Can Utility Patent Be Asserted in Court When the Corresponding Invention Patent Claiming the Same Subject Matter and Filed on the Same Day Be Rejected as Lacking Inventiveness?
——(2020) Zui Gao Fa Zhi Min Zhong 699
[Summary of the Judgement]
If a Plaintiff asserts a utility model patent in a civil lawsuit, which patent claims the same subject matter as a corresponding invention patent application filed on the same day, and if the invention application was rejected due to lack of novelty or non-obviousness as compared with one single prior art, the People’s court will dismiss the plaintiff’s patent infringement claims as there is no legal rights being asserted.
[Background of the Case]
This case relates to patent infringement dispute, involving a utility patent No. ZL200920242493.4 titled “Greening Box” (hereinafter referred to as “the patent at issue”). Sun Xixian (hereinafter referred to as “the Plaintiff”) believes that Langting Company (hereinafter referred to as “the defendant”) has implemented the patent at issue without permission, and filed the patent infringement lawsuit before the Hefei Intermediate Court of Anhui Province (hereinafter referred to as the Hefei Court of First Instance) based on the violation of claims 1~5 of the patent at issue, and requested the Court to grant a monetary award of RMB 150,000 and grant an injunction order, etc.
The court of first instance confirmed that the defendant committed infringement, and granted a monetary award of RMB 60,000 (including economic losses and costs for bringing the lawsuit) on the grounds that the patent term has expired. Unsatisfied with the first-instance ruling, Langting appealed the ruling to the Supreme People’s Court to request to overturn the first-instance ruling, asserting that: 1) the Plaintiff filed an identical invention patent application, which covers the same subject matter as the utility invention at issue, and which was rejected for lack of inventiveness; and 2) the patent evaluation report stated that the utility patent does not meet the requirements for patent protection. Upon revisiting the case, the Supreme Court vacated, on December 29, 2020, the first-instance judgement and rejected all of the claims of the Plaintiff.
[Gist of Final Judgement]
The Supreme People’s Court held that patent enjoys legal rights protected by the law, and that a protectable patent shall be legal, valid and stable. Patent owners are therefore entitled to enforce their patents and prohibit others from enforcing the patents without permission, such that the public is encouraged to make invention-creations. However, where a technical solution is not eligible for patent protection, and meanwhile the defendant also argued that he/she did not infringe patent rights or should not be held liable for enforcing the technical solution that is not eligible for patent protection, it will be unfair and also go contrary to the purpose of patent right protection to allow the Plaintiff to assert the patent rights.
In practice, it is not uncommon that an applicant files, on the same day, both an invention patent application and a utility patent application for the same technical solution. Since a utility patent application is not subject to substantive examination before being granted, while an invention patent application must go through substantive examination before being granted, there is chance that for the same invention and utility applications filed on the same day, the utility application is granted while the invention is not. If that happens, will the official opinion regarding patentability of the invention patent application have impact on the protection？The answer varies from case to case. In general, if the invention patent application is rejected for lack of inventiveness, the two applications need to be treated differently according to different requirements for inventiveness. In general, if the invention application claiming the same technical solution is found to lack non-obviousness based on substantially the same principle as the one applied on a utility application, for example, the technical field, the number of cited prior art, the same conclusion regarding the patentability of the invention patent can be applied to the utility application to evaluate whether it is patentable, and to determine whether the utility patent can be asserted a civil lawsuit.
In this case, the Plaintiff filed two applications, which claim exactly the same subject matter, for invention and utility patents respectively. Upon substantive examination on the invention patent application, the CNIPA issued a first Office Action, holding that claims 1 and 4~7 do not have novelty, and claims 2~3 do not have an inventive step. In response, the Plaintiff amended claim 1 to include the original claims 1-4. However, the CNIPA still found claims 1~4 to not involve an inventive step. In other words, the CNIPA was of the opinion that claims 1 and 4~7 do not have novelty, and claims 2~3 do not have an inventive step, and the Plaintiff agreed to the opinion; otherwise he/she would not choose to amend the claims. Although it is true that different requirements are set to an invention patent application and a utility patent application when it comes to whether the application involves an inventive step, the difference mainly lies in the technical filed of the prior art and the number of cited prior art. In this case, when rejected the invention patent application, the Examiner only cited one single prior art, i.e., reference document D2, which moreover relates to the same technical field as the utility patent application. Besides, the Examiner relies on the same D2 when rejecting the invention application for lack of novelty. That is, the different legal standards set for the two different applications have no impact on this case.
Furthermore, the patent evaluation report from the CNIPA also stated that the utility patent is not stable. Therefore, in the patent infringement lawsuit mentioned above, under the circumstance where the asserted utility patent is very likely not to enjoy patent protection, the right at issue is not legal rights, and shall not be asserted. For these reasons, the Supreme Court finally determined to dismiss the Plaintiff’s claims that the Defendant infringed claims 1~5.