Viewpoint... The impact of patent evaluation reports on infringement cases.
Published:
2021-03-10
Recently, Zhu Bin and Ding Xiuting, lawyers of the Second Department of Zhonghuangye, Zhongcheng Qingtai, received a second-instance ruling from the Supreme People's Court [Case No.:(2020) Supreme Law Zhimin Final No. 1294], which corrected the wrong practice of the court of first instance in the application of the law of "finding that the patent involved lacks stability evidence and rejecting the plaintiff's lawsuit" by failing to provide a patent evaluation report, order the court of first instance to hear the case. The ruling was made by the Supreme People's Court, and many points in the case were clarified for the first time, which has typical guiding significance for the trial of similar cases in the future.
Since utility model and design patents only undergo preliminary examination and do not go through substantive examination procedures like invention patents, even if utility models and designs obtain patent certificates, their rights are still in an unstable state. For this reason, the court often requires the plaintiff to provide a patent right evaluation report as a basis for determining whether the patent right is stable in accordance with the provisions of Article 8 [Note: amended as Article 4 on December 23, 2020] of the Supreme People's Court on the application of legal issues in the trial of patent dispute cases.
At the same time, the article also stipulates that if the plaintiff fails to submit it without justifiable reasons, the people's court may rule to suspend the lawsuit or order the plaintiff to bear the possible adverse consequences. At this time, if the plaintiff submits an evaluation report with a negative conclusion, or does not submit an evaluation report, some courts often reject the plaintiff's lawsuit in accordance with the above provisions. This view of adjudication is still common, as searched by this lawyer, and the following are a few of the cases retrieved:
1. Shandong Higher People's Court (2017) Lu Min Zhong No. 678-Yan Junji and Laizhou Jufeng Machinery Co., Ltd. Civil Ruling of Second Instance on Disputes over Infringement of Utility Model Patent Right;
2. Shandong Higher People's Law (2016) Lu Min Zhong No. 2417-Linyi Hengjiu Furniture Co., Ltd. and Henan Jingtong Huafeng Furniture Co., Ltd. Civil Ruling of Second Instance on Dispute over Infringement of Design Patent Right;
3. Shandong Higher People's Court (2016) Lu Min Zhong No. 1684-Civil Ruling Letter of Second Instance on Dispute over Infringement of Utility Model Patent Right between Li Zhanquan and Zhao Jinshan;
4. Ningbo Intermediate People's Court (2016) Zhejiang 02 Minchu No. 694-Civil Ruling Letter of First Instance on Disputes over Infringement of Design Patent Rights between Ningbo Supply and Enjoy Agricultural Science and Technology Co., Ltd., Ningbo Yinzhou Pan Huo Tian Tian Snack Shop and Wuxi Orange Billion Food Co., Ltd;
5. Guangxi Zhuang Autonomous Region Higher People's Court (2019) Guiminzong No. 952-Zhuhai Jinsheng Lighting Technology Co., Ltd., Lingchuan County Municipal Construction Management Office Infringement of Design Patent Dispute Second Instance Civil Ruling;
The above cases are all effective judgments, and some are still views at the level of the High People's Court. It can be said that the evaluation report directly affects the litigation rights of the parties and brings troubles and obstacles to the rights protection of the parties.
What is gratifying is that since January 1, 2019, the Supreme People's Court has stipulated that invention patents, utility model patents, etc., in accordance with the ''Decision of the Standing Committee of the National People's Congress on Several Issues Concerning the Litigation Procedures of Patent and Other Intellectual Property Cases'' and other laws and regulations, the Supreme People's Court shall hear the first instance of highly technical cases. Cases that are not satisfied with this and appeal shall be heard by the Supreme People's Court. Previously, due to the lack of unified judgment standards, local courts had different views on the impact of evaluation reports on patent infringement cases. Now the Supreme People's Court directly acts as the court of second instance, in the (2020) Supreme Law Zhimin Zhong No. 1294 Civil Ruling This view was clarified.
Summary of views in the ruling:
1. Issuing a patent evaluation report is not a condition for the plaintiff to sue. The evaluation report is an important evidence for the people's court to consider whether to suspend the infringement litigation, and cannot be used as the basis for accepting the case.
2, even if the evaluation report conclusion is qualitative evaluation, the patent involved in the case has not been declared invalid, is still in a valid state. The patent evaluation report itself cannot be directly used as the basis for determining the validity of the patent right, and the failure to submit the patent evaluation report does not affect the right holder's judgment on whether the patent enjoys the patent right.
3. Article 8 of the Provisions of the Supreme People's Court on the Application of Legal Issues in the Trial of Patent Dispute Cases is mainly aimed at safeguarding the litigation rights of the plaintiff and the defendant, reducing litigation links and reducing the number of lawsuits. On the one hand, utility model patentees are encouraged to make full use of patent evaluation as a means to prove the stability of patent rights. On the other hand, in order to address the unstable status of utility model patent rights without substantive examination, guide the defendant to determine the validity of the patent right in accordance with the law through the invalidation procedure, and finally make an accurate judgment on the nature of his behavior. However, it should be noted that the above provisions do not mean that the issuance of a patent evaluation report is a condition for the plaintiff to sue, or that the defendant should suspend the lawsuit as long as it makes a request for invalidation within the defense period.
Attachment: Article 8 of the Several Provisions of the Supreme People's Court on the Application of Law in the Trial of Patent Dispute Cases
If a patent infringement lawsuit is filed against a utility model patent with the application date before October 1, 2009 (excluding that date), the plaintiff may issue a search report made by the patent administration department of the State Council; If a patent infringement lawsuit is filed for a utility model or design patent with the application date after October 1, 2009, the plaintiff may issue a patent evaluation report made by the patent administration department of the State Council. According to the needs of the trial of the case, the people's court may require the plaintiff to submit a search report or a patent evaluation report. If the plaintiff does not submit the case without justifiable reasons, the people's court may decide to suspend the lawsuit or order the plaintiff to bear the possible adverse consequences.
If the defendant in a dispute over the infringement of the patent right of utility model or design requests the suspension of the litigation, he shall, within the period of defense, request the plaintiff's patent right to be declared invalid.
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