In Chinese patent practice, subject matter issues often carry more "veto power" than the "three patentability criteria" (novelty, inventiveness, and practical applicability): even if an invention possesses prominent substantive features and significant progress, it cannot be granted a patent in China if it does not essentially constitute a technical solution; likewise, a utility model application that essentially protects a method or material rather than the shape, structure, or combination thereof of a product will be rejected; and a design patent application that is not embodied in a product will also be denied under Chinese patent law.
Systematically sorting out the non-patentable subject matters for each of the three types of patents is not only a basic skill in patent drafting and responding to office actions, but also a strategic judgment in "choosing the right track" for an invention-creation from the moment of its conception. This article will survey and analyze common non-patentable subject matter issues in Chinese patent practice along three main lines—invention patents, utility model patents, and design patents—combining relevant provisions of the Patent Law.
[Legal Red Lines and Public Interest]
First, for all types of patents, according to Article 5 of the Patent Law, invention-creations that violate laws, social morality, or public interest, as well as invention-creations completed by relying on genetic resources obtained or utilized in violation of laws or administrative regulations, belong to non-patentable subject matters.
For example, a security inspection device and its data collection method involving the acquisition of personal information from the person being inspected without their knowledge through base station switching will inevitably harm the public's private information and communication security when actually implemented, and therefore constitutes non-patentable subject matter [1].
[Invention Patents]
According to Article 25 of the Patent Law, scientific discoveries, rules and methods of mental activities, methods for the diagnosis or for the treatment of diseases, animal and plant varieties, nuclear transformation methods and substances obtained by nuclear transformation are non-patentable subject matter for invention patents.
Article 2, Paragraph 2 of the Patent Law stipulates that an invention means a new technical solution relating to a product, a process or improvement thereof. From this it follows that if a solution does not meet the requirements for a "technical solution" in an invention patent, it is non-patentable subject matter.
If the claimed subject matter consists of rules formulated according to human thought rather than a technical solution proposed on the basis of utilizing natural laws, it falls under rules and methods of mental activities and cannot be granted a patent. For example, a bank trade settlement method whose solution defines the circulation process of documents and bills, the formulation of relevant management rules, and the payment process during bank trade settlement merely sets out the bank trade settlement process without making any technical improvement to the prior art. It constitutes rules formulated according to human thought rather than a technical solution proposed on the basis of utilizing natural laws, and is therefore non-patentable subject matter [2].
With the rapid development of Internet technology, artificial intelligence, and big data technology carried by computers, traditional business methods and intelligent algorithms are increasingly integrated with modern digital technology. For instance, patent applications for business methods or algorithms containing technical features usually implement their inventive purpose through computer hardware devices, software programs, or artificial intelligence models, enabling business rules and intelligent algorithms to be concretely implemented through technical application. In such cases, the understanding and determination of a "technical solution" is a long-standing difficulty in patent practice and also one of the most concentrated causes for reexamination and invalidation requests.
For example, an invention patent application sought to protect a method for automatically settling final payments, which is a typical application involving business methods carried by computer programs. The court of first instance held that the problem it sought to solve was how to enhance users' motivation to share links and better promote product sales, which did not constitute a technical problem; the means adopted were modifying the final payment value according to relevant data based on specified rules, which were not constrained by natural laws and thus did not utilize technical means; the effect achieved by the solution was merely promoting product sales through a group-buying model where the more people participated, the lower the price, stimulating dissemination through tiered price reductions and sharing rewards, and using social means to increase the sharing rate of products, thereby increasing product exposure, sales, and brand promotion at low cost—this effect merely promoted product sales and was not a technical effect conforming to natural laws. However, the Supreme People's Court held that it involves a technical problem in that existing sharing technology could not achieve subsequent tracking of such sharing information and could not determine which users complete product orders through the sharing information, which is a technical defect and constituted a technical problem. Its solution at least employs technical means such as information encryption and decryption, associated binding storage, and data matching to solve the technical problem of determining which users complete product orders through sharing information, thereby achieving the technical effect of accurately determining the usage of sharing links, and thus constitutes a technical solution and patentable subject matter. As for the definition in the claims of updating the final payment value based on invitation information, the Supreme People's Court held that this is merely a commercial operation adopted after the above technical problem is solved, and the adoption of such an operation or other operations could not negate the technical nature demonstrated by the application's solution in terms of order tracking[3].
Another example is an invention patent application involving a consensus method for blockchain based on a Byzantine fault tolerance algorithm. The court of first instance held that the problem the solution sought to solve was determining which nodes participate in consensus, which was not a technical problem; the means adopted were calculating proposal digests and comparing proposal digests as prescribed by the method of the claims, which were artificially prescribed rules rather than technical means; the effect of screening out nodes capable of participating in consensus achieved by the solution was also an effect brought by algorithmic improvement rather than a technical effect. However, the Supreme People's Court held that the claims of this application mainly concern the consensus mechanism in the blockchain field, and the defined content includes not only the consensus mechanism algorithm or rules but also other technical features of blockchain, and is not a pure algorithm represented solely by a data structure. The problem it solves is closely related to the consensus mechanism in this specific technical field of blockchain, namely an improvement to ensure the accuracy and consistency of data transmission in blockchain technology and to avoid blockchain forks, which constitutes a technical problem; the digest calculation and matching between digests it employs are not arbitrarily set by humans, and the entire process do not rely on human intervention but is a technical means utilizing natural laws, and achieves the technical effect of quickly and effectively detecting blockchain forks. Therefore, it constitutes a technical solution and thus patentable subject matter [4].
Whether a solution constitutes a technical solution cannot be simply denied merely because it contains business rules or algorithmic logic; instead, we should return to the essence of the Patent Law and determine whether it solves a specific problem in the technical field by utilizing technical means of natural laws and produces a corresponding technical effect. Furthermore, it can be seen that for inventions in emerging technical fields such as the Internet and blockchain, judicial review is gradually moving away from traditional mechanical thinking toward a more inclusive determination standard adapted to technological development.
[Utility Model Patents]
Article 2, Paragraph 3 of the Patent Law stipulates: a utility model means a new technical solution relating to the shape, structure, or combination thereof of a product, which is fit for practical use.
Based on the above provision, all methods and naturally existing articles not manufactured by humans do not constitute subject matter protectable by utility model patents.
A utility model claim may contain known materials, but if the claim contains an improvement to the material itself, it does not constitute subject matter protectable by a utility model patent. For a product claim that contains both hardware improvements and methods or computer programs, if the improvement to the prior art lies in the hardware portion and the computer program or method involved is known, it may be considered patentable subject matter for a utility model; if the claim contains both an improvement to the hardware portion and an improvement to the computer program or method itself, it generally does not constitute patentable subject matter for a utility model.
In practice, disputes involving material and method features in utility models are relatively common. For example, in a utility model patent concerning a type of glass, the patentee argued that the technical solution defining the three-layer macroscopic structure of the glass was an improvement to the composite layer structure of the glass product and should fall within the patentable subject matters of utility models. However, the Supreme People's Court held that it does not belong to patentable subject matters of utility models. Specifically, the Supreme People's Court held that the inventive concept of this patent is to solve the problem in the prior art that chemically strengthened glass could not exhibit the stress distribution of thermally tempered glass, by enabling the glass article to exhibit a unique stress distribution along its thickness through ion exchange, thereby giving the glass improved resistance to fracture. Therefore, both the technical problem to be solved by the patent and the corresponding technical means for solving such problem reflect that the utility model is directed to improvements to the material per se, rather than improvements to the shape or structure of the product [5].
Another example is a utility model patent with the title of "Intelligent Weighing Device Based on Computer Vision Technology", whose solution utilizes a weighing platform, visual sensors, identifiers, identification feedback devices, cashier systems, and modeling platforms to construct an intelligent weighing device. This construction provides the hardware foundation for the intelligent weighing device to implement the functions of identifying products for settlement based on visual information, weight information, identification models, and user feedback information, and feeding user feedback information back to the modeling platform. The court of first instance held that, compared with existing weighing scales, the improvement lay in the composition of hardware in the weighing device and the connection relationships among the various hardware components, rather than an improvement to the computer program, and therefore fell within the patentable subject matters of utility models. However, the Supreme People's Court held that it does not belong to patentable subject matters of utility models. Specifically, the Supreme People's Court held that the so-called connection relationship essentially involves transmitting information received by the identification feedback device to the modeling platform, and this information transmission needs to be implemented through a computer program, which is not an improvement to the structure of the weighing scale (product). The essence of this patent's solution is to use combined weighing information and visual information as well as product information confirmed by user feedback as data for the modeling platform, and to establish and optimize models through machine learning to provide an intelligent weighing device that improves weighing and settlement efficiency—that is, it mainly achieves its inventive purpose through limitations to the computer program itself [6].
In a judgment involving a utility model patent for an "Auxiliary Target", the Supreme People's Court held that although “when the auxiliary target is disposed at the front wheel of the vehicle, the vertical portion abuts against the front wheel of the vehicle, the central axis of the vertical portion passes through the center point of the front wheel of the vehicle, and the support portion is placed on the horizontal plane on which the vehicle is placed” is a description of the method of using the product, this definition could clarify that the product has an L-shaped structure rather than other product structures such as an inverted T-shape composed of a vertical portion and a support portion with the vertical portion perpendicularly connected to the support portion. Therefore, it falls in patentable subject matters of utility models [7].
Through the above cases, it can be seen that the core of utility model subject matter determination lies in judging whether the substantive improvement falls within the shape, structure, or combination thereof of a product. The presence of structural features in the claims does not necessarily mean patentable subject matter, and the presence of material or method features does not necessarily lead to exclusion; the key is whether they substantively improve the shape or structure of the product.
[Design Patents]
Article 25 of the Patent Law stipulates that designs of two-dimensional printing goods, made of the pattern, the color or the combination of the two, which serve mainly as indicators are non-patentable subject matters.
Article 2, Paragraph 4 of the Patent Law stipulates: a design as referred to in the Patent Law means a new design of the shape, the pattern, or their combination, or the combination of the color with shape or pattern, of the whole or a part of a product, which creates an aesthetic feeling and is fit for industrial application.
All designs not embodied in a product are non-patentable subject matter, such as font designs, works in the realm of fine arts, calligraphy, and photography. A partial design that cannot form a relatively independent area on a product or constitute a relatively complete design unit is non-patentable subject matter. Designs that take the original shape, pattern, or color of natural objects as the main subject, including natural objects themselves and natural object simulation designs, are non-patentable subject matters. A partial design for which patent protection is sought that is merely a pattern on the surface of a product or a combination of pattern and color, such as a pattern on the surface of a motorcycle, is non-patentable subject matter.
It is worth noting that in practice, there are differences in examination standards for patentable subject matter between Chinese and foreign design patent systems, mainly reflected in the application of "flat designs mainly serving as identifiers" and "social morality." First, regarding flat designs mainly serving as identifiers, some countries or regions allow such designs to be included in the scope of design protection, while the Patent Law of China explicitly excludes them from patentable subject matter; such designs are more suitable for protection through the trademark system in China. Second, regarding the application of "social morality", the differences in examination standards are even more pronounced. For example, a design featuring a cartoon girl pattern had already been granted abroad, but when applied for in China, it was deemed as violating social morality because the pattern contained some exposed elements and was rejected after examination. It can be seen that China's design examination holds a stricter line on "violation of social morality," while some Western countries tend to place more emphasis on protecting the artistic nature and commercial identification function of the design itself.
To address the above differences, applicants should make corresponding strategic adjustments when filing design patent applications in China: for flat designs mainly serving as identifiers, they can be carried on physical carriers such as physical labels, packaging, or product casings, and applied for as design patents in the form of specific products, thereby circumventing China's non-patentability provisions for pure flat designs; for design content that may involve social morality, applicants may consider making adaptive modifications to the views when submitting design patent applications, deleting or adjusting parts that do not comply with Chinese legal provisions and mainstream social values (such as the exposed elements in the above cartoon pattern) to improve the probability of getting allowed. When conducting overseas patent layout, applicants need to make differentiated design adjustments according to the examination standards of different jurisdictions to achieve effective global protection of intellectual property.
[Conclusion]
In conclusion, subject matter issues serve as the "first threshold" of patent examination, and their veto power is often more fatal than novelty and inventiveness examination. Therefore, innovative entities should conduct subject matter eligibility pre-assessment at the conceptual stage of invention-creations, accurately present their technical core or structural substance in the application documents, and avoid the futile waste of subsequent examination, reexamination, and invalidation procedures due to subject matter deviation. Faced with the continuous impact of emerging technologies such as artificial intelligence and blockchain on traditional subject matter standards, the patent system may maintain moderate openness while adhering to core requirements, but bottom-line standards such as "technical solution", "product shape/structure," and "product carrier" will remain the cornerstone anchoring the boundaries of patentability. Only by choosing the right track at the source of innovation and guarding the boundaries at the application stage can we truly achieve resonance between patent protection and technological innovation.
[1]: (2023) Supreme People's Court IP Administrative Final No. 1090
[2]: (2022) Supreme People's Court IP Administrative Final No. 676
[3]: (2023) Supreme People's Court IP Administrative Final No. 91
[4]: (2024) Supreme People's Court IP Administrative Final No. 573
[5]: (2023) Supreme People's Court IP Administrative Final No. 607
[6]: (2023) Supreme People's Court IP Administrative Final No. 576
[7]: (2023) Supreme People's Court IP Administrative Final No. 617
