Interpretation of an “Article-by-Material Claim” in the Utility Model Act: Focusing on the Patent Court 2023(Heo)14578 Decision

The object of protection under the Utility Model Act is the shape and structure of an article. However, if a claim claims an article and specifies a part of the article, such as a material, which is not the object of protection, how should such a claim be interpreted? Recently, the Patent Court’s 2023(Heo)14578 decision, which explained the interpretation of such an“article-by-material claim,” was handed down. In that decision, the Patent Court explained that when determining the scope of rights, “the article should be identified as having a shape, structure, etc. specified by all descriptions of the claim, including descriptions of the article’s material, and compared with the device to be confirmed.” This paper verifies the subject patent court decision, and after comparatively analyzing the relevant legal theories of China, Japan, and Taiwan area, argues that the following legal theories apply to the interpretation of an article-by-material claim. First, it should be permitted to limit all or part of the article to a certain ‘material’ in the claim for utility model registration. Second, the material so limited should be recognized as an element, and according to the all-elements rule, the registrability, scope of rights, etc. of the device should be determined by including the material as an element. Such a legal principle should be also applied to an article-by-process claim.