Section 3.2.5, Chapter 3, Part II of the Patent Examination Guide stipulates that if the technical personnel in the technical field can conclude that this method will inevitably make the product have a specific structure different from that of the reference document product, the claim is novel. On the contrary, if the product defined in the application claim is compared with the reference document product, although the methods are different, the structure and composition of the product are the same, then the claim does not possess novelty. Unless the applicant can prove according to the application documents or the prior art that the product is different from the reference document product in structure and/or composition by this method, or the product is different from the reference document product in performance by this method, it shows that its structure and/or composition has changed.
Obviously, a very important advantage of the writing method of utility model patent application is that it makes it possible for claims to meet the requirements of novelty. In addition, according to the Patent Examination Guide, method features have the same significance for creative judgment.
2.2 Provisions in the invalidation procedure
Part 6. 1 of Chapter 2 of Part IV of the Patent Examination Guide stipulates that "in the procedure of invalidation, the examination of the object protected by the patent for utility model shall use the provisions of Section 6 of Chapter 2 of Part I of this Guide". It also stipulates that "in the novelty examination of utility model patents, all technical features in its technical scheme, including material features and method features, should be considered". It also stipulates that "in the creative examination of utility model patents, all technical features in the technical scheme, including material features and method features, should be considered".
It is not difficult to draw a conclusion from the above provisions that the method features written in the utility model patent are also meaningful for the stability of the patent right.
2.3 Discussion on the protection scope of utility model patent in the case of patent infringement
The principle of universal application of patent emphasizes that the technical scheme of alleged infringement is the same as all the technical features of the product recorded in the patent claim of utility model. Because the subject of protection of product claims characterized by method features is still the product, the scope of protection is still the shape, structure or combination of the product, and the method itself should not be included.
Therefore, if the technical scheme of the alleged infringement adopts the same method, but the shape, structure or combination of the products are different, it is obvious that the different methods cannot be considered when comparing the infringement, and there should be no objection to this.
However, if the technical scheme of the alleged infringement adopts different methods, but the shape, structure or combination of the products are the same, the differences of methods will not be considered in the infringement comparison. This may be controversial in practice.
Therefore, if the patent application scheme is due to the characteristics of the method, and the shape, structure or combination of the product is different from the comparison file, then the difference of the method should still be considered when comparing the infringement. In other words, the influence of the method characteristics that affect the novelty and creativity of the patent on the scope of protection should be limited. Therefore, whether to write the method features into the claim should also consider whether it affects the infringement judgment and the degree of influence on the difficulty of infringement judgment.