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Whether the Patent Infringement Dispute Request Constitutes an Infringement Warning in the Sense of Patent Law

04

DEC

2019

In a patent infringement dispute, the patentee has a certain choice as to whether the dispute is handled by the patent administration department or by the court. However, whether the dispute is handled by the patent administration department or by the court, the key of which lies in determining whether the alleged infringing product or method falls into the protection scope of the patent. If the patentee requests the administrative department to handle a patent infringement dispute, the results of which may directly affect the interests of the party who is not the defendant may be deemed to have received a warning of infringement.

The Supreme Court's ruling in the following case explains what kind of behavior of the patentee can be said to have issued a warning of infringement to a party who is not the defendant.

Background

In July 5, 2018, Jiangsu Provincial Intellectual Property Office accepted a dispute request submitted by Safe Run against Cooper;

In July 12, 2018, enforcement officers of the Intellectual Property Office went to Cooper for on-site inspections;

In August 15, 2018, Infringement dispute suspended due to Cooper's invalidation request for the patent involved

In September 24, 2018, VMI mails a reminder to Safe Run, asking Safe Run to withdraw its administrative complaint or file a lawsuit for infringement

In September 30, 2018, Safe Run wrote back saying it would file a lawsuit or administrative complaint;

In October 19, 2018, First-instance court receives patent infringement lawsuit filed by Safe Run suing VMI and Cooper for infringing their patent rights;

In October 29, 2018, VMI and Cooper file suit on affirmation of no tort to the first-instance court. VMI and Cooper filed this suit requesting confirmation of the behavior for manufacturing, promised sales, sales, import and use of the molding machine and its related products does not infringe on the utility model patent right of Safe Run;

In December 18, 2018, Safe Run withdraws infringement dispute from Jiangsu Provincial Intellectual Property Office.

According to the "Supreme People's Court's Interpretation of Several Issues in the Application of Law in the Trial of Patent Infringement Disputes", the conditions for accepting an affirmation of no tort filed by the person being warned or an interested party by the people's court were clarified: 1. The patentee issued a warning of infringement; 2. A reminder letter was sent by the person being warned or the interested party back to the patentee; 3. The patentee did not withdraw the warning or file a lawsuit within a reasonable period of time.

In this case, Safe Run was the patentee holding the patent. The reason for complaining to Cooper was that Cooper was the user of the alleged infringing device. VMI was the manufacturer of the alleged infringing device, however, Safe Run only filed a patent dispute settlement request against the user Cooper, but did not submit its request to the manufacturer VMI. In this case, whether VMI meet the conditions for admitting affirmation of no tort to the court, and in particular whether the patent dispute settlement request filed by the patentee Safe Run to the user Cooper can be considered as a warning of infringement to VMI, became one of the focus of the case.

The judgment from First-instance court

Regarding whether the administrative complaint filed by Safe Run to the Intellectual Property Office constitutes an “infringement warning” in the sense of Patent Law, the first-instance court held that Safe Run had remedied its power in the form of an administrative complaint and an administrative investigation was conducted by administrative enforcement officer. The patent infringement dispute between Safe Run and VMI and Cooper has entered the statutory dispute resolution process, and there is no evidence that Safe Run has not cooperated or hindered the normal operation of administrative procedures, so VMI and Cooper may determine whether their alleged infringing device constitutes infringement through this administrative procedure. In the case of Safe Run exercising its statutory rights protection in accordance with the law without abuse of intellectual property rights, Safe Run' administrative complaint to the Intellectual Property Office does not constitute a “infringement warning”.

The judgment from Supreme People's Court

The Supreme Court held that, when the patentee claims the infringement of the opposite party, but does not resolve it through legal procedures, leaving the opposite party in an uncertain state, suit on affirmation of no tort aims at giving the opposite party the right to sue, so that it can eliminate this uncertainty status. In this case, Safe Run filed a request to the patent administration to deal with a patent infringement dispute. The opposite party of this administrative process is Cooper, the user of the alleged infringing device. However, for the manufacturer of the device, VMI, it must recognize its device produced and sold may be subject to allegations of infringement. Once the Intellectual Property Office determines that the alleged infringing device constitutes infringement, its device market will be affected. Therefore, the impact of administrative procedures on VMI's operations in this case is objective. Secondly, in the request made by Safe Run, the defendant was only the user Cooper, but the manufacturer, VMI, was not the defendant. VMI did not have an opportunity to participate in the administrative process, and could not claim its corresponding right in this administrative process. Due to whether the alleged infringing device manufactured and sold by VMI is deemed to constitute infringement by Intellectual Property Office, it is already in an uncertain state, its device market may be affected, and its rights and interests cannot be guaranteed in the corresponding administrative processing procedures. Thus, in this case, for the interests of VMI, the patent infringement dispute request filed by Safe Run should be identified as a warning of infringement as referred to Article 18 of the judicial interpretation of Patent Law.

Key point of this case

Affirmation of no tort is the procedural remedy provided by the opposite party to exercise the right of action in order to rule out whether the infringement of the intellectual property rights of others is in doubt. The infringement warning is the first prosecution element to confirm non-infringement, that is, the patentee issues infringement warning of patent rights to others.

Through the ruling of the Supreme Court mentioned above, the practical explanation of the patentee's infringement warning to others is made clearer in judicial practice. First, the object of infringement warning is not only the defendant of the alleged infringement, but also the relevant stakeholders of the alleged infringement, including the manufacturer, seller, importer, user, etc. of the alleged infringing product. Secondly, the judgment criterion of the warning infringement was determined, that is, once the rights and interests of the parties would not be guaranteed due to the complaint of the patentee, they could be regarded as having received the Infringement warning.

In this case, the administrative complaint filed by the patentee Safe Run to the Intellectual Property Office was only for Cooper. Therefore, for Cooper, this does not constitute a “infringement warning” because Cooper ’s rights can be guaranteed in this administrative dispute. However, as the manufacturer of the alleged product, in this case, because VMI was not the defendant, its rights and interests are in an uncertain state and there is no guarantee, so the administrative complaint filed by the patentee Safe Run clearly constitutes a "infringement warning" to VMI.

In addition to satisfying the first prosecution element of the infringement warning, as long as the other prosecution elements of Article 18 of the judicial interpretation of the Patent Law are satisfied, the manufacturer VMI or other relevant stakeholders of the alleged product shall have the right to file a suit on affirmation of no tort against the patentee Safe Run.

About the Firm

Ge Cheng & Co Ltd.
Address Level 19, Tower E3, The Towers, Oriental Plaza, No 1 East Chang An Avenue, Beijing 100073, China.
Tel 86-10-8518 8598
Fax 86-10-8518 3600
Email davidcheng@gechengip.com , info@gechengip.com
Link www.gechengip.com

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