*AI-generated translation, for reference only.

[Keywords] 

Administrative, Patent administrative case, Invalidation of utility model patent right, Subject matter for protection

Case Facts

United States Kang [REDACTED] Company is the patentee of the utility model patent with patent number 20162136****.7, titled "Glass-based Article and Device Comprising the Same" (hereinafter referred to as "the patent"). Claim 1 of the patent is: "1. A glass-based article, characterized in that it comprises: a first surface and a second surface opposite the first surface, defining a thickness (t) of less than about 3 mm; and a stress distribution extending along the thickness, wherein all points of the stress distribution within a thickness range of from about 0t to up to 0.3t and from greater than about 0.7t to t comprise tangents having an absolute slope greater than about 0.1 MPa/micron, wherein the stress distribution comprises a maximum CS, DOC, and a maximum CT of less than about 71.5/√(t) (MPa)..."

On July 23, 2019, Tian [REDACTED] filed a request for invalidation of the patent right. On February 27, 2020, the China National Intellectual Property Administration made the Invalidation Request Review Decision No. 43619 (hereinafter referred to as the challenged decision), determining that: the parameters such as the stress distribution defined in claims 1-3 of the patent were not a new technical solution suitable for practical use directed to the shape or structure of a product, and did not fall within the subject matter of utility model patent protection, and declared the entire patent right invalid. Dissatisfied, Kang [REDACTED] Company filed a lawsuit with the Beijing Intellectual Property Court, requesting the revocation of the challenged decision and an order for CNIPA to make a new decision.

On August 29, 2022, the Beijing Intellectual Property Court rendered the administrative judgment (2020) Jing 73 Xing Chu No. 14981, dismissing the claims of Kang [REDACTED] Company. After the judgment was pronounced, Kang [REDACTED] Company, dissatisfied, filed an appeal. The Supreme People's Court rendered the administrative judgment (2023) SPC IP Admin. Final 607 on November 14, 2024, dismissing the appeal and upholding the original judgment.

Judge's Opinion

The main reason for the lawsuit by Kang [REDACTED] Company was: The patent involved a technical solution defining a three-layer macroscopic structure of glass, which was an improvement to the composite layer structure of the glass product, similar to the "carburized layer" situation listed in the Patent Examination Guidelines, and therefore fell within the subject matter of utility model patent protection. The focus of the dispute in this case was whether the technical solution of the patent fell within the subject matter of utility model patent protection.

According to Article 2, Paragraph 3 of the Patent Law of the People's Republic of China, utility model patents protect technical solutions that involve an improvement to the shape, structure, or combination thereof of a product. Therefore, to determine whether a technical solution falls within the subject matter of utility model patent protection, one must determine whether the improvement made by the solution relative to the prior art lies in its shape, structure, or combination thereof, rather than in a method or material. Utility model patent claims may contain the name of a known material, i.e., applying a known material in the prior art to a product having a shape or structure. However, if the core of the claim lies in an improvement to the material itself, it does not fall within the subject matter of utility model patent protection.

Specifically in this case, a person skilled in the art reading the specification and claims of the patent would understand that the inventive concept of the patent is to solve the problem in the prior art that chemically strengthened glass cannot exhibit the stress distribution of thermally tempered glass, by using ion exchange to create a unique stress distribution in the glass article along its thickness, thereby imparting improved fracture resistance to the glass. Therefore, both the technical problem to be solved by the patent and the technical means employed reflect that the patent aims to improve the material itself, and does not involve an improvement to the shape or structure of the product. The challenged decision and the first-instance judgment correctly determined that it does not fall within the subject matter of utility model patent protection.

The appellant's argument raised by Kang [REDACTED] Company, that the stress layer defined in the claims of the patent is equivalent to the carburized layer specified in the Patent Examination Guidelines and both are structural features, is untenable. The carburized layer is the name of a known material. When applied to a layered product having a shape or structure, it defines the structure of the layered product and is not an improvement to the carburized layer itself. Therefore, it can serve as a structural feature to define a utility model. However, Kang [REDACTED] Company did not prove that the stress layer in the patent is a known material name, and the improvement of the patent lies in the material itself. Therefore, it cannot be recognized as a structural feature.

Judgment Digest

If the core of the improvement made by a technical solution over the prior art lies in the shape, structure, or combination thereof of a product, it falls within the subject matter of utility model patent protection. If the core of the improvement lies in an improvement to the material or method itself, and such improvement does not lead to an improvement in the shape, structure, or combination thereof of the product, it does not fall within the subject matter of utility model patent protection as stipulated in Article 2, Paragraph 3 of the Patent Law.

Related Index

Article 2, Paragraph 3 of the Patent Law of the People's Republic of China (The provision applicable in this case is Article 2, Paragraph 3 of the Patent Law of the People's Republic of China as amended in 2008)

First Instance: Beijing Intellectual Property Court, (2020) Jing 73 Xing Chu No. 14981 Administrative Judgment(August 29, 2022)

Second Instance: Supreme People's Court, (2023) SPC IP Admin. Final 607 Administrative Judgment (November 14, 2024)