Source:|Author:Jane|Publish time: 2020-04-29|21 Views
The patent system in China follows the dual system of civil tort litigation and administrative invalidation procedures in the European Continental System-one in which the plaintiff claims damage from infringement, and the other in which the defendant attempts to terminate the patent rights by proving the patent is invalid. In judicial practice, administrative invalidation procedures often follow patent infringement procedures. Due to the different jurisdictions between civil tort litigation and administrative invalidation procedures involving the same patent, there is a situation easy to occur that the patentee interprets the claims differently in two different procedures, resulting in a two-sided gain. In the said two cases, the Intellectual Property Court of the Supreme People’s Court for the first time explored the simultaneous hearing of administrative case involving confirmation and civil case of infringement involving the same patent, and made a useful attempt to achieve the docking of patent administrative and civil litigation procedures and adjudication standards, which demonstrates China’s determination to improve the quality and efficiency of intellectual property trials, increases judicial protection of intellectual property, and effectively improves judicial credibility.
The two cases caused by one utility model patents with the patent number ZL201220203855.0(referred to as 855 patent) authorized by the State Intellectual Property Office on December 5th, 2012 and entitled “Structure of an over-temperature protection circuit”. The patent application date is May 8th, 2012. Xiamen Shizheng Electronic Technology Co., Ltd (referred to as Shizheng Company) is the patentee of 855 patent, and Lejin electronic (Tianjin) Electric Co., Ltd (referred to as Lejin Company) is the manufacturer of the alleged infringing products and the petitioner in the procedures for requesting patent invalidation. Due to the different interpretations of the claims of 855 patent, Shizheng Company claimed that the products of Lejin Company fall into the protection scope of 855 patent. Lejin Company argued that 855 patent is not inventive, which led to civil tort and administrative invalidation proceedings.
Case Schedule:
2017.10.25 Shizheng company sued Lejin Company et al for alleged 855 patent infringement in Hangzhou Intermediate People’s Court.
2018.1.9 Lejin Company requested the Patent Re-examination Board to invalidate 855 patent right.
2018.6.26 The Patent Re-examination Board made a decision on maintaining 855 patent.
2018.8.29 Lejin Company dissatisfied with the decision of the Patent Re-examination Board brought a lawsuit to the Beijing Intellectual Property Court.
2019.3.20 Hangzhou Intermediate People’s Court rejected the claims of Shizheng company.
2019.7.1 the Beijing Intellectual Property Court rejected the claims of Lejin Company.
2019.8.26 Shizheng company filed an appeal to the Intellectual Property Court of the Supreme People’s Court against the judgement of court of first instance.
2019.8.29 Lejin company filed an appeal to the Intellectual Property Court of the Supreme People’s Court against the judgement of court of first instance.
2019.10.22 The Intellectual Property Court of the Supreme People’s Court ordered pre-trial hearings of the two cases to be consolidated.
2019.10.23 The Intellectual Property Court of the Supreme People’s Court formed the same collegial bench to hold public hearings on the two cases.
2019.12.9 The Intellectual Property Court of the Supreme People’s Court declared in public: reject the two appeals and sustain the two original judgements.
In order to reduce the possibility that parties may make different interpretations of the same patent in two different procedures, the Intellectual Property Court of the Supreme People ’s Court formed the same collegial bench andordered pre-trial hearings of the two cases to be consolidated firstly, in addition to assign the same technical investigator to both cases.
In both cases, the Intellectual Property Court of the Supreme People’s Court held that “The scope of protection of the patent right for an invention or utility model shall be determined by the terms of the claims. The description and the appended drawings may be used to interpret the claims” in accordance with paragraph 1 of Article 59 of the Patent Law. In the interpretation of the claims, the technical terms in the claims shall be reasonably explained on the basis of the context of the claims, combined with the description and the appended drawings. The purpose of the invention described in the description plays an important role in the interpretation of the claim when the description and its drawings are used to interpret the claims. After trial, the collegial bench of the two cases holds that 855 patent right is inventive, and the alleged infringing products produced and sold by Lejin Company do not fall into the protection scope of 855 patent right.
This measure of the Intellectual Property Court of the Supreme People’s Court has created a precedent for joint trials of patent administrative patent confirmation procedures and patent infringement proceedings. It is foreseeable that the link between civil procedures and administrative procedures involving the same patent will be further close, which requires patentees to be more cautious in interpreting claims between different procedures. Too wide an interpretation scope will result in the loss of inventiveness of the patent, and too narrow an interpretation scope will cause the patent to lose the meaning of protection. At the same time, higher requirements have been imposed on the quality of patent drafting. Only socially useful and inventive technologies can be protected.