Viewpoint | Knowledge Management-Avoid Loss of Novelty Disclosure

In the past less than a year, many of the cases that I have contacted or directly participated in have involved patent infringement/confirmation disputes that were disclosed before the application date. Therefore, I think it is necessary to discuss the behavior disclosed before the patent application date on patent infringement. Or the impact of confirmation. The following is a description of the basic situation of several cases.

Case one:

Enterprise A has developed a product with certain innovative value, which is put on the market after small batch production. While the product sales have a certain effect, competing products that are basically consistent with the product innovation point also appear on the market. At this time, Enterprise A decides to apply for a patent for the corresponding invention to protect its technological achievements.

Case two:

A certain place formed a production base for a product with strong demand in the destination country, and gathered many enterprises. Among them, enterprise B applied for a product with a certain shape and pattern, as well as the mold for producing the product, and obtained a design patent, and then filed a customs record on the design patent, and filed an application for protection measures with the customs in due course, and seized a batch of products that a company was going to send to the destination country.

Case three:

Enterprise C tried to initiate infringement charges against Enterprise D. Enterprise D responded that there was sufficient evidence to prove that a patent used by Enterprise C as the basis of rights was not novel due to the disclosure of the relevant product before the application date. Enterprise D attached complete evidence that Enterprise C had been put on sale on a certain platform on a certain day of a certain year before the application date of the patent in question.

Case four:

Enterprise E holds a patent for a creative product, and uses this patent as the basis of rights to sue the enterprise for infringement. The enterprise has initiated the invalidation procedure for the patent. The core evidence is the publicity photo of the corresponding creative product published by enterprise E on its WeChat public number.

Case five:

Enterprise Geng participated in an exhibition to publicize its products. The technical personnel applied by the enterprise saw that the product was innovative and inquired about the relevant products. After confirming that the relevant technology and design contained in the product had not applied for a patent, they notarized and preserved the public behavior of the product at the exhibition and put it on the market after imitation. Although the enterprise applied for and obtained the patent right for the relevant products afterwards, the relevant patents were all invalidated during the rights protection stage because they were disclosed before the application date.

The above five cases all involve the failure of the enterprise holding the technology or design to improperly disclose the relevant technology or design before the formation of the patent application right, resulting in the relevant technology or design constituting the existing technology or design, and the problems involved in the above five cases will be explained one by one below.

(I) legal basis

Article 24 (A24) of the Patent Law (2022) An invention-creation for which a patent is applied for shall not lose its novelty if, within six months before the filing date, one of the following circumstances occurs:

(I) made public for the first time for the purpose of public interest in the event of a state of emergency or extraordinary circumstances;

(II) exhibited for the first time at an international exhibition sponsored or recognized by the Chinese Government;

(III) first published at a prescribed academic or technical conference;

(IV) others to divulge its contents without the consent of the applicant.

Description of (II) cases

1. In case 5, the enterprise g participated in an exhibition to publicize its products. during the confirmation stage, it claimed that the nature of the exhibition was an exhibition sponsored by the Chinese government. however, the state intellectual property office finally supported the applicant, that is, the enterprise's application, and declared all the patents involved invalid. There are two reasons. First, the enterprise G should submit the relevant patent application within the grace period (this is in line with the regulations), and at the same time, it should submit a declaration of novelty grace period within two months from the application date of the patent application in question. Obviously, it has lost the relevant rights to make the relevant declaration at the invalid stage. Second, the level of the exhibition is not enough. The exhibition should be an international exhibition, and it should be sponsored or recognized by the Chinese government. The most widely recognized example in the early years is that the level of the Canton Fair is not enough. Although it is already an international exhibition, it is not sponsored by the Chinese government, nor is it recognized by the Chinese government.

2. At present, the most widely used item is item (IV), paragraph 1, Article 20 of the Patent Law (2022), that is, others disclose its contents without the consent of the applicant. Specifically, it includes: others disclosing the contents of the applicant's invention and creation without complying with the express or implied obligation of confidentiality; Others use threats, fraud, theft, espionage and other improper means to learn the contents of the invention and creation from the inventor or any other person who has been told by him to learn the contents of the invention and creation and then disclose it.

The aforementioned case 4 involves this situation. The reason for the enterprise E's defense is that the disclosure on the WeChat public number is the personal behavior of one of its employees, and the personal behavior violates the confidentiality agreement between it and the employee. Then, the relevant confidentiality agreement is only a general agreement that does not have a clear direction, and only reflects the enterprise's willingness to keep secrets. For the carrier of the relevant business secrets, there is neither a confidentiality identification nor a restriction on the scope of personnel contacted by the confidential carrier. In particular, the publication behavior on the WeChat public number of the enterprise should belong to the enterprise behavior, there is a stronger reason to believe that the publication of articles on the WeChat public number operated by enterprises has undergone strict examination.

3. The other three cases do not involve the disclosure without loss of novelty as stipulated in the first paragraph of Article 24 of the Patent Law (2022), but they all belong to the improper management of trade secrets by the "right holder". When the management falls into a state of disorder, omissions will be unavoidable.

What can get inspiration from it is the opposite party in case 3 and case 5. Both enterprises have relatively complete intellectual property management systems, so that even ordinary employees can identify the information that is beneficial or harmful to the company, and fix the relevant behaviors in a standardized way, leaving credible evidence for future behaviors.

4. As legal persons, we all know that the evidence used to prove the existence of relevant facts cannot exist forever, and the same is true for public acts before the application date. The shape and pattern of the product in the patent applied for by enterprise B in case 2 have actually been used in such products for many years before the relevant patent application date, but there is no credible evidence to prove it.

However, the problem is usually two sides of the same body. For those who apply for patents on related technologies or designs late due to weak awareness of intellectual property protection, it does not necessarily lead to the loss of rights. It is that over time, the traces of related behaviors will gradually The decrease, or even disappear completely. Relatively speaking, enterprises with strong awareness of intellectual property protection will, like the opposite parties in cases 3 and 5, consolidate their certificates in advance, so that the market control is always on their own side, thus being in an advantageous position in the market competition.

Article 62 (A62) of the Patent Law (2020) stipulates that in a patent infringement dispute, if the alleged infringer has evidence to prove that the technology or design implemented by him belongs to the existing technology or existing design, it does not constitute an infringement of the patent right.

Article 22, paragraph 5, of the Patent Law (2020) provides that the prior art referred to in this Law means the technology known to the public at home and abroad before the filing date.

Article 23, paragraph 4, of the Patent Law (2020) stipulates that the existing design referred to in this Law refers to the design known to the public at home and abroad before the date of filing.

Then will there be any conflict between the provisions of A62 and A24. After all, the disclosure without loss of novelty stipulated in A24 involves the validity of rights, but in fact the relevant technology or design already constitutes the existing technology or existing design, but it may not be considered as not losing novelty; However, the existing technology and existing design defenses stipulated in A64 are infringement defenses. Obviously not, the disclosure without loss of novelty stipulated in A24 is obviously able to protect the technical scheme or design required by the relevant patent. If the existing technology or existing design stipulated in A62 is understood to cover the content that A62 nominally already constitutes the existing technology or existing design, then it is empty talk or meaningless provision to be protected.

1. [Case No.] (2020) Supreme Law Zhihang Final No. 588

referee gist]

The core of the provisions of the patent law on the "disclosure of the contents of others without the consent of the applicant" in the grace period of novelty lies in the disclosure of the contents of the invention against the wishes of the applicant. When making specific judgments, the applicant's subjective meaning and objective behavior can be comprehensively considered, that is, whether the applicant is subjectively willing to disclose or whether the public behavior is allowed to occur, and objectively whether certain confidentiality measures have been taken to make his invention and creation difficult to be known by the public. If another person violates the express obligation of confidentiality or violates the implied obligation of confidentiality based on social concepts and business habits, and discloses the content of inventions and creations without authorization, it constitutes a violation of the applicant's wishes and belongs to "others disclosing the content without the applicant's consent".

referee excerpt]

According to the provisions of Article 24, Item 3 of the Patent Law, an invention-creation for which a patent is applied for shall not lose its novelty if it is disclosed by others without the consent of the applicant within six months before the date of application. The core of disclosure caused by disclosure of the contents by others without the consent of the applicant lies in the disclosure of the contents of the invention and creation by others against the wishes of the applicant, and its specific manifestations include but are not limited to: the disclosure of the contents of the invention and creation by others who fail to abide by the express obligation of confidentiality or the implied obligation of confidentiality according to social concepts and business habits; disclosure by others of the contents of the invention from the inventor or applicant by illegal means such as threats, fraud or espionage, etc. When judging whether the disclosure is against the wishes of the applicant, the subjective expression of the applicant's intention and the objective behavior can be considered comprehensively, that is, whether the applicant is subjectively willing to disclose the contents of his invention and creation, or allow the public behavior to occur; objectively, whether certain confidentiality measures are taken to ensure that his invention and creation are not easily known by the public.

The circumstances of the grace period for novelty stipulated in Article 24 of the Patent Law are aimed at the fact that the disclosed content belongs to the "invention-creation for patent application" itself, or the difference between the disclosed content and the "invention-creation for patent application" cannot at least exceed the scope of affecting novelty. This case involves a graphical user interface design patent. According to Article 2 of the Patent Law, a design patent is a combination of a product and a design. The product name of this patent is "computer with graphical user interface", that is, the product is a computer, and the graphical user interface shown in the design diagram and the change state diagram is displayed. Patentees Qihoo and Qizhi claim that the prior disclosure of the novelty grace period, although the graphical user interface presented in the "360 Security Guard 10.0Beta" software, did not appear on the computer. However, since the software is usually run on a computer, it must be carried by hardware such as a computer. Considering the particularity of the appearance design of the graphical user interface, the graphical user interface presented in the "360 Security Guard 10.0Beta" software can be regarded as The content disclosed first when judging whether it meets the novelty grace period.

In this case, the existing evidence 1 can prove that the poster published the software with the graphical user interface design of this patent on the card meal forum before the patent application date, but its installation interface prompted "for trial only" and required to enter the experience code, and only some users who can obtain the experience qualification can try the software. Subsequently, the follower issues a 7-Zip software download prompt so that the public can download and use the software through the 7-Zip software. It should be pointed out that Qihu and Qizhi recognized that the software link on the Kaifan Forum on August 19, 2014 was an internal test, but advocated that the poster disclosed the software content without consent. In addition, according to the content of evidence 2, the user who obtained the priority experience qualification also further disclosed the software content. In this regard, the Supreme People's Court analysis is as follows:

First, as far as the poster is concerned, first of all, it makes it clear that the software is "only for users who have obtained the priority experience qualification" and requires the input of the experience code. From the poster's meaning and the experience code restriction measures adopted, it can be seen that he is subjectively unwilling to disclose the content of the software, and there is no evidence to prove that he has the willingness to allow the software to be disclosed. Objectively, it has taken confidentiality measures requiring the input of experience codes to ensure that the content of the software is not easily known by the public. Therefore, the poster has fulfilled the obligation of non-disclosure in accordance with the requirements of the patent applicant and has not disclosed the software, which does not belong to "others" as stipulated in Item 3 of Article 24 of the Patent Law ". Secondly, through the above-mentioned behavior of the poster, according to the social concept and the business practice of the software internal test, the poster who makes the 7-Zip software download prompt should know or should know that the poster or the software right holder has the intention and behavior of confidentiality, and therefore has the implied obligation of confidentiality. However, the follower violated the implied confidentiality obligation based on social concepts and business practices, disclosed the abnormal opening method of the software and presented the graphical user interface in the software to the public, which violated the wishes of the patent applicant. It should belong to the situation that "others disclose its content without the consent of the applicant" as stipulated in Item 3 of Article 24 of the Patent Law.

Second, as far as users who can obtain the priority experience qualification are concerned, since the experience center page requires the user who receives the experience code to have a confidentiality commitment, the experience user should abide by its confidentiality agreement. The real intention of the patent applicant is that the downloaded software is limited to trial and experience for qualified users, and the experience code is generally a restriction on the eligibility of the trial. Therefore, although the experience code is not a password, its function is basically the same as that of a password, and both limit the scope of people who come into contact with the software. Therefore, for users who can obtain the priority experience qualification, they certainly have the express obligation of confidentiality. In violation of the agreed obligation of confidentiality, the disclosure of the applicant's invention and creation belongs to the circumstances stipulated in Item 3 of Article 24 of the Patent Law.

To sum up, Evidence 1 belongs to the existing design disclosed before the application date of this patent because the graphical user interface design presented by the downloaded software is in a state that can be known to the public due to the prompt behavior of the poster, and its time is earlier than the application time of this patent. However, because the court believes that the software disclosure behavior mentioned in Evidence 1 belongs to the situation of no loss of novelty grace period stipulated in Item 3 of Article 24 of the Patent Law, therefore, evidence 1 cannot be used as a comparison document of the previous design. The comparative design presented in Evidence 1 is the basis for the decision of the accused to find that the patent does not comply with Article 23, paragraph 2, of the Patent Law, and since the basis cannot be established, the decision of the accused shall be revoked.

2. [Case No.] (2020) No. 12151 at the beginning of Beijing 73 Line

referee gist]

WeChat circle of friends is a social function provided by WeChat, an instant messaging tool. Its open objects not only have the basic requirement of communicating with each other, but also have the function of further setting the visible range on this basis. It provides a strong controllable operation for the sharing range of the content published in the circle of friends. According to the specific audience of WeChat circle of friends and the authority of the audience, whether the content is in a state that the public can know if they want to know.

referee summary]

As a social function provided by WeChat, an instant messaging tool, WeChat circle of friends has the basic requirement of communicating with each other, and also has the function of further setting the visible range on this basis. It provides a strong controllable operation for the sharing range of the content published in the circle of friends. This kind of function setting of WeChat circle of friends makes it possible to have its specific user group and to show its corresponding behavior habits. Whether the information released by WeChat circle of friends constitutes disclosure in the sense of patent law, and whether the information is in a state that the public wants to know, needs to be based on the characteristics of WeChat circle of friends, and also needs to be comprehensively judged in combination with the situation of WeChat users and the content released by WeChat circle of friends. Under normal circumstances, if it can be determined that the content published by the circle of friends has a strong intention to promote and sell goods according to the continuity and relevance of the content, it is reasonable to assume that the main audience of the circle of friends is the subject with strong willingness to sell and purchase goods, and such subjects have a strong possibility of dissemination and diffusion of commodity information; otherwise, it is considered that the single or occasional product information in the personal WeChat circle of friends is not sufficient to confirm the possibility of widespread dissemination, and it is not appropriate to presume that the single or occasional content can be extended to any state that the audience wants to know.

Although the plaintiff claimed that the WeChat account involved was the micro-signal of the employees of the company, evidence 4 showed that the WeChat account had released a total of 8 circle of friends from January 21, 2016 to January 25, 2016, of which only 2 were related to product pictures and 1 was released on January 23, 2016 with the words "Factory Direct Sports Kettle Wants to Buy Quickly and Highly", the other one only shows its title as "Dear new and old customers/Spring Festival period, Datong Plastic Products Factory will have a holiday from January 26 to February 15/on February 16...", and the rest are photos of private life or feelings to share, including weather, relatives' illness, etc, however, there is no complete product name, model, sales contact information and other specific text introduction in the two circle of friends involving product pictures. Based on the information of the circle of friends, the micro signal is obviously not used for the purpose of promoting products. Therefore, the WeChat account number of evidence 4 is a personal account number. In the absence of other supporting evidence, the content shown in evidence 4 in this case alone is not enough to prove that the content of the circle of friends claimed by the plaintiff is in a state that the public wants to know from the date of publication. The relevant product design shown therein cannot be recognized as the existing total of this patent and cannot be used to evaluate whether this patent conforms to the provisions of paragraph 2 of Article 23 of the patent.

The technology or design results before the formation of the patent application right should avoid disclosure, even if there may be circumstances that do not lose novelty, but may still lose the right. The management of such technologies or design results shall be carefully managed in accordance with the trade secret information, so as to ensure that the process data can be effectively recovered and extracted, and provide reliable support for the confirmation of rights or the response to infringement litigation.