Newsletter: Volume 5 (2021) Chinese IP Information
(English and Chinese)
- Interpretation of the number "one" in the claims
- The handling of implementer of the horizontal agreements demanding other implementers’ compensation for the so-called economic losses
- Interim measures for the processing of related examination businesses regarding the implementation of the revised Patent Law
- Attribution of rights on the patent application by using other's technical secrets without permission
Interpretation of the number "one" in the claims——(2020) Supreme People’s Court Final Civil Judgment No. 1070
Shenzhen Chuzhidao Environmental Protection Hi-Tech Co., Ltd. (hereinafter referred to as Chuzhidao Company) is the patentee of the invention of "Dynamic Physical Shielding Purifier". Chuzhidao Company believed that the product being sued with infringement produced by Shenzhen Zhongtianmei Technology Co., Ltd. (hereinafter referred to as Zhongtianmei Company) belongs to the protection scope of claim 1 in the patent in dispute, and sued it to the court, demanding Zhongtianmei Company to stop the infringement and compensate its loss.
Claim 1 of the patent in dispute includes the following technical features:
A. a dynamic physical shielding purifier, which is characterized in covering a central disk and a few circular spokes;
B.one end of the spoke is radially radiated and fixed to the on the center plate;
C. the product multiplied by the diameter and the number of the spokes placed in the same plane is between 46 and 460 (including the both digitals);
D. the diameter of the spokes is in millimeters when calculating, which is bigger than or equal to 0.3mm.
In the trial of second instance, both parties confirmed that the sued infringing technical solution have the same technical features as the above-mentioned technical features A, B and D, and there was only a dispute over technical feature C. The spokes on the sued infringing product formed two parallel planes, and Zhongtianmei Company believed that this feature was obviously different from the "in the same plane" described in claim 1.
The court of first instance believed that the alleged infringing technical solution was equivalent to the claim 1 in dispute in terms of the controversial technical features, so it determined that Zhongtianmei constituted infringement and judged it to compensate Chuzhidao Company with a 500,000 yuan. Zhongtianmei Company refused to accept the original judgment and appealed to the Supreme People's Court. The trial of second instance reckoned that the original court’s incorrectly understood the number "one" in claim 1, and in terms of the technical features in dispute, the alleged infringing technical solution was same as claim 1 involved in the case, instead of being equivalent, so the court identified the infringement to be established, and accordingly rejected the appeal and affirmed the original verdict.
In accordance with the Supreme People’s Court, based on the understanding of technical feature C by those of general skill in the art, who have already read the claims, descriptions and attached drawings of the patent involved in the case, the object defined by the technical feature C is in fact the product value of the diameter and number of spokes in the same plane. The core content of the value is the coordination between the two physical parameters of spoke thickness and arrangement density. The pursuing technical effect is to maximize the purification rate of the dynamic physical shielding purifier, rather than the number of planes composed by spokes. In other words, the “in the one identical plane” mentioned in the technical feature C should be understood as “in the same plane”, and this understanding has no relation to the number of planes formed by the spokes.
Through the trial of this case, the Supreme People’s Court clarified a rule of adjudication, that is, if a patent claim contains the number “one”, it should not be identified as a quantitative limitation, but ensure its specific meaning according to those skilled in the art after reading the documents. This case has certain reference significance for the interpretation of specific numbers in the claims.
May 11 2021
The handling of implementer of the horizontal agreements demanding other implementers’ compensation for the so-called economic losses——(2020) Supreme People’s Court Final Civil Judgment No. 1382 Monopoly Case of "Brick and Tile Association"
In the monopoly dispute case including appellant Sichuan Yibin Wuqiao Building Materials Industry Co., Ltd. (hereinafter referred to as Wuqiao Company), Cao Peijun, Yibin Brick and Tile Association (hereinafter referred to as Brick and Tile Association), and the appellee Zhang Renxun, Yibin Hengxu Investment Group Co., Ltd. (hereinafter referred to as Hengxu Investment Company), Yibin County Sihe Building Materials Co., Ltd. (hereinafter referred to as Sihe Company), and Chuangli Machine Brick Co., Ltd. in Cuiping District of Yibin (hereinafter referred to as Chuangli Company), Zhang Renxun claimed that under the coercion of the founders of the association, that if Hengxu Investment Company, Wuqiao Company, and Sihe Company, over 50 brick and tile manufacturers including Yibin Gaodian Brick Factory (hereinafter referred to as Gaodian Factory) under Zhang Renxun’s name have successively joined the association, and they signed the "Production Suspension and Rectification Contract" and "Technical Service Contract" with the Brick and Tile Branch of Yibin Building Materials Association, which is the predecessor of the Brick and Tile Association. In accordance with the "Production Suspension and Rectification Contract", Zhang Renxun was forced to suspend production and just received a few support fees for the suspension before September 2011.
In essence, the aforesaid behavior eliminated Zhang Renxun’s participation in competition, and constituted a monopolistic conduct, violating Zhang Renxun’s legitimate rights and interests, who filed a lawsuit with the Chengdu Intermediate People’s Court of Sichuan Province (hereinafter referred to as the court of first instance). The Supreme People's Court rejected Zhang Renxun's claim on November 6, 2020.
The second instance of the Supreme People’s Court held that the core issue of this case was whether Zhang Renxun, as one of the implementers of the horizontal agreements in this case, had the right to demand compensation from other implementers of the agreement for his so-called economic losses. As for this, it should be considered in light of factors such as the legislative purpose of Article 50 of the Anti-Monopoly Law of the People’s Republic of China, the characteristics of the accused monopoly conduct, and the legal effect of damage compensation.
Firstly, the legislative purpose of Article 50 of the Anti-Monopoly Law of the People’s Republic of China. Article 50 stipulates that a business operator who commits a monopoly and causes losses to others shall assume civil liability in accordance with the law. This article is aimed at providing civil judicial channels to stop and crack down on monopolistic behaviors, and providing civil remedies for subjects who have suffered damage due to monopolistic conducts. If the plaintiff is not the victim of the monopolistic behavior stipulated by the anti-monopoly law, but the implementer of the monopolistic behavior, his claim for damage compensation is actually a demand for the division of monopoly benefits, so it is not the object of relief intended by the anti-monopoly law. In this case, Zhang Renxun is one of the participants and implementers of the horizontal agreement, and he obtained a share of monopoly benefits within a certain period of time due to his participation in and implementation of the accused monopoly conduct in this case. He was not the victim of monopolistic behavior that anti-monopoly law intends to offer relief.
Secondly, those who request damage compensation must behave properly and legally. The subjects who participate in and implement the illegal act, though they suffer losses due to the participation and implementation of the illegal act, the loss should not be remedied as a result of their own improper act. In this case, Zhang Renxun voluntarily accepted the production suspension and rectification in the related contract, participated in and implemented the horizontal agreement, which itself is illegal, thus the damage he suffered should not be remedied.
Finally, compensation for damages to implementers of monopolistic behavior will impose negative legal effect of encouraging and supporting related monopolistic conducts. In this case, Zhang Renxun's claim of losses due to monopolistic behavior is essentially a requirement to enforce the horizontal agreement, and divide the monopoly income of the group in terms of the monopoly agreement on the distribution of monopoly benefits. If support Zhang Renxun's litigation claims, it is tantamount to holding and encouraging the illegal act.
Above all, the implementers of a horizontal agreement have no right to request other implementers of the monopoly agreement to compensate their so-called economic losses in accordance with the anti-monopoly law. As the implementer of the horizontal agreement involved in the case, Zhang Renxun's claim for compensation for losses cannot be established and supported.
From: Sohu News
May 14 2021
Interim measures for the processing of related examination businesses regarding the implementation of the revised Patent Law
Article 1 Since June 1, 2021 (including that date, the same below), the patent applicant may submit the patent application requesting for protection of the product’s partial industrial design, in accordance with Article 2 Paragraph 4 of the revised Patent Law, in the form of paper or offline electronic application. The CNIPA will examine the above-mentioned applications after the newly revised Rules for the Implementation of the Patent Law has taken into effect.
Article 2 As for the patent application which is applied after June 1, 2021, if the applicant believes that there are circumstances as prescribed in Article 24, Paragraph 1 of the revised Patent Law, he or she may submit the request in paper form. The CNIPA will examine the above-mentioned applications after the newly revised Rules for the Implementation of the Patent Law has taken into effect.
Article 3 As for industrial design patent application that applied after June 1, 2021, the applicant may submit a written statement requesting priority for the industrial design patent in accordance with Article 29, paragraph 2 of the revised Patent Law. The CNIPA will examine the above-mentioned applications and the prior industrial design patent requesting for basis of priority after the newly revised Rules for the Implementation of the Patent Law has taken into effect.
Article 4 As for patent application applied after June 1, 2021, the applicant may submit a copy of the patent application document filed for the first time in accordance with Article 30 of the revised Patent Law.
Article 5 As for invention patent that has been announced and authorized since June 1, 2021, the patentee may, in accordance with the Article 42, paragraph 2 of the revised Patent Law, submit a request for compensation for the duration of the patent right in paper form, within three months from the date of the announcement and the authorization of the patent right, and then pay relevant fees according to the payment notice issued by CNIPA. The CNIPA will examine the above-mentioned applications after the newly revised Rules for the Implementation of the Patent Law has taken into effect.
Article 6 Starting from June 1, 2021, the patentee may, in accordance with Article 42, paragraph 3 of the revised Patent Law, submit a request for compensation for the duration of the patent right in paper form, within three months from the date that the request for new drug coming into market is approved and authorized, and then pay the relevant fees in accordance with the payment notice issued by CNIPA. The CNIPA will examine the above-mentioned applications after the newly revised Rules for the Implementation of the Patent Law has taken into effect.
Article 7 From June 1, 2021, patentees may voluntarily declare an open license for own patents in paper form, in accordance with Article 50, paragraph 1 of the revised Patent Law. The CNIPA will examine the above-mentioned applications after the newly revised Rules for the Implementation of the Patent Law has taken into effect.
Article 8 From June 1, 2021, the accused infringer may request the CNIPA to issue a evaluation report for patent right in paper form in accordance with Article 66 of the revised Patent Law.
Article 9 From June 1, 2021, the CNIPA shall examine the patent application in the procedure of preliminary examination, substantive examination and reexamination, in accordance with Article 20, paragraph 1, and Article 25, paragraph 1, Item (5) of the revised Patent Law.
Article 10 The protection term of the industrial design patent right applied before May 31, 2021 (including that date) shall be ten years, counting from the filing date.
Article 11 These measures shall come into force on June 1, 2021.
May 24 2021
Attribution of rights on the patent application by using other's technical secrets without permission——(2020) Supreme People’s Court Final Civil Judgment No. 871
In the case of patent attribution dispute between the appellant Tianjin Qingsong Huayao Pharmaceutical Co., Ltd. (hereinafter referred to as Qingsong Company) and the appellee Huabei Medicine Hebei Huamin Pharmaceutical Co., Ltd. (hereinafter referred to as Huamin Company), an invention patent with the number ZL201410517486. 6. Was involved, which is entitled as "Preparation Process of High Purity Fluoxef Sodium" (hereinafter referred to as the patent involved).
Qingsong Company believed that it is the right holder for the technical secrets of the confidential preparation process of fluoxef sodium. After Huamin Company obtained the technology, it applied for and obtained the patent right involved of the confidential process without Qingsong Company's permission. Therefore Qingsong Company filed a lawsuit to the intermediate peoples’ court of Shijiazhuang, Hebei (hereinafter referred to as the court of first instance) requesting confirmation that the patent right involved belongs to Qingsong Company.
The court of first instance held that the existing evidence could not prove that the technical solutions recorded in the patent application documents involved of Huamin Company came from the confidential technical information in the " Agreement on commission of processing and production " implemented by both parties, which is provided by Qingsong Company, so the litigation request of Qingsong Company was rejected. Qingsong Company refused to accept it and appealed to the Supreme People's Court.
The Supreme People's Court detemined to quash the original judgment on December 16, 2020, confirming that the patent involved in the case was jointly owned by Qingsong Company and Huamin Company.
In the trial of second instance of the Supreme People's Court, the party should examine whether the patent documents disclose technical secrets and whether the patented technical solutions use technical secrets when claiming patent rights based on the infringement of technical secrets. If patent documents disclose technical secrets or patent technical solutions use technical secrets, then it constitutes an infringement of technical secrets.
In this case, regarding the secret information 1 "Deprotecting intermediates with the use of mixed cresol (m-cresol) ", the claims of the patent involved did not directly document specific method used to deprotect the intermediates, but Example 1 of the patent specification, but it discloses the use of m-cresol for deprotection, and secret information 1 uses mixed cresol for deprotection, in which mixed cresol is a mixture of three isomers of o-cresol, m-cresol and p-cresol, while o-cresol, m-creso and p-cresol all use the hydrogen bond of the phenolic hydroxyl group for the deprotection of intermediates, there is no essential difference between them. Therefore, the patent specification involved in this case has disclosed and used secret information1.
Regarding the secret information 2 "the overall technical information of the acid forming reaction step", firstly, the step a) in claim 1 of the involved patent is the acid reaction, that is, it includes the secret information 2. In addition, the technical solution described in Example 1 of the patent specification involved differs in deprotection reagents, reaction atmosphere, temperature control timing, reaction temperature, time, and reagent dosage of the secret information 2 in the confidential process technical solution, and the confidential process does not disclose "dissolution and clarification" and "pH to 2.5", while the above difference is not a substantive difference. Therefore, it can be determined that the patent specification has disclosed and used secret information 2.
As for the secret information 3 "the overall technical information of washing, extraction, and sterile filtration", first, there are differences between step b) in claim 1 of the involved patent and the secret information 3 as follows.
(1) Materials added are different, during the process of extraction to the water phase, sodium chloride and sodium metabisulfite are additionally added in the confidential process; during the process of extraction to the organic phase, sodium chloride is additionally added in the confidential process;
(2) Methods of materials addition and related operations are different. Materials are added all at the same time for the patents involved, and added in batches, stirred several times and separated through standing for the confidential process;
(3) The undisclosed filtrating operation of the confidential process is sterile filtration. After comparing the differences, the above-mentioned difference between step b) in claim 1 of the involved patent and the secret information 3 is not a substantive difference, it can be determined that the step b) in claim 1 of the involved patent contains secret information 3.
Therefore, it can be held that the patent specification involved has disclosed and used secret information3.
In summary, the patent documents involved in the case disclosed the technical secrets of Qingsong Company, and the patented technical solutions also used technical secrets, which constituted an infringement of the technical secrets. Therefore, the technical secrets of Qingsong Company constitute the substantive content of the patented technical solution involved, and Qingsong Company shall have legal rights of patent involved.
From: The Intellectual Property Court of the Supreme People’s Court
May 31 2021
涉案专利权利要求1包含以下技术特征：A. 一种动态物理屏蔽净化器，其特征在于：包括中心盘和数根圆形辐条；B. 所述辐条一端呈径向辐射的固接在所述中心盘上；C. 设置在同一平面内的辐条的直径与辐条的根数的积的值满足大于等于46，小于等于460；D. 计算时，辐条的直径以毫米为单位，且辐条的直径大于或等于0.3mm。二审中，双方当事人均确认被诉侵权技术方案具有与技术特征A、B、D相同的技术特征，仅就技术特征C存在争议。被诉侵权产品上的辐条构成了相互平行的两个平面，中天美公司认为该特征与权利要求1所述“同一平面内”明显不同。