlightenment on how to make the sign and the cladding layer integrally formed, and driven by this technical problem, a person skilled in the art to which the patent belongs has the motivation to seek enlightenment in the prior art related to the integrated molding process technology. Although the decorative cover of Exhibit 10 is used in the automotive field, it also involves the technical problem of how to combine the signage with the object to be decorated. Exhibit 10 is in a similar technical field to the present patent when it is used to solve the technical problem to be solved in comparison with Exhibit 1.
(4) "Plastic formwork" case
In the utility model patent confirmation procedure named "a plastic template that forms a void under the building surface layer" [14], the technical problem solved by the patent is: when the utility model is applied to the kitchen and bathroom floor, the ground water can be discharged from the void layer, so that the ground does not slip. The comparative document used by the Requestor, 1, discloses "an underground drainage combination that protects the structure of the building by blocking the flow of liquids below the surface", which consists of a layer of foundation elements with parallel first (front) and second (reverse) flat surfaces, forming intersecting drainage layers that allow for the continuous flow and discharge of fluids from the side and vertical. The patentee believes that the comparative document 1 is different from the technical field of the patent. In this regard, the Beijing Higher People's Court held that the National Patent Classification Scheme is intended to facilitate retrieval and systematically publish or publish patent documents to the public, and is not the only basis for distinguishing whether they belong to the same technical field. Whether the comparison document and the patent belong to the same or similar technical fields shall be comprehensively judged from the technical solutions, technical inspirations and technical problems that can be solved in the same technical fields. The patent specification states that the patent can be used as a base mold for the surface layer of the building to realize functions such as drainage, heat insulation, and threading. Comparative Document 1 discloses an underground drainage system for buildings. Although they have different positions in the lowest classification of the International Patent Classification, their application areas include underground drainage and both solve technical problems related to drainage. In this case, the court held that the patent and the comparative document 1 belonged to the same technical field on the basis that the technical problems solved by the two were the same.
(5) "Handwriting input device" case
In a dispute over the confirmation of a utility model patent entitled "portable handwritten electronic input device"[15] The problem that relates to this patent is that the handwritten electronic input device that is seen on the market at present all need to additionally use the installation software CD provided by the operator or need to download the software installation program on the network, so that there is more installation and use process, so that the user feels the inconvenience of use; Comparison file 2 exposes the first enclosure 102 of the device having a storage device driver, and transmits the driver stored in the enclosure to a network terminal through a USB interface for installation. The right holder believes that the comparative document 2 and the present patent belong to different technical fields, and the technical problems to be solved by the two are also different. The Beijing Intellectual Property Court held that although in the process of evaluating the inventiveness of a utility model patent, the technical field to which the utility model patent belongs is generally considered, if a clear revelation is given in the prior art, for example, if there is a clear record in the prior art, prompting a person skilled in the art to search for relevant technical means in a similar or related technical field, the similar or related technical field may be considered. In this case, although the comparison document 2 discloses a device with built-in broadband dial-up function and the present patent is a handwritten electronic input device, both of them are faced with the technical problem of "how to quickly install and use the external device", so on the basis of the technical information of transmitting the driver stored in the storage module to the network terminal and installing it through the USB interface in the comparison document 2, when a person skilled in the art is faced with the technical problem of "how to quickly install and use the external device", There is a motive to apply the first enclosure 102 of the storage device driver disclosed in the comparison file 2 and the USB interface that transmits the driver stored in the enclosure to a network terminal for installation in the comparison file 1, and obtains the technical solution of claim 1 of the present patent for the protection requested. In this case, the court actually avoided the identification of the technical field, and directly returned to the starting point of the "three-step method", and analyzed whether the comparative documents gave technical enlightenment. In the author's opinion, this rule is in line with the actual process of invention and creation, and avoids the artificial separation of the creative capacity of "persons skilled in the technical field" when making inventions and creations.
02/The influence of the application field on the judgment of the technical field
1. The field of application has no influence on the judgment of the technical field
In the judgment of the technical field, if the technical means, corresponding functions and effects are the same, it is only the field in which the technical means are applied is different, and it shall be determined that the technical field is the same.
(1) "Lightning protection device" case
In a dispute over the confirmation of the utility model patent entitled "lightning protection device for helicopter L-shaped airspeed tube electric heating de-icing system"[16], the patent in question claimed protection for a lightning protection device for the helicopter L-shaped airspeed tube electric heating de-icing system. Evidence 2 is a national standard, and the main technology used is to set up a surge protector (also called a lightning protection device) to achieve lightning protection, which is a device used to suppress transient overvoltage and shunt current surge current. The right holder argued that the content contained in Exhibit 2 did not belong to the same technical field as the patent in question, and the general provisions of Exhibit 2 clearly provided that it only applied to buildings. The Supreme People's Court held that although the lightning protection device in the present patent is applied to the electric heating de-icing system of the helicopter airspeed tube, and the surge protector in Exhibit 2 is applied to the building, the lightning protection device and the surge protector have the same function, both are in a high-resistance state under normal conditions, and provide a discharge channel for lightning in the lightning strike state. Therefore, the present patent and Exhibit 2 are only different in the field of application, but in terms of the function of the lightning protection device, the two belong to the same technical field.
(2) "Ultrasonic beauty instrument" case
In a dispute over the confirmation of a utility model patent titled "a focused ultrasonic beauty device"[17], claim 1 claimed protection of a focused ultrasound beauty device. Both parties acknowledge that the mode of motion disclosed in Exhibit 1 is the same as that of the present patent. However, the right holder believes that Evidence 1 is an ultrasound probe used for medical oral examination. The present patent is an ultrasound focusing beauty device for beauty treatment, and the two fields are not the same. The Beijing Intellectual Property Court held that since Exhibit 1 involves the use of ultrasonic signals to inspect the test object, and the present patent relates to the use of ultrasound for cosmetic treatment, both of them involve the application field of ultrasonic technology, but the specific application parts are different, but there is no substantial difference in terms of technical principles and technical means, so the two belong to the same or similar technical fields. In this case, the court was biased in defining the field of application as the field of ultrasonic technology, which is a technical means, and the field of application of the two should be medical testing, so they should belong to the same technical field.
2. The application field has a substantial impact on the judgment of the technical field
(1) Case of "cathode and anode structure of lithium-ion batteries".
In an administrative dispute over a utility model patent entitled "Connection Structure of Positive and Negative Electrodes of Lithium-ion Power Batteries and Guide Pin Tab Tabs"[18], the claims involved in the case protected a connection structure between the positive and negative electrodes of lithium-ion power batteries and the guide pin tab tabs. The Supreme People's Court held that, compared with the comparison documents, the claims of this patent differ in that there is a bonding layer formed by pressure welding between the contact surface of the positive and negative metal foil and the tab of the guide pin, and the binding layer of the positive and negative metal foil and the tab is electrically connected in full contact. Based on the above-mentioned distinguishing technical features, it can be seen that the technical problem to be solved in the claims of this patent is how to solve the ignition phenomenon sometimes generated at the riveting place between the guide pin tab and the positive and negative metal foils of the battery due to the use of local riveting. This patent relates to the technical field of lithium-ion batteries, and Annexes 2 and 3 relate to the engineering technology field of aluminum electrolytic capacitors, and the two do not belong to the same technical field.
Patents in question
Annex 3
The technical field has a significant impact on the establishment of prior art defenses. This is because the technical field is the basis for judging novelty and inventive step, and the technical field is also a factor that needs to be considered when determining infringement. Therefore, when raising a prior art defence, the technical field of the prior art should also be taken into account. However, inconsistent determinations may be made in the technical field at the stage of determination of infringement and at the stage of authorization and confirmation.
In the case related to the above case[19] When the defendant used the comparative documents used in the right confirmation procedure to raise a prior art defense, the Guangzhou Intellectual Property Court held that when examining the prior art defense, it should compare the technical features of the claimed patent in the plaintiff case with the corresponding technical features in the prior art solution of the notarized sealed battery, and determine whether the corresponding technical features that are sued falling within the protection scope of the plaintiff's patent in question are the same or not substantially different from the corresponding technical features in a prior art solution. At the same time, the law does not limit that the comparative technology cited in the prior art defense must be in the same field as the patented technology, and in this case, the comparison of all the technical features that will fall within the protection scope of the plaintiff's patent in question with the corresponding technical features in the technical solution graphics and text of the comparison document shows that the corresponding technical features of the defendant falling into the protection scope of the plaintiff's patent are the same as the corresponding technical features in the technical solution of the comparison document, so the prior art defense raised by the defendant is established.
(2) "Medical Flow Sensor" case
In the dispute over the confirmation of the utility model patent entitled "flow sensor and flow sensor mounting assembly"[20], the claim in question protected a flow sensor mounting assembly. The Beijing Intellectual Property Court held that because the patent involved in the case involved two different sensors, the inspiratory flow sensor and the expiratory flow sensor, in the case of using the flow sensor with basically the same external structure at the same time, in order to avoid medical accidents or improve recognition, a person skilled in the art could easily think of distinguishing between an inspiratory flow sensor and an expiratory flow sensor by preventing misassembly. In this case, the mechanical structure of the flow sensor is actually improved, so the technical field should be the design of the mechanical connection structure. Comparison file 6 discloses the function of preventing the misassembly of two plugs by setting one of the protrusions or grooves in the mechanical structure. When faced with the technical problem of how to set up the anti-misassembly structure, those skilled in the art can get technical enlightenment from the comparison documents. In the retrial, the Supreme People's Court held that [21] the comparison document 6 is an electrical connector connection assembly, which is commonly found in the technical field of sockets and connectors related to electricity, and is far away from the technical field of respiratory flow sensor for anesthesia machines to which the patent belongs, and it is difficult for those skilled in the art to obtain clear enlightenment from the comparative documents that are far away from the technical field. In this case, the court of first instance determined the technical field according to the technical problem, that is, to solve the technical problem of preventing misassembly, it was to improve the mechanical structure, and therefore, the technical field was determined to be the design field of the mechanical connection structure. However, the Supreme People's Court determined the technical field based on the title of the subject, so the connection component of the electrical connector was far away from the technical field of the respiratory flow sensor of the anesthesia machine to which the patent belonged, and thus rejected the conclusion of the original trial court that the technical field was determined based on technical issues.
Patents in question
Compare file 6
(3) The case of "mobile phone lens film".
In the case of a dispute over the confirmation of the utility model patent entitled "a mobile phone lens film", the patent protects a mobile phone lens film for the protection of mobile phone lenses. Evidence 1 discloses a protective film for the camera module, which comprises a light-transmitting layer, a silica gel layer and a molded part, wherein the molded part is used as an intermediate layer of the protective film, mainly so that the protective film has a certain thickness, for example, the depth of the accommodating cavity may be slightly greater than the protruding part of the lens through the thickness of the molded part, so that when the protective film is attached to the camera module, the protruding part of the lens is accommodated in the accommodating cavity of the protective film, and reserve a gap between the lens and the light transmission layer of the protective film, so as to better protect the lens and prevent other foreign substances from entering the accommodating cavity and polluting the lens. The protective film is only used for protecting the lens of the camera module in the turnover, transportation, and production process of the camera module, and in the use or other necessary processes, the protective film needs to be torn off. The State Intellectual Property Office held that Exhibit 1 was different from the patent in question in terms of technical fields and purposes. In this regard, the Beijing Intellectual Property Court held that although the patent is limited to a mobile phone lens film, a protective film for a camera module disclosed in Exhibit 1 both belong to the field of lens protective film. Although the description of evidence 1 mentions that it is only used for turnover and transportation, and the protective film needs to be torn off in other processes, the above limitation is not aimed at the limitation of the structure and function of the protective film, nor does it make a difference in the understanding of the technical solution. Even though this patent limits the mobile phone lens film, its application scenarios also have turnover and transportation, both of which have the need and technical problems to provide protection for the lens from falling or being impacted. Therefore, they belong to the same technical field.
Patents in question
Evidence 1
(4) Case of "aluminum gate CMOS circuit".
In the utility model patent confirmation dispute entitled "Layout Structure of Aluminum Grid CMOS Double-layer Metal Wiring" [23], the subject matter of claim 1 is a double-layer metal wiring structure of aluminum grid CMOS. Exhibit 3 discloses the silicon gate CMOS metal wiring structure, which belongs to the field of silicon gate CMOS integrated circuits, and does not disclose any technical content involving "aluminum gate". Exhibits 1, 2, 3, 5, 6, and 7 are all disclosed in the field of silicon gate CMOS integrated circuits, and none of them disclose any technical content involving "aluminum gate". The Beijing Intellectual Property Court held that in the field of semiconductor integrated circuits, although in the process of technological development, aluminum gate integrated circuits appeared first, and silicon gate integrated circuits were improved and developed on the basis of aluminum gate integrated circuits, due to the different characteristics of silicon gate and aluminum gate (such as melting point, etc.), silicon gate integrated circuits and aluminum gate integrated circuits adopt different layout structures and process processes, and they are developing in their different fields. The size of the features is different, and the two have their own advantages and disadvantages, the main application fields are different, and the speed of development is also different. That is, silicon gate CMOS integrated circuits and aluminum gate CMOS integrated circuits belong to different technical fields, and the design and structure of the two cannot be directly used or replaced. The Supreme People's Court held that although the development of gate materials from aluminum to silicon is indeed an improvement of semiconductor devices, the difference between aluminum gate and silicon gate has no substantial impact on the technical scheme of the double-layer metal wiring layout structure adopted in this patent, and the selection of gate material should not be regarded as a technical contribution to this patent. Therefore, the patent has the same function and similar purpose as the silicon gate CMOS double-layer metal wiring structure, and the principle of improving the CMOS integration is basically the same, and the silicon gate CMOS double-layer metal wiring structure can be regarded as the same or similar technical field of the present patent.
03/Conversion to the field of inventions, combined inventions and technologies
The Guidelines for Patent Examination illustrate the determination of inventive step of several different types of inventions, including combination inventions and diversion inventions, and the classification of such invention types is mainly based on the characteristics of the distinguishing features of the invention from the closest prior art. According to this rule, in the case of a diversion invention or a combination of inventions, the judgment of the technical field is actually a judgment of the relevant technical field.
1. Switching to inventions
Section 4.4 of Chapter 4.4 of Part II of the Patent Examination Guidelines stipulates that the transfer of an invention refers to the transfer of prior art in one technical field to another technical field. When judging the inventiveness of the transferred invention, it is usually necessary to consider: the distance of the technical field to be transferred, whether there is corresponding technical enlightenment, the difficulty of transfer, whether it is necessary to overcome technical difficulties, and the technical effects brought about by the transfer.
In the case of different technical fields, if the corresponding patent rights have the characteristics of the transferred invention, the court will judge whether the technical fields are the same through the rules of the transferred invention.
(1) "Aircraft" case
The name is "propeller and aircraft with such propellers" The difference between claim 1 of this patent and evidence 1 is that: first, the patent relates to a propeller, and evidence 1 relates to a fan; second, the propeller in claim 1 of the patent comprises a propeller connected to a connector, correspondingly, the transmission shaft is used to drive the propeller to rotate, and the direction of rotation of the propeller when working is opposite to the tightening direction of the first screw joint, while evidence 1 comprises a fan blade connected to the hub, the motor output shaft is used to drive the fan to rotate, and the direction of rotation when the fan is working is opposite to the tightening direction of the nut。 The right holder believes that the patent and evidence 1 belong to different technical fields, the patent is about the propeller technical scheme of the aircraft, and evidence 1 is the axial fan used for air conditioning, and the technical fields, working principles, and technical problems to be solved are different, and those skilled in the art cannot obtain the technical inspiration of the patent from evidence 1. The Beijing Intellectual Property Court held that when judging whether the transfer of prior art to other technical fields is inventive, it is necessary to grasp the prior art and the technical solution of the invention as a whole from the perspective of a person skilled in the art, and comprehensively consider the distance between the two technical fields, whether there is corresponding technical enlightenment, the degree of difficulty of transfer, the technical difficulties to be overcome, and whether it can produce unexpected technical effects. In this case, although the aircraft propeller of the present patent and the air-conditioning fan in Exhibit 1 are different in terms of the specific technical problems to be solved, according to common knowledge, the propeller and the fan both involve aerodynamics, and the basic structure and working principle are also similar, and the two belong to similar technical fields.
The Supreme People's Court held that in the field of technology, the core of judging whether an invention or utility model has an inventive step is to determine whether the prior art has given the technical inspiration of the invention or utility model. If the prior art has given clear technical enlightenment, prompting those skilled in the art to search for relevant technical means in a similar or related technical field, the prior art in a similar or related technical field may also be considered as a comparative document for evaluating the inventive step of the invention or utility model. In this case, the patent relates to a propeller and Exhibit 1 relates to a fan, both of which do not belong to the same technical field, but both relate to aerodynamics, and the basic structure and working principle are similar, and both belong to similar technical fields. The technical problems of nut loosening that need to be solved by the two are similar to the technical means that the tightening direction of the first screw joint is opposite to the thread direction of the transmission shaft, and the rotation direction of the fan working is opposite to the tightening direction of the nut. Therefore, it is not improper for the respondent decision and the trial court to identify Evidence 1 and the patent as similar technical fields and to use them to evaluate the inventiveness of the patent. At the same time, as mentioned earlier, Exhibit 1 has given a clear technical inspiration to solve the technical problem of nut loosening.
In this case, the court of first instance evaluated the inventiveness of the patent in question from the perspective of the transfer of invention, while the court of second instance returned to the technical field to determine whether the comparison document gave clear technical enlightenment.
2. Combinatorial invention
Section 4.2 of Chapter 4 of Part II of the Patent Examination Guidelines stipulates that a combined invention refers to the combination of certain technical solutions to form a new technical solution to solve the objective technical problems of the prior art.
When judging the inventive step of a combined invention, it is usually necessary to consider: whether the combined technical features support each other in function, the degree of difficulty of combination, whether there is a combination of enlightenment in the prior art, and the technical effect of the combination.
In the case of different technical fields, if the corresponding patent has the characteristics of a combined invention, the court will judge whether the technical fields are the same through the rules of the combined invention.
(1) The case of "multi-functional raw food plate".
In the procedure for confirming the rights of a utility model patent named "multi-functional raw eating plate", Li [24], claim 1 protects a multifunctional raw eating plate. Comparison Document 4 reveals a statue of electronic art. Comparative Document 8 discloses a plate for vegetables, fish, meat, or carved fruits and vegetables. The Beijing Municipal High People's Court held that although the technical field of the "multi-functional raw eating plate" recorded in claim 1 of the present patent belongs to tableware, and the comparison document 4 is a ceremonial or sacrificial utensil, although there are differences between the two technical fields, the technical solution recorded in claim 1 of the present patent requires a device that provides an atomization effect, and in the prior art, the atomizer or humidifier that can continuously and stably provide the atomization effect has been widely used in various fields, and the patentee also recognizes the atomizer, water container, and The connection relationship of power supply, switch and the whole scheme belongs to the prior art, and the connection mode between the atomizer and the water container is common knowledge in this field. Therefore, according to the clear enlightenment of the prior art, when it is necessary to set up a device with atomization effect, those skilled in the art can be prompted to find relevant technical means in the comparison document 4. After the atomizer, the water container and the plate itself in the technical scheme of claim 1 of the patent are combined, they still work with their respective functions, and their functions do not interact or produce more positive effects, therefore, this combination is a simple superposition.
In this case, the court evaluated the inventiveness of the patent in question from the perspective of the technical field and the combined invention, and the results of the evaluation in this case happened to be consistent, and if the evaluation from the two perspectives was inconsistent, there was also uncertainty as to how to distinguish between the combined invention and the inventive step from the perspective of the technical field.
III. Conclusion
Any rule that violates the laws of invention itself will end in failure, as exemplified by the rule established in the "Grip Dynamometer" case. The rules established in the "Grip Ergometer" case did not clearly delineate the boundaries of the technical field, but instead made the rules for judging the technical field more and more confusing. According to the above-mentioned rules, it can be seen that there is no rule to follow in the court's judgment rules in the field of technology. According to the rules established by the judicial interpretation, the factors for judging the technical field include the title of the subject, the full content of the claims, the description of the technical field and background technology in the specification, as well as the functions and uses realized by the technical solution, etc., while there will be various differences in the specific case itself, such as the application field considered in judicial practice, technical issues, technical enlightenment, etc. The core reason for the above-mentioned uncertainties lies in the fact that the Patent Law requires a distinction between the inventive height of invention and utility model patents.
First, judge the consistency of the subject. The inventions and creations protected by the Patent Law are all from the perspective of the "person skilled in the technical field", which is the person who makes the invention, and when the subject of the judgment is determined, the results of the judgment on the inventive step of the invention or creation should be consistent, and the judgment ability of the person who is the person "skilled in the technical field to which the invention belongs" should not be distinguished, thus violating the objective law of invention and creation.
Second, the consistency of contribution and protection is a basic rule of the patent system. If there is a difference in the conditions for granting invention and utility model patents, theoretically the degree of patent protection should also be reflected. However, except for the term of patent protection, all provisions of the Patent Law concerning patent protection do not distinguish between inventions and utility models. [25] If the degree of inventiveness of a utility model patent is restricted in the procedure for granting and confirming rights, the scope of protection of the utility model patent should also be limited in the infringement procedure, otherwise the principle of "consistency between contribution and protection" is violated. For example, restricting the application of the "principle of equivalence" to utility model patents prevents them from eroding the scope of protection of prior art through the "principle of equivalence".
Third, the return to the "three-step method" is helpful to eliminate the uncertainty of the inventive step judgment of utility model patents. The "three-step method" of creative judgment, although not the only way to judge creativity, is the best method that has been proven in practice. Based on this, it is necessary to return to the starting point of invention-creation judgment, no longer distinguish between the inventive height of invention and utility model, and uniformly apply the "three-step method" that is most in line with the objective law of invention and creation to judge the inventiveness of invention-creation, so as to fundamentally eliminate the uncertainty of inventive step judgment of utility model patents and the drawbacks of poor practical operability. Moreover, the "three-step method" not only establishes the rule of inventive step judgment, but also makes the invention-creation and the prior art have a sufficient level of height, so as to leave enough room for the application of the "equivalence principle" and the application of the "prior art defense" rule. If the height of inventiveness is insufficient, it is easy to lead to the overlap between the scope of the same claim or even the same scope and the scope of the prior art to which it belongs, so as to harm the interests of the public. In the case that the level of inventive step is too low, no matter how the scope of the technical field is delineated, it cannot avoid the overlap between the scope of protection of the utility model patent right and the scope of the prior art.
Fourth, the judgment of inventive step is not directly related to the judgment in the field of technology. In the "Portable Spectrum Instrument" case,[26] the Beijing Intellectual Property Court made a detailed analysis of this. Whether there is a stricter definition of the technical field of the utility model comparison document depends on the relationship between the technical field and the degree of inventive step. In other words, as long as the technical fields in which the comparison documents are located are neither the same, nor are they similar or related, the acquisition of the utility model necessarily requires creative labor. Based on the following considerations, it is not appropriate to conclude that there is a necessary connection between the two. First, the concept of technical field has a large room for interpretation, and the difference in interpretation can completely make the originally unrelated technical field become a related or similar technical field, or vice versa. Second, even without considering the ambiguity of the concept of the technical field itself, in the case of creative labor alone, it is not necessarily necessary to require creative labor in the combination of technical characteristics of different technical fields.
To sum up, China has been implementing the patent system for 40 years. Over the past 40 years, all aspects of China's patent system have undergone earth-shaking changes. [27] The reason why the utility model system was included in patents in the first place was determined by specific historical conditions. Today, when high-quality development is being advocated, the hindrance effect of utility model patents on social development has gradually emerged, and the conditions for continuing to incorporate the utility model system into the patent system for protection are no longer met. In particular, there are factors such as the lack of substantive examination and the uncertainty of inventive step judgment in utility model patents, so it is necessary to remove the utility model system from the patent system as soon as possible, so that the Patent Law can become a law that truly protects inventions and creations.
Annotations (scroll up and down to view)
[1] Section 2.2.2 of Chapter 2, Part II, Patent Examination Guidelines (2010): The specific technical field is often related to the lowest possible position of the invention or utility model in the International Patent Classification. For example, an invention about an excavator cantilever was improved by changing the rectangular cantilever section in the background technology to an elliptical section. The technical field to which it belongs can be written as "the present invention relates to an excavator, in particular to an excavator cantilever" (a specific technical field), and it is not appropriate to write "the present invention relates to a construction machinery" (the upper technical field), nor should it be written as "the present invention relates to an elliptical section of an excavator cantilever" or "the present invention relates to an excavator cantilever with an elliptical cross-section" (the invention itself).
[2] Article 12 of the Provisions of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trial of Administrative Cases Involving the Granting and Confirmation of Patent Rights (I).
[3] Beijing Higher People's Court, Several Legal Issues Requiring Attention in Current Intellectual Property Adjudication (2018): The criteria for judging inventive step of invention and utility model patents have always been a difficult point in patent administrative adjudication. Paragraph 3 of Article 22 of the Patent Law of the People's Republic of China, like that of Germany, Japan and other countries, although it clearly distinguishes between the criteria for inventive step of invention and utility model, does not further stipulate specific operational standards. "Substantive characteristics" and "progress" are themselves highly subjective concepts, and by adding such qualifications as "prominent" and "significant", subjective concepts above subjectivity appear and are not operable in practice.
[4] Section 4, Chapter 6, Part 4 of the Patent Examination Guidelines: According to Article 22.3 of the Patent Law, inventive step of an invention refers to the invention having outstanding substantive features and significant progress compared with the prior art, and inventiveness of a utility model refers to the substantial characteristics and progress of the utility model compared with the prior art. Therefore, the standard of inventive step of a utility model patent should be lower than that of an invention patent.
The difference in the criteria for judging inventiveness between the two is mainly reflected in whether there is "technical enlightenment" in the prior art. When judging whether there is technical enlightenment in the prior art, there is a difference between invention patents and utility model patents, which is reflected in the following two aspects.
[5] Administrative Ruling of the Supreme People's Court, (2011) Zhi Xing Zi No. 19.
[6] Administrative Judgment of the Supreme People's Court, (2012) Xing Ti Zi No. 7.
[7] Administrative Judgment of the Supreme People's Court, (2020) Supreme Law Zhi Xing Zhong No. 429.
[8] Decision of the State Intellectual Property Office on the request for invalidation (No. 36489).
[9] Civil Judgment of the Supreme People's Court, (2019) Supreme Law Zhi Xing Zhong No. 208.
[10] See Zhang Peng, "Principles and Practice of Patent Grant and Confirmation System", Intellectual Property Press, 2012, p. 368.
[11] Administrative Judgment of Beijing Higher People's Court, (2016) Jing Xing Zhong No. 4492.
[12] Administrative Judgment of Beijing Intellectual Property Court, (2020) Jing 73 Xingchu No. 15630.
[13] Administrative Judgment of the Supreme People's Court, (2019) Supreme Law Zhi Xing Zhong No. 123.
[14] Administrative Judgment of Beijing Higher People's Court, (2007) Gao Xing Zhong Zi No. 23.
[15] Administrative Judgment of Beijing Intellectual Property Court, (2016) Jing 73 Xingchu No. 2287.
[16] Administrative Judgment of Beijing Higher People's Court, (2017) Jing Xing Zhong No. 1556.
[17] Administrative Judgment of Beijing Intellectual Property Court, (2022) Jing 73 Xingchu No. 11999.
[18] Administrative Judgment of Beijing Higher People's Court, (2018) Jing Xing Zhong No. 2607, Administrative Ruling of the Supreme People's Court, (2019) Zui Gao Fa Xing Shen No. 10758.
[19] Civil Judgment of the Higher People's Court of Guangdong Province, (2017) Yue Min Zhong No. 1110. Similar cases include the Civil Judgment of the Beijing Intellectual Property Court, (2015) Jing Zhi Min Chu Zi No. 338.
[20] Administrative Judgment of Beijing Intellectual Property Court, (2015) Jing Zhi Xing Chu Zi No. 3347.
[21] Administrative Judgment of the Supreme People's Court, (2018) Zui Gao Fa Xing Zai No. 168.
[22] Administrative Judgment of Beijing Intellectual Property Court, (2023) Jing 73 Xingchu No. 12060.
[23] Administrative Judgment of the Supreme People's Court, (2022) Zui Gao Fa Zhi Xing Zhong No. 41.
[24] Administrative Judgment of Beijing Higher People's Court, (2012) Gao Xing Zhong Zi No. 1711.
[25] See Rui Songyan, "Principle Interpretation and Practical Rules of Inventive Clauses", Intellectual Property Press, 2023 edition, p. 65.
[26] Administrative Judgment of Beijing Intellectual Property Court, (2017) Jing 73 Xingchu No. 9117, Administrative Judgment of the Supreme People's Court, (2020) Zui Gao Fa Zhi Xing Zhong No. 383.
[27] Cheng Yongshun, in Liu Zhiwei, "Patent Infringement Litigation Practice - Typological Analysis of Adjudication Rules", "Preface 1".