Source:|Author:pmoed5141|Publish time: 2020-03-25|20 Views
China implements the dual system of patent protection in parallel with judicial protection and administrative protection. In the event that a dispute arises out of any exploitation of a patent without permission of the patentee, that is, the infringement upon a patent right, the parties shall settle the dispute through negotiations. If they are not willing to negotiate or fail to reach an agreement through negotiations, the patentee or any interested party may either bring a lawsuit with the people’s court, or request the patent administrative department, for settlement in accordance with the patent law of PRC.
Generally, the patent administrative protection system refers specifically to the activities of the market supervision administration to maintain the order of the patent market, such as administrative investigation, administrative adjudication, administrative mediation, etc. implemented by the intellectual property office of the administration for mark regulation. The patent administrative protection system has remarkable performance in practice, and is relatively simple and efficient compared to the tedious patent judicial protection system; the cost of patent administrative protection is relatively low, which is a priority choice to reduce private and social costs in most cases.
Estoppel principle in China refers to the prohibition of the patentee from reincorporating the abandoned content into the protection scope of the patent in determining whether equivalent infringement is found in patent infringement litigation, where the abandoned content is the protection scope abandoned by the patent applicant or patentee by means of restrictively amending the claim or the description or making observations in the patent prosecution or invalidation procedure. Initially, the estoppel principle was more applicable in patent infringement proceedings.
The estoppel principle is applied in administrative investigation of the patent administrative protection system in that case below. The administrative law enforcement officials found that the claimant’s claims in the patent invalidation procedures and patent administrative protection procedures were contradictory, and applied the estoppel principle to handle the case, which prohibits patentees from gaining both ends and fully reflects the trend of patent administrative law enforcement in China becoming more professional and standardized. The following is the brief introduction to the case:
Vertiv Technology Co., Ltd (used name：Emerson Network Energy Co., Ltd.，referred to as Vertiv) filed a design patent application entitled “Air Conditioning Condenser” with the State Intellectual Property Office on October 31, 2007, with the patent number ZL200730174830.7. The patent right is legally valid when Vertiv filed a request for infringement dispute processing with Shenzhen administration for market regulation. The claimant alleged that the two air-conditioning condensers produced by Shenzhen Envicool Technology Co., Ltd. (referred to as Envicool) infringe its patent rights.
On February 13, 2015, the claimant filed a request for handling patent infringement disputes with the Intellectual Property Division of Longhua Branch of Shenzhen administration for market regulation (referred to as Longhua Branch).On March 19, 2015, Longhua Branch conducted an on-site inspection and inspection of Envicool.
In the handling of the above case, Vertiv filed a request for invalidation of the patent right with the Reexamination and Invalidation Department of the Patent Office, CNIPA (used name: the Patent Re-examination Board, referred to as Reexamination and Invalidation Department), and requested Reexamination and Invalidation Department to invalidate the patent right.
In the patent invalidation procedure, Vertiv claimed that the patented design is significantly different from the existing designs, that is, for air-conditioning condenser products, their basic composition and structure mostly include the main body, the air outlet metal mesh cover, and the legs. On the basis of achieving basic functions, the shape of each part has many design changes, and the general consumer will pay more attention to the specific shape of each part. The above-mentioned differences between the patented design and the existing designs involving the shape of the air outlet net cover, the shape of the top surface, the shape of the side, the number of supporting legs, the shape of the supporting legs, etc. are combined to make a significant impact on the overall visual effects. Reexamination and Invalidation Department adopted the above views and maintains the patent valid.
After the patent is maintained, Longhua Branch compared the alleged infringing products with the patent. The same points of the two include the structure of the main body, the air outlet, and the support leg, but there are obvious differences in the pattern of the top air outlet mask, the shape of the side, the shape of the support legs, and the state of use. The claimant claimed that these differences are nuances and the design of the alleged infringing products falls into the scope of protection of the patent right for design.
Longhua Branch made a decision on March 25, 2016, arguing that the claimant violated the estoppel principle, determined that the design of the alleged infringing products did not fall into the scope of protection of the patent right for design, and rejected all the claimant’ processing requests.
The claimant refused to accept the decision and filed administrative lawsuits with the Shenzhen Intermediate People’s Court and the Guangdong Higher People’s Court and all lost.