March 2024
Yanting Pei and Teresa Huang
In the previous article, we mainly discussed the determination of patent infringement. However, in fact, whether infringement can be determined ultimately, in addition to confirming whether the technical features of the accused infringing object fall within the scope of patent protection, the conclusion of infringement must also be based on the examination of the defendant’s defense on the basis of whether the arguments can be established. Therefore, in this article, we will mainly discuss which defenses the defendant can raise against an allegation of patent infringement, or in other words, what kind of argument can constitute a valid defense.
In practice, when facing accusations of patent infringement, the defendant can actually make various non infringement defenses from both procedural and substantive perspectives. As for the procedure, it can be argued that the plaintiff is not qualified, the statute of limitations for litigation has expired, or an objection to jurisdiction has been raised, etc. On a physical level, it can be claimed that the patent is invalid, the patent right expires, does not constitute infringement, and is not considered infringement, etc. Due to space limitations, this article will mainly explore the elements required for defense in cases where accused infringement does not constitute infringement or is not considered infringement, for the reference of readers (the term “patent” in this article only refers to invention and utility model patents, and will not be repeated below).
I. Does not constitute an infringement defense
According to Article 67 of the Patent Law, in a patent infringement dispute, if the accused infringer has evidence to prove that the technology or design they implement belongs to the existing technology or design, it does not constitute infringement of patent rights. In addition, according to Article 22 of the Patent Law, in determining the novelty of the technology to be applied for, it is also required that the technology has not been applied to the patent administration department of the State Council before the application date, and is recorded in the patent application documents or published patent documents after the application date (i.e., in the case of conflicting applications). Therefore, in the determination of non-infringement, two main issues should be considered :(1) whether it constitutes existing technology? (2) Does it constitute a conflicting application? Therefore, this article will mainly provide a brief analysis on these two aspects.
A. Does it constitute existing technology?
The so-called existing technology, according to Article 22 of the Patent Law, refers to technology that is known to the public domestically and internationally before the application date. In practice , when examining whether the accused infringing technology constitutes existing technology, the court mainly considers the following aspects[1]:
1. Time and geographical limitations
According to Article 22 of the Patent Law mentioned above, the defense of prior art claimed by the defendant needs to prove that such technology existed before the patent application date. However, since Article 29 of the Patent Law also stipulates the priority of foreign first patent applications and Article 24 stipulates a special grace period for novelty, if the patent enjoys the priority of foreign first patent applications, the prior art shall be examined according to the time standard before the priority date, and if the patent enjoys the grace period, the standard for grace period shall be examined.
In addition, Article 22 of the Patent Law also stipulates that existing technologies must be publicly disclosed both domestically and internationally. Therefore, the examination of corresponding existing technologies is also based on a global scope. However, it should be noted that prior to the amendment in 2008, the Patent Law did not define prior art and provided different geographical ranges for different types of prior art. Among them, the scope of prior art disclosed in the form of publications is global; The scope of existing technology disclosed through use or other means is limited to domestic use, that is, technology publicly used or otherwise disclosed abroad before the patent application date is not considered as existing technology. Therefore, when examining the defense of existing technology, the court will determine the geographical scope of existing technology based on the legal provisions at that time for patents applied before 2008 and patents applied after 2008.
2. Public disclosure method
In terms of disclosure methods, Article 22 of the Patent Law stipulates that “it shall be known to the public”, which means that whether it is publication disclosure, use disclosure, or other forms of disclosure, it shall be included.
In terms of publication disclosure, in practice, courts believe that publications are not limited by geographical location, language, or method of acquisition, nor by age. The publication circulation, whether someone has read it, and whether the applicant is aware of it are irrelevant, but publications printed with the words “internal information”, “internal distribution”, etc., if they are indeed distributed within a specific scope and require confidentiality, are not considered public publications.
As for the use of disclosure, the court believes that as long as the relevant technical content is made available to the public through manufacturing, use, sales, imports, exchanges, gifts, demonstrations, exhibitions, and other means, it constitutes the use of disclosure, regardless of whether it is publicly known. However, if no explanation of the technical content is provided, so that technical personnel in the relevant field cannot know the structure, function, or material composition of the product display, it does not belong to the use of public disclosure.
If a publicly available product is used, even if the structure and function of the product or device used need to be destroyed to be known, it still belongs to the use of publicly available products. In addition, the use of publicly available information and visual materials, such as posters, drawings, photos, samples, etc., which are placed on exhibition booths or displayed in windows for the public to read, is deemed as the use of disclosure.
The so-called other forms of disclosure include oral conversations, reports, discussions, radio, television, movies, and other means that can make the public aware of technical content.
In addition, it should be noted that if a technology that is in a confidential state does not constitute “existing technology”, but a person with a confidentiality obligation violates regulations, agreements, or tacit agreements to disclose secrets, resulting in the disclosure of the technology (design) content and making the corresponding technology (design) known to the public, then the technology (design) constitutes existing technology (design).
3. Comparison principles and methods
In terms of the principle of comparison, it is generally necessary to compare the accused infringing technology with existing technology, rather than comparing the plaintiff’s technology with existing technology.
In terms of comparison methods, according to Article 14 of the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Disputes (Fa Shi [2009] No. 21), as long as all technical features that fall within the scope of patent protection are the same or have no substantial differences from the corresponding technical features in an existing technology case, the people’s court should determine that the technology implemented by the accused infringer belongs to the existing technology.
The so-called no substantial difference, according to the guidelines of the Shanghai court[2], if ordinary technical personnel in the field believe that the accused infringing technical solution is a simple combination of existing technology and common knowledge in the field, then the existing technology defense is established.
B. Does it constitute a conflicting application?
As Article 22 of the Patent Law stipulates that the same patent application for invention or utility model submitted by any unit or individual to the China National Intellectual Property Administration before the application date of the application and published or announced after the application date (including the application date) impairs the novelty of the patent application submitted on the application date, some people also claim that the sued infringing technology belongs to the technology that contradicts the application and should constitute the existing technology. However, although the court will refer to the existing technology defense in general, the courts in different regions seem to have different views on the specific application rules.
In the trial guidelines of the Jiangsu Provincial High Court, if the accused infringer claims non-infringement defense based on a patent application that has already been published, it is believed that the court can refer to the provisions of applying existing technology defense.[3] However, the Beijing High Court believes that the conflicting application does not belong to the existing technology or design, and cannot be used as a reason to defend the existing technology or design. If the accused infringer claims that the accused infringing technology or design is the same as the conflicting application, they may refer to the doctrine of the existing technology or design .[4] In addition , the Shanghai court believes that the defense of conflicting application can be effective only in the same infringement by applying the existing technology defense by analogy, and the noninfringement defense can be established when the accused infringing technical solution is the same as the disclosed technical solution in the conflicting application.[5]
From this perspective, it is necessary to strictly make comparison while raising the defense of conflicting applications, and the existence of existing technology cannot be claimed simply because there is a conflicting application.
II. Not considered as infringement defense (mainly discussing right of prior use defense)
According to Article 75 of the Patent Law, any of the following circumstances shall not be deemed as infringement of patent rights: (1) a patented product or a product directly obtained by a patented method, which is sold by the patentee or a licensed entity or individual, and then used, promised for sale, sold, or imported; (2) If the same product has been manufactured, the same method has been used, or necessary preparations have been made for manufacturing and use before the patent application date, and only continues to be manufactured and used within the original scope; (3) Foreign means of transportation that temporarily pass through China’s territory, waters, or airspace, and use relevant patents in their devices and equipment for their own needs in accordance with agreements signed between their respective countries and China or international treaties to which they jointly participate, or in accordance with the principle of reciprocity: (4) Using relevant patents exclusively for scientific research and experimentation; (5) To provide the necessary information for administrative approval, those who manufacture, use, or import patented medicines or patented medical devices, as well as those who manufacture or import patented medicines or patented medical devices specifically for them.
In practice, the main difficulty to determine is situation two, which is the so-called right of prior use defense. This article will briefly analyze this.
According to the above legal provisions and the judgment guidelines of various courts, in practice, claiming the right of prior use defense actually requires meeting many prerequisite conditions[6];
A. Necessary preparations have been made for manufacturing and use
This refers to the completion of the main technical drawings or process documents necessary for implementing the invention or creation, or the manufacture or purchase of the main equipment or raw materials necessary for implementing the invention or creation.
It should be noted that the so-called main technical drawings or process documents should refer to complete, detailed, and immediately implementable technical drawings or process documents, rather than process documents such as sketches, diagrams, and diagrams that still need further refinement. The so-called main equipment and molds should refer to special equipment or molds required for the implementation of inventions and creations, rather than general equipment for general processing or production. In addition, the party defending the right of prior use shall bear the burden of proof for the fact that it has made necessary preparations for manufacturing and use.
B. Only continue to manufacture and use within the original scope
The original scope includes: the production scale already existing before the patent application date, as well as the production scale that can be achieved by utilizing existing production equipment or based on existing production preparations.
C. Legitimate source
The method or design that was manufactured or used in advance should have been independently researched and completed by the prior user or obtained through legal means from the patentee or other independent researchers, rather than being plagiarized, stolen, or obtained through other improper means before the patent application date. If the accused infringer defends the right of prior use with illegally obtained technology or design, it will be difficult to obtain support.
D. Nontransferable
The prior use right holder shall not transfer the technology they have previously implemented, unless it is transferred together with the affiliated enterprise. Where the right holder transfers or licenses others to implement the technology or design that has already been implemented or is ready for necessary implementation after the patent application date, if the accused infringer claims that the implementation is within the original scope, it generally will not be supported, unless the technology or design is transferred or inherited together with the original enterprise.
III. Practical suggestions
In summary, we mainly discussed the defense of existing technology, conflicting applications, and prior use rights. As can be seen from the above, when proposing these claims in practice, corresponding conditions also need to be met. If the conditions are not met, the effect of defense cannot be achieved. From the perspective of the rights holder, once the defense of existing technology is constituted, it will pose a fatal blow to the owned patent. Therefore, in the research and development process, it is necessary to pay attention to the retrieval of prior technology and take strict confidentiality measures. During the application process, attention should also be paid to the modification of application documents to avoid the occurrence of conflicting applications and obstacles to future rights protection.
[1] Please refer to Article 137-144 of the Guidelines for the Determination of Patent Infringement by the Beijing High Court, as well as Section 5.1 of the Guidelines for the Trial of Patent Infringement Disputes by the Jiangsu Provincial High People’s Court.
[2] Please refer to Article 13 of the Guidelines for the Trial of Patent Infringement Disputes by the Shanghai High People’s Court (2011).
[3] Refer to 5.1.6 of the Guidelines for the Trial of Patent Infringement Dispute Cases by the High People’s Court of Jiangsu Province.
[4] Please refer to Article 142 of the Guidelines for Patent Infringement Determination issued by the Beijing High Court
[5] Please refer to Article 14 of the Guidelines for the Trial of Patent Infringement Disputes by the Shanghai High People’ s Court (2011).
[6] Refer to Article 133 of the Guidelines for Patent Infringement Determination by the Beijing High Court; Section 5.2 of the Guidelines for the Trial of Patent Infringement Dispute Cases by the High People’s Court of Jiangsu Province.
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- Series Articles of Patent Protection Practice (1) ─ Introduction to the Scope of Protection of Patent Rights and Patent Layout (Mainland China)
- Series Articles of Patent Protection Practice (2) ─ Brief Analysis of the Attribution of Patent Rights in Service Invention and Cooperative Development (Mainland China)
- Series Articles of Patent Protection Practice (3) ─ A Brief Analysis of Disputes in Patent License Contract (Mainland China)
- Series Articles of Patent Protection Practice (4) ─ Determination of Patent Infringement (Mainland China)
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