In January 2014, a fitness equipment Co., Ltd. in Zhejiang submitted a design patent application with the name of "swing machine" to the State Intellectual Property Office, and the patent was authorized and announced in June 2014. In 2021, the plaintiff, Zhejiang Fitness Equipment Co., Ltd., sued the defendant Ningbo Electrical Appliance Co., Ltd. for infringement of design patent rights, and the case was determined to fall within the scope of patent protection by the Ningbo Intermediate People's Court, and the defendant was sentenced to bear 1.5 million yuan in compensation. The Zhejiang Provincial High People's Court held that the facts ascertained in the first instance were clear and the law was correctly applied, and the judgment upheld the original judgment.
At the end of 2022, the plaintiff applied to the court for compulsory enforcement. During the enforcement process, the State Intellectual Property Office declared all the patents involved in the case invalid in January 2023, and the defendant contacted the enforcement court to request a suspension of enforcement, and at the same time applied to the Zhejiang Provincial High People's Court for a retrial, and the plaintiff on the other side filed an administrative lawsuit with the Beijing Intellectual Property Court. In March 2023, the Ningbo Intermediate People's Court ruled to terminate the enforcement on the grounds that the patent involved in the case had been declared invalid, the relevant administrative litigation was ongoing, and there was no need for further enforcement of the case. So far, through a series of litigation procedures, the defendant successfully prevented the continuation of the enforcement procedure, and the 1.5 million yuan involved in the case and the mold were not executed, safeguarding its legitimate rights and interests. In October 2023, the plaintiff and the defendant voluntarily reached a settlement through negotiation.
1. Who has jurisdiction over patent cases?
With regard to the post-grant rights protection system, the mainland pursues a dual-track system in which "administrative" and "judicial" coexist, and due to the professional complexity of patent cases, the jurisdiction of cases is special.
According to the provisions of the current Patent Law, if the patentee infringes his patent right by exploiting his patent without the permission of the patentee, and the dispute arises, the parties shall settle it through negotiation; If the patentee is unwilling to negotiate or fails to reach a successful negotiation, the patentee or interested party may file a lawsuit with the people's court, or may request the department in charge of patent affairs to handle the matter. The "department in charge of patent work" here refers to the Administration for Market Regulation (Intellectual Property Office) under the system of local administrative organs; As for the competent court, in view of the high degree of technical expertise in patent cases, only the people's courts at or above the intermediate level approved by the Supreme People's Court have jurisdiction over the case.
In this case, the plaintiff chose judicial protection in accordance with the law, and the Ningbo Intermediate People's Court, with the approval of the Supreme People's Court, could have cross-regional jurisdiction over patented technology cases in Ningbo, Jiaxing, Shaoxing, Taizhou and Zhoushan, and had jurisdiction over this case. (Adjust the jurisdiction of Hangzhou, Wenzhou and Ningbo Intermediate People's Courts for intellectual property cases!) Effective January 1, 2022)
2. After being granted, is the patent right permanent and stable?
In the practice of patent examination in mainland China, the State Intellectual Property Office grants authorization to invention patent applications after passing the substantive examination, and grants authorization to utility model patent applications and design patent applications after passing the preliminary examination.
The legislative purpose of the current patent law is to "encourage inventions and creations, promote the application of inventions and creations, and improve innovation capabilities". Based on the national conditions of the country, the current patent examination system leaves the stability of the rights of utility models and designs to the subsequent market for testing, resulting in doubts about the stability of the patent after granting, so the patentee should carefully assess the stability of its rights before suing to protect its rights. When the corresponding patent is sued to protect its rights, as the defendant in response to the lawsuit, in most cases, it will choose to challenge the stability of the patent, especially in cases where utility models and designs are used as the basis for rights protection, and challenging the stability of the patent is a conventional response strategy. Since the patent has been granted without substantive examination, any unit or individual may file a request for invalidation if it believes that the grant of the patent right does not meet the conditions for grant. Therefore, the patent certificate does not mean that the status of rights is always constant, and in addition to the conventional defense of non-infringement of distinguishing design features or technical solutions, it is especially important to pay attention to the application of patent invalidation procedural strategies.
In this case, the plaintiff sued for rights protection as a legitimate right, but the defendant filed a request for patent invalidation and submitted comparative documents, and the State Intellectual Property Office determined that the patent in question did not meet the conditions for authorization, so it was declared invalid. Therefore, as far as the plaintiff is concerned, its rights protection ended in failure; As far as the defendant is concerned, the response was successful. However, regardless of their respective positions, the essential issue revealed in this case is still the legislative purpose of the Mainland Patent Law to protect innovation, and only innovation in the true sense can be fundamentally protected by the law.
3. Is the result of the patent invalidation trial retroactive?
According to Article 47 of the current Patent Law, an invalidated patent right shall be deemed to have ceased to exist ab initio. If the patent infringement litigation case is still in the process of being heard, and the rights defender already lacks the right basis at this time, as to whether the right holder files a corresponding administrative lawsuit to provide relief, it is another matter to wait for the subsequent trial result, but at this time, the people's court hearing the patent infringement dispute case may rule to reject the right holder's lawsuit based on the invalid claim. If the execution of the patent infringement lawsuit has been completed, it does not have retroactive effect, but the loss caused to others by the patentee's bad faith shall be compensated.
In this case, when the patent invalidation result was served, the court was still enforcing the compensation and dealing with the mold issue, in other words, the effective patent infringement judgment had not yet been performed. Therefore, the decision to invalidate the patent right has retroactive effect, so the enforcing court ruled to terminate the enforcement.
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Source | The rule of law is dawning
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