Several reasons of patent infringement defense

Everyone in the intellectual property industry knows that in patent infringement cases, the defense reasons as the accused infringer include the following: first, the defense of non-infringement, that is, the accused infringing product does not belong to the scope of patent protection; The second is the defense of freely known technology, and the accused infringing product uses the technology before the patent application date; Third, the patent right invalid defense, by making the other party's patent right invalid to achieve the purpose of non-infringement; Fourth, the right of first use defense, claiming that it has been used before the patent application date; Fifth, the defense from legal sources only applies to the seller; The sixth is the statutory non-infringement defense. But each kind of defense has its own characteristics and skills, and this paper expounds it according to some cases handled. In 2003, the author represented the accused infringer in three industrial design patent infringement lawsuits. The three cases are the same patentee and the same defendant, and the products are all similar products. These three cases were called a series of cases by the Intellectual Property Court of Shenzhen Intermediate People's Court and were tried at the same time. In fact, there is no necessary connection between cases, so they are tried together in order to save procedures. The design patents in the three cases are: (1) "Multifunctional Electronic Clock (C63)", application number 01314763.3; (2) "Multifunctional Electronic Clock (C60)" Patent No.01314874.5; (3) The patent number of "Multifunctional Electronic Clock" is 0 13 13977.0. According to the client's wishes and the evidence provided, all three cases put forward four defense reasons: non-infringement defense, patent invalidation defense, preemptive right defense and freely known technology defense, because different cases get three different treatment results. In the case of (1), the clock face of the electronic clock in the appearance of the accused infringing product is basically the same as that of the patented product, but the difference is that the accused infringing product has increased its thickness due to the addition of the oxygen bar function, which can be said to be the difference in appearance. But for this kind of products, the main creative part is the clock face, and the oxygen bar combination electronic clock product is similar to the design product. Because the addition of oxygen bar function has not changed the clock face design, it is not enough to simply differ in thickness. The evidence provided by the defendant for claiming the right of first use is the product mold development contract, which was before the patent application date, but the contract did not specify the model and specifications of the mold products, and there was no evidence to prove that the development contract could directly correspond to the products involved, so the claim of first use right was not supported by the court; The evidence of the defendant's claim that the patent is invalid is that the plaintiff authorized the company to produce patented products and publish the colorful pages of the trade fair advertisement before the patent application date. The color page of the advertisement published at the fair has the organizer and publication time, which can clearly show the stereo photo of the plaintiff's patented products, with the front as the main display part, but it is different from the accused infringing products. As a public publication to prove that the patent right is invalid. The defendant claimed that the evidence that the design was freely known was the same as that of the above-mentioned needle with invalid patent right, but because the alleged infringing product claimed was not exactly the same as the above-mentioned existing design, and the appearance was similar to that of the patented product, the court did not support the claim of freely known design. During the defense, the defendant filed a request for invalidation of the patent right with the Patent Reexamination Board of the State Intellectual Property Office, requesting the court to suspend the trial of the case. The court did not suspend the trial, and made a judgment within half a year, and the infringement was established and the compensation was 50,000 yuan. If the defendant refuses to accept the appeal, within the above time limit, the Patent Reexamination Board shall make a decision to declare the patent invalid, and declare all patent rights invalid. Finally, according to the decision of the Patent Reexamination Board, the High Court revoked the first-instance judgment and rejected all the plaintiff's claims. Therefore, this case ended in the defendant's victory. In case (2), the appearance of the accused infringing product is basically the same as that of the patented product, and the defense of non-infringement is basically untenable; The evidence provided by the defendant for claiming the right of first use is the product mold development contract, which was before the patent application date, but the contract did not specify the model and specifications of the mold products, and there was no evidence to prove that the development contract could directly correspond to the products involved, so the claim of first use right was not supported by the court; The evidence that the defendant claims that the patent is invalid is the advertising color page of the company authorized by the plaintiff to produce the patented product. The picture displayed on the color page is consistent with the patented product and basically the same as the accused infringing product. If the color page has a statutory public time, it can be proved that the patent is invalid as a public publication, but the color page has no public date, so it cannot be proved that the product appearance has been made public. The defendant's claim that the design is freely known is the same as the above-mentioned needle with invalid patent right. During the defense, the defendant filed a request for invalidation of the patent right with the Patent Reexamination Board of the State Intellectual Property Office, requesting the court to suspend the trial of the case. The court did not suspend the trial, and made a judgment within half a year, and the infringement was established and the compensation was 50,000 yuan. If the defendant refuses to accept the appeal, within the above-mentioned time limit, the Patent Reexamination Board will make a decision to declare the patent invalid and maintain the validity of the patent right, and finally the High Court will uphold the judgment in this case. Therefore, the case ended in the defendant losing the case. Case (3) is different from the above two cases. The electronic clock in the appearance of the product accused of infringement is basically the same as that of the patented product, and the defense of non-infringement cannot be established. The evidence provided by the defendant for claiming the right of first use is the product mold development contract, which was before the patent application date, but the contract did not specify the model and specifications of the mold products, and there was no evidence to prove that the development contract could directly correspond to the products involved, so the claim of first use right was not supported by the court; The evidence of the defendant's claim that the patent is invalid is that the plaintiff authorized the company to produce patented products and publish the colorful pages of the trade fair advertisement before the patent application date. The advertisement color pages published at the fair have the organizer and publication time, which can clearly show the stereo photo of the plaintiff's patented products, with the front as the main display part, which is the same as the accused infringing products. If it can be used as a public publication, it proves that the patent right is invalid The evidence that the defendant claims that the design is freely known is the same as the evidence that the above patent right is invalid. During the defense, the defendant filed a request for invalidation of the patent right with the Patent Reexamination Board of the State Intellectual Property Office, requesting the court to suspend the trial of the case. The court did not suspend the trial and made a judgment within six months, ruling that the appearance used by the defendant was a free and well-known design and rejecting the plaintiff's claim. The plaintiff did not appeal. A few months later, the Patent Reexamination Board made a decision to declare the patent invalid, declaring all the patents invalid. Judging from the above three cases of design patent infringement, patent infringement lawyers should pay attention to the following points when the defendant claims the defense reasons: 1. Patent invalidation defense is a common defense measure in patent infringement cases. For many cases, including invention patent infringement cases, if the defendant claims that the plaintiff's patent right is invalid and the evidence is possible, the court accepting the case will generally terminate the trial and wait for the result of the patent invalidation case. The key factor of patent invalidation defense is evidence. It is necessary to prove that the technical scheme or appearance of the patent has been published or used publicly before the application date, but generally it should be based on the published evidence. Public publications can be formal public publications, such as books, periodicals, newspapers, etc. , or informal public publications, such as technical manuals and data manuals. However, no matter what kind of publication, it must have a clear publication time, otherwise it will have no probative effect. The advertisement color page in the first case of this serial case was actually printed and put in by the plaintiff before the patent application date, but it could not be identified because there was no printing and distribution time. The open technical content, whether legal or not, can generally destroy the novelty and creativity of patents, and the illegal open technical secrets also belong to the open technology in the patent law. 2. Don't waste precious trial time when fighting for non-infringement. There is reason to argue, but there is no reason not to blindly emphasize your own views. Judges who try patent infringement cases are generally experts in this field and need not be emphasized repeatedly. Repeated emphasis not only caused judges to hear cases, but also wasted their precious time, especially in the case of appearance patent, whether it is the same or similar, everyone will know at a glance. Therefore, when this reason is difficult to establish, we should focus on other beneficial uses. 3. There are two reasons to defend the technology of free knowledge. One is freedom, that is, technology without anyone's rights, and the other is technology that has been made public. In the sense of patent law, open technology without other people's patent right can be considered as freely known technology. Therefore, the evidence of master station's freely known technology can be invalid patent documents, foreign patent documents without patent right in China, academic papers published in books and magazines, etc. It can also be technical content directly obtained from publicly sold products. However, it is forbidden to use other people's valid patent documents in the defense of free and well-known technology. The claimed freely known technology must be exactly the same as the accused infringing product, and whether it is the same as the patented technology will not be considered. At the same time, it is argued that only one technical scheme can be used in the defense of freely known technology, and the technical scheme formed by combination cannot be used as the basis for identifying freely known technology. 4. As for the defense of the right of first use, in fact, the defense requirements of the right of first use are relatively more demanding. First of all, the right of first use requires the defendant to prove that he has made necessary preparations for the production and sale of patented products. This kind of preparation is generally prepared unilaterally by the defendant, and it is difficult to have high credibility. In the above-mentioned serial case, the court refused to recognize the right of first use on the grounds that the mold development contract did not have the product model and specification. In fact, models and specifications are available. Due to the close relationship between the two parties to the contract and the defendant, it is difficult to confirm the authenticity of the contract without the proof of a third party. Therefore, it is suggested that when preparing to produce a certain product, enterprises need to disclose the technical data such as the structure and appearance of the product in some way or take notarization measures to retain the evidence that they have begun to prepare for production and sales. Of course, the best way is to apply for a patent.

Legal objectivity:

Article 69 of the Patent Law of People's Republic of China (PRC) shall not be regarded as infringement of the patent right under any of the following circumstances: (1) The patentee or a unit or individual licensed by him uses, promises to sell, sells or imports the patented product or the product directly obtained by the patented method after selling it; (2) Having manufactured the same product, used the same method or made necessary preparations for its manufacture and use before the patent application date, and continuing to manufacture and use it only within the original scope; (3) Foreign means of transport temporarily passing through China's territorial waters and airspace use the relevant patents in their devices and equipment for their own needs in accordance with the agreements signed between their countries and China or international treaties to which they are both parties, or on the principle of reciprocity; (four) the use of relevant patents for scientific research and experiments; (5) manufacturing, using or importing patented drugs or patented medical devices for the purpose of providing information required for administrative examination and approval, or manufacturing or importing patented drugs or patented medical devices exclusively for them.