China’s National Intellectual Property Administration Releases Top Ten Cases of Administrative Patent Enforcement

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On April 26, 2021, China’s National Intellectual Property Administration (CNIPA) released released the Top Ten Cases of Administrative Patent Enforcement (2020年度专利行政保护十大典型案例).  Administrative enforcement in China is an alternative to conventional civil litigation and can be quicker and less expensive than litigation. That said, generally only fines and injunctions are issued in administrative enforcement actions.  Those seeking damages should file a litigation at a People’s Court instead or in addition. Case #5 below is of particular interest since it seems to indicate the availability of a temporary restraining order (TRO) equivalent at exhibitions for patent infringement.

The following are approximate translations of the summaries of the cases and expert comments as published by CNIPA.  The original text (Chinese only) is available here: 2020年度专利行政保护十大典型案例.

Case 1

The Intellectual Property Office of Shijiazhuang City, Hebei Province handled the patent infringement dispute case of “Substituted oxazolidinone and its application in the field of blood coagulation”

Brief Introduction

  The petitioner Bayer Intellectual Property Co., Ltd.’s invention patent application titled “Substituted oxazolidinone and its application in the field of blood coagulation” was granted on July 5, 2006, and the patent number is ZL00818966.8. The patent right in the case was legal and valid when the claimant filed a request for adjudicating infringement disputes.

  The petitioner claimed that the alleged infringing product was clearly specified in the “Pharmaceutical Intermediates” column under “Product Display” on the homepage of the respondent’s Shijiazhuang Steiano Fine Chemical Co., Ltd. official website (http://www.sdynchem.com/) with the CAS Number 366789-02-8 and provided the chemical structure of the product. The name, CAS number, and chemical structural formula of the respondent’s product were completely consistent with the patent in question. At the same time, the respondent publicly promised to sell compounds on the its website. After discovering that the respondent was selling the compound, the claimant purchased the compound from the respondent and notarized the entire process. The petitioner filed a patent infringement dispute settlement request with the Shijiazhuang Intellectual Property Office of Hebei Province, requesting confirmation that the compound produced and sold by the petitioner infringed its invention patent, and requesting that the petitioner to immediately stop production offering to sell and sell.  On March 26, 2020, the Shijiazhuang City Intellectual Property Office opened the case according to law.

  After the trial, the Shijiazhuang Intellectual Property Office held that the compound with the CAS number “366789-02-8” displayed by the respondent on its official website constituted an act of promising to sell the patented product and fell within the protection scope of claim 2 of the patent in question. The Office found the respondent infringed by promising to sell or sell the patented product and violated the patent right of the claimant. The Shijiazhuang City Intellectual Property Office made an administrative ruling, ordering the respondent to immediately stop promising to sell and sell compounds with the same structural formula as the patent involved without the permission of the patentee, and immediately remove the infringing products displayed on its official website.

Expert Comment

  The typical significance of this case is mainly reflected in the following two aspects: First, it safeguards the legitimate rights and interests of the patentee, satisfies the need to quickly and effectively stop infringement, and helps to strengthen the patentee in drug infringement cases to defend themselves through administrative procedures. Confidence in legitimate rights and interests is conducive to building a fair and competitive market environment and a good business environment. The second is that this case involves complex issues, which has strong guiding and exemplary significance for the protection of the rights of drug patent holders. The case-adjudicating agency combined the evidence in the case in the decision letter, carefully stated the adjudicating process, clarified the factual basis, and concluded that “the requested party infringed by a promise to sell or sell the patented product and infringed the patent right of the requester, and the infringement was established.” Lawful, efficient, and professional adjudicating, focusing on the concepts and practices of reasoning, highlight the advantages of administrative adjudication, and have a guiding and exemplary role. (Yang Jianshun, Professor of Law School of Renmin University of China)

2

The Intellectual Property Office of Wenzhou City, Zhejiang Province dealt with the patent infringement dispute case of “the transmission mechanism of three-dimensional packaging machine”

Brief Introduction

  The claimant, Ruian Haoyun Machinery Co., Ltd., obtained the utility model patent entitled “Transmission Mechanism of Three-dimensional Packaging Machine” on February 8, 2017, and the patent number is ZL201620913636.X. The patent right was legal and valid when the requester filed a request for adjudicating infringement disputes.

  The claimant believes that the respondent, Mr. Guo, manufactured and sold machinery and equipment identical to his patented technology without permission. This act constituted infringement and had an extremely bad impact on the claimant. The petitioner requested an administrative ruling from the Intellectual Property Office of Wenzhou City, Zhejiang Province. The Wenzhou Intellectual Property Office opened the case in accordance with the law on July 4, 2019.

  The Wenzhou Intellectual Property Office conducted an on-site investigation at the production site of the respondent. Upon investigation, the infringer was the respondent in an earlier case in 2017, and the equipment involved in the case was also the same equipment. The Office had already made an infringement judgment on the equipment involved in the previous case and has been ordered to stop the infringement. During the oral hearing, the Office found that the equipment involved in the case examined during the on-site investigation had a torn off the seal and the equipment itself was damaged. In this regard, the respondent proposed that the electric fan caused the seal to fall, but the respondent failed to fulfill the obligation to report the case to adjudicating personnel in a timely manner, resulting in the destruction of the equipment involved in the case. Based on the previous infringement, the Wenzhou Intellectual Property Office finally concluded that the infringement of the respondent was established and ordered the respondent to stop the infringement immediately, based on the investigation transcript of this case and the content of the on-site inspection transcript.

  The respondent refused to accept the administrative ruling made by the Wenzhou Intellectual Property Office and filed an administrative lawsuit with the Ningbo Intermediate People’s Court. The Ningbo Intermediate People’s Court made a judgment of first instance on March 24, 2020, and rejected the petition. The respondent refused to accept the judgment of the first instance and filed an appeal with the Supreme People’s Court. Afterwards, the respondent filed an application for withdrawal. The Supreme People’s Court issued a decision to withdraw the case after reviewing the case.

Expert Comment

  The “Measures for Patent Administrative Enforcement” stipulates that after the administrative department of patent work or the people’s court makes a decision or judgment to determine that infringement is established and orders the infringer to immediately stop the infringement, if the respondent again commits the same type of infringement on the same patent right then when the patentee or interested parties request enforcement, the administrative department of patent work may directly make a decision ordering the immediate cessation of the infringement. In practice, infringers resist administrative enforcement of patents, repeated infringements and other vicious infringements frequently occur, which not only damages the legitimate rights and interests of patentees, but also seriously interferes with the enforcement actions of the patent department, wastes valuable administrative resources, and has a great impact. Administrative enforcement belongs to the key sanctions of my country’s intellectual property law.

  In this case, the Wenzhou Intellectual Property Office quickly opened the case after receiving the report, and promptly went to the scene to investigate and collect evidence, and found that the equipment involved in the case was previously identified as infringing equipment. The respondent refused to cooperate with law enforcement and illegally damaged the sealed equipment involved in the case, which had obvious malicious infringement , and was a deliberately repeated patent infringement. The Wenzhou Intellectual Property Office determined that the patent infringement was established based on the investigation transcript and the on-site inspection transcript, and ordered the respondent to stop the infringement immediately. In the subsequent administrative proceedings, the decision to handle the case was supported by the people’s court. This case fully embodies the law enforcement advantage of the patent administrative agency in quickly and effectively cracking down on repeated infringements. It not only maintains the market order of fair competition, but also helps to improve the social satisfaction of the administrative protection of intellectual property rights. (An Xiaoqiong, Director of Beijing Hanqun Law Firm)

Case 3

Chongqing Intellectual Property Office handles patent infringement dispute case of “Little Genius” telephone watch series

Brief Introduction

  The petitioner Guangdong Xiaotiancai Technology Co., Ltd. obtained the design patent named “Phone Watch (Z6)” on July 5, 2019, and the patent number was ZL201930053063.7; on July 9, 2019, it obtained the a utility model patent entitled “smart wearable device with camera function,” with patent number is ZL201821610111.4. The above-mentioned patent rights were legal and valid when the requester filed a request for adjudicating infringement disputes. On August 14, 2020, Chongqing Intellectual Property Office opened the case in accordance with the law.

  The claimant believes that the respondent Chongqing Dushulang Company offered to sell and sold the patented products involved in the case without the permission of the claimant, which harmed the legitimate rights and interests of the claimant. Based on the technical solution of claim 7 of the ZL201821610111.4 patent and the design 1 in the ZL201930053063.7 patent as the basis of its request, the claimant requested the Office to order the respondent to immediately stop offering to sell and selling the products involved in the case.

  The respondent argued that the patent involved in the case belonged to an existing design, and the respondent was only an agent seller of the product involved. He did not know that the product involved was in dispute and he had a true and legal purchasing source. The requester’s adjudicating request should be rejected according to law.

  After trial, the Chongqing Intellectual Property Office made an administrative ruling on a patent infringement dispute on December 10, 2020, and determined that the defendant’s legal source defense was untenable, and its offering to sell and selling the products involved in the case constituted infringement and ordered the company to stop the related infringement behavior.

Expert Comment

     The typical significance of the case mainly lies in the following four aspects: (1), the patentee’s assertion of infringement of utility model and design patents by jointly producing evidence is technically complicated and difficult in the determination of infringement facts; (2) The evidence must be accurate and detailed to determine whether the promised sale or sale by the respondent is infringing, and whether the product comes from a lawful source. (3) Administrative rulings are effective ways for the rapid and efficient adjudicating of patent disputes, and the determination of the legality of technical facts and evidence in patent disputes is the focus of the administrative rulings on patent infringement. (4) The patentee in this case is a Guangdong enterprise, the respondent is a Chongqing enterprise, and the Chongqing Intellectual Property Office handled the case in strict accordance with the procedures and facts, and made a fair ruling during the adjudicating of the case, which is a model for implementing the relevant coordination mechanism for strengthening the intellectual property work, resolutely overcoming the requirements of local protectionism, and strengthening the cross-regional coordinated protection of intellectual property per the speech delivered by General Secretary Xi Jinping at the 25th Collective Study of the Political Bureau of the CPC Central Committee. (Deputy Secretary-General of the China Institute of Intellectual Property Rights (Chairing) Xie Xiaoyong)

Case 4

The Intellectual Property Office of Changsha City, Hunan Province dealt with a patent infringement dispute over a utility model of “a track-type adaptive manure scraper”

Brief Introduction

  Requester Wisdom Animal Husbandry Machinery Hebei Co., Ltd. obtained the utility model patent entitled “A track-type adaptive manure scraper” on October 26, 2018, and the patent number is ZL201820406359.2. The patent right was legal and valid when the requester filed a request for adjudicating infringement disputes.

  On September 4, 2020, the petitioner complained to the Intellectual Property Office of Changsha City, Hunan Province at the 18th Animal Husbandry Expo in 2020, saying that the products exhibited by the petitioner Jiaozuo Fangda Agriculture and Animal Husbandry Technology Co., Ltd.  has the same technical features as the patent involved and infringes its patent right. After reviewing that the request satisfies the conditions for filing a case, the Changsha Municipal Intellectual Property Office made a decision to accept the case on the spot.

  The case handlers of the Changsha Municipal Intellectual Property Office carried out on-site investigations with the cooperation of the exhibition organizer, took photos of the respondent’s exhibition area and the alleged infringing products on display, and the China (Changsha) Intellectual Property Protection Center quickly issued a patent Advisory opinions on infringement judgments. The respondent failed to provide evidence that he not infringe to the exhibition organizer, and took the initiative to withdraw the involved product from the exhibition the next day. On September 25, 2020, the Changsha Municipal Intellectual Property Office conducted an oral hearing on the case. On October 28, the respondent submitted additional evidence for defense of the prior art.

  After comparison, the Changsha Intellectual Property Office determined that the alleged infringing product fully covered the technical features of the patent claims 1, 2, 3, and 5. In addition, it was verified that the respondent’s prior art defense claim was not established. After the trial, the Changsha Intellectual Property Office held that the respondent’s act of manufacturing the alleged infringing product for the purpose of production and operation constituted infringement, and the respondent should immediately stop manufacturing the product that infringed the utility model patent in question.

Expert Comment

      Through exhibiting relevant products of the exhibition, the products influence will expand rapidly in a short time. If the Office does not deal with the infringing products exhibited in the exhibition in a timely manner, it may cause irreparable loss to the patentee, but if it is dealt with in error, it will also have a great impact on the rights and interests of the accused. Therefore, it is the objective of administrative protection of intellectual property rights at exhibitions to ensure the legality and accuracy of adjudicating decisions while adjudicating matters in a timely manner.

  Changsha Municipal Intellectual Property Office shall, after receiving the complaint from the petitioner, conduct timely investigation and collect evidence, based on the facts of the existing evidence, and in light of the expert opinions of China (Changsha) Intellectual Property Protection Center, require the petitioner to voluntarily withdraw from the exhibition, then hold an oral trial, and finally make an administrative ruling of infringement. The whole case-adjudicating process not only protects the lawful rights and interests of the right holders in a prudent, timely, efficient and rapid manner, but also better maintains the order of exhibitions, and is a good mode of exhibition protection worthy of promotion. (Hong Yan, Director of Longnuo Law Firm)

Case 5

The Wuhan Municipal Intellectual Property Office of Hubei Province handled a patent infringement dispute over the design patent for  “Tractor” at the exhibition

Brief Introduction

  The claimant, Lovol Heavy Industries Co., Ltd., obtained the design patent entitled “Tractor” on January 12, 2016, and the patent number is ZL201530271655.8. The patent right was legal and valid when the requester filed a request for adjudicating infringement disputes.

  The petitioner discovered at the China International Agricultural Machinery Exhibition in October 2018 that the “wheeled tractor” exhibited by the petitioner Shandong Juming Machinery Co., Ltd. was suspected of infringing its patent rights and the petitioner notarized the on-site exhibits. The petitioner filed a request for an administrative ruling on a patent infringement dispute to the Wuhan Intellectual Property Office of Hubei Province. On November 26, 2018, Wuhan Municipal Intellectual Property Office opened the case according to law.

  The respondent held that he did not sell the alleged infringing product, only promised to sell it, and he has stopped promising to sell it. The alleged infringing product was manufactured mainly by the assembly of general-purpose components purchased from the market, and was not identical with or similar to at least 25 parts of the design features of the patent involved in the case, and thus did not constitute infringement.

  After the trial, the Wuhan Municipal Intellectual Property Office held that the difference between the alleged infringing design and the patented design involved in the case is a partial subtle difference in the overall visual shape and style of the tractor, and there is no substantial difference in the overall visual effect, and the composition is similar. On March 22, 2019, the Wuhan Municipal Intellectual Property Office determined that the design of the alleged infringing product fell within the scope of protection of the patent right in the case, and made an administrative ruling, ordering the respondent to immediately stop promising to sell the infringing tractor, eliminate the impact, and not to proceed with any sales in any form. In view of the fact that the exhibition has ended and the respondent has withdrawn from the exhibition, it is deemed that it has stopped promising sales.

  The respondent refused to accept the administrative ruling made by the Wuhan Intellectual Property Office and filed an administrative lawsuit with the Wuhan Intermediate People’s Court in April 2019. After hearing the trial, the Wuhan Intermediate People’s Court ruled to dismiss the appellant’s request. The respondent refused to accept the judgment of the first instance and filed an appeal to the Supreme People’s Court in October 2020. The Supreme People’s Court ruled in December 2020 to dismiss the appeal and uphold the original judgment.

Expert Comment

  This case involves the protection of the design patent right at an exhibition. In the judgment of design infringement, the exact design is often not disputed, and the dispute mainly lies in the judgment of similarity. The criterion for judgment is to use the principle of individual comparison to conduct direct observation from the perspective of ordinary consumers, and to adopt the method of overall observation and comprehensive judgment when comparing. The enlightenment of this case is that, firstly, whether the alleged infringing product is assembled from general-purpose components purchased from the market has nothing to do with whether it is infringing after assembly. The second is to adopt overall observation and comprehensive judgment when judging whether they are similar, rather than partial observation and comparison. The administrative ruling in this case has been recognized by two levels of courts, including the Supreme People’s Court, which reflects the high professional level of administrative protection. (Zhang Hanguo, partner of Beijing Haiwen Law Firm)

Case 6

Beijing Municipal Intellectual Property Office handles a series of cases of patent infringement disputes over the design of “dynamic balance vehicle (mini)”

Brief Introduction

  The petitioner Ninebot (Beijing) Technology Co., Ltd. (hereinafter referred to as Ninebot) obtained the design patent named “Dynamic Balancing Vehicle (Mini)” in January 2016, and the patent number is ZL201530316168.9. The patent right was legal and valid when the requester filed a request for adjudicating infringement disputes.

  The claimant discovered that balance bike products sold by the respondents on e-commerce platforms, including Hangzhou Jinfeng Intelligent Technology Co., Ltd., Hangzhou Jieze Trading Co., Ltd., and Shenzhen Feitewei Technology Co., Ltd., fell within the scope of protection of the patent right involved. So he filed a request for adjudication of patent infringement disputes with the Beijing Municipal Intellectual Property Office. On March 18, 2019, the Beijing Municipal Intellectual Property Office accepted this series of cases in accordance with the law, and filed a total of 20 cases against the respondents based on the models of the alleged infringing products.

  The respondent believes that the alleged infringing product is quite different from the involved patent, and the similarities between the alleged infringing product and the involved patent are all disclosed by the existing design, not the main points of the design of the involved patent.  Compared with the patents involved, the similarities have more impact on the overall visual effect. The accused infringing products are neither the same nor similar to the patents involved, and do not constitute infringement.

  After the trial, the Beijing Municipal Intellectual Property Office believes that the design of balance bike products consisting of body, wheels, control rods and handles is more common. The overall small and lightweight visual effect formed by the proportional relationship between the wheel diameter and the length of the leg control in the patent involved has never appeared in existing designs. It is an innovative design feature. This small and lightweight design style will impress general consumers.  The design features of the alleged infringing product and the involved patent are basically the same in the relevant parts. According to the principle of “overall observation and comprehensive judgment”, the accused infringing product is not significantly different from the patented product, and there is no substantial difference in the overall visual effect, which is a similar design. The Beijing Municipal Intellectual Property Office determined that the above-mentioned infringement was established and ordered it to immediately stop selling products that infringed on the design patent rights involved in the case.

Expert Comment

  The case is a mass infringement case on the Internet and e-commerce platforms. The Beijing Municipal Intellectual Property Office filed a case in accordance with the law, combined and handled 20 cases of infringement of the same patent in its administrative area. According to the principle of “overall observation and comprehensive judgment”, it was determined that the accused infringing product had a similar overall visual effect compared with the patented product. There is no substantive difference in the above, which are similar designs, and administrative rulings on design patent infringement disputes shall be made in a timely manner.

  In recent years, infringement cases involving online sales have occurred from time to time. The harmfulness and the difficulty of patent holders’ rights protection cannot be ignored, and they have become new issues that urgently need to be resolved in the process of intellectual property protection in my country. The convenient and efficient settlement of this series of cases is of reference significance for the adjudicating of such cases in the future. (Chen Suning, researcher of Jiangsu Intellectual Property Research Center)

Case 7

The Intellectual Property Office of Shantou City, Guangdong Province handles the case of patent infringement disputes over the “omnidirectional wheel” design

Brief Introduction

  The petitioner Shantou Yierle Toys Co., Ltd. obtained the design patent named “omnidirectional wheel (99002)” on February 22, 2019, and the patent number is ZL201830515943.7. The patent right was legal and valid when the requester filed a request for adjudication of infringement disputes. On July 20, 2019, the petitioner filed a request for adjudicating patent infringement disputes with the Intellectual Property Office of Shantou City, Guangdong Province. The petitioner believes that the Xuanxing Vehicle manufactured, promised to sell, and sold without permission by Shimei Toys Factory in Chenghai District, Shantou City, is suspected of infringing on its design patent. On July 25, 2019, the Shantou Intellectual Property Office opened the case according to law.

  The respondent admitted that he had made and sold the Xuanxing Vehicle, but believed that the wheel of the accused product, that is, the wheel similar to the patented product, was only one of the parts of the whole vehicle and was not made by it, but purchased it from others and assembled it into the Xuanxing Vehicle. The overall appearance of the accused product Xuanxing Vehicle was different from  patented product “omnidirectional wheel”, and its behavior did not constitute an infringement.

  The Shantou Intellectual Property Office concluded after the trial that: 1. The patented product involved is a component and the corresponding part of the alleged infringing product should be used as the content for comparison. Therefore, the wheel of the alleged infringing product should be compared with the patent. Instead of comparing the whole vehicle with the patent in question, the wheel of the alleged infringing product Xuanxing Vehicle has the same appearance as the patented product; 2. Although the subject matter of the case is only parts and components and not manufactured by the respondent, the whole vehicle manufactured and sold contains the same parts as the patented product. With reference to the relevant judicial interpretation, “If a product that infringes the design patent is a part, and another product is manufactured and sold using that part, the people’s court shall determine that it belongs to sales behavior stipulated in Article 11.”. The Shantou Intellectual Property Office determined that the respondent’s infringement was established and ordered it to stop the infringement immediately.

  The respondent refused to accept the administrative ruling and filed an administrative lawsuit with the Guangzhou Intellectual Property Court. Later, because the respondent did not appear in court during the hearing, the court ruled that the case should be withdrawn.

Expert Comment

  In this case, the Shantou Intellectual Property Office accurately determined the infringement comparison object, that is, the “wheels” sold by the respondent should be compared with the patented products of the petitioner’s “omnidirectional wheels.” Although the “wheel” is a part of the toy vehicle, it belongs to the parts that can be divided and sold independently, and it should also be covered by the design product as stipulated by the patent law. The case-adjudicating agency conducted a comparative analysis on the design of the alleged infringing product and the design patent and concluded that the design is the same. In addition, with reference to relevant judicial interpretations, it is determined that the use of a component that infringes on the design patent in the manufacture and sale of another product should be an unauthorized sales act. Therefore, the infringement is determined to be established. This conclusion not only effectively protects the legitimate rights and interests of the patentee in this case, but also reflects the unity of administrative law enforcement standards and judicial judgment standards, and has reference significance for the handling of other similar cases. (Zhang Yonghua, partner of Beijing Global Law Firm)

Case 8

The Shanghai Municipal Intellectual Property Office handles the case of patent infringement disputes for the “motor” design

Brief Introduction

  The petitioner Matsushita Electric Industrial Co., Ltd. obtained the design patent named “Motor” on June 25, 2014, and the patent number is ZL201330488292.4. The patent right was legal and valid when the requester filed a request for adjudicating infringement disputes.

  On September 23, 2020, the requester believed that the respondent, Shanghai Liusheng Electric Co., Ltd., was infringing by displaying the motor product model ZWF-60-3 on its official website and displaying and selling it on Taobao, and requested the Shanghai Municipal Intellectual Property Office to order the respondent to stop manufacturing, offer to sell, and sales of the alleged infringing products, and delete the marketing webpages of the alleged infringing products. The Shanghai Municipal Intellectual Property Office opened the case according to law on September 29, 2020.

  The respondent argued that the appearance of the allegedly infringing motor product was neither the same nor similar to the patented design involved in the case, and did not fall within the scope of protection of the patent right; the alleged infringing motor product was independently designed and developed by the respondent and was only in the experimental phase when the case was filed. It had briefly displayed the product on its official website in 2019, and later optimized the product design, which completely changed the structure and appearance. The information displayed on the official website has also been  updated accordingly. The respondent has never mass-produced the alleged infringing product, nor has it sold it to the outside world, and its sales channels are all counterparts to well-known domestic appliance manufacturers, and it has never conducted online sales.

  After the trial, the Shanghai Intellectual Property Office held that the respondent displayed the three-dimensional appearance and product performance information of the alleged infringing product on the “Product Center” column of its official website www.powerful-motor.com, and it should be determined that its offers for sale were established. The respondent authorizes the sale and actually provides the alleged infringing product to a third party, and the alleged infringing product enters the marketplace, it shall be determined that the respondent’s act of manufacturing and selling the alleged infringing product is established. In this case, the overall shape of the accused product design and the involved patent design, as well as the position and shape of the component parts, were only slightly different. It can be determined that there is no overall different  visual effect between the accused product design and the involved patent design. They are similar designs, and the alleged infringing product falls within the scope of protection of the design patent right of the claimant involved. Accordingly, the Shanghai Municipal Intellectual Property Office issued an administrative ruling, ordering the respondent to immediately stop manufacturing, offering to sell, and selling the electrical machinery products that infringed the patent rights involved in the case.

Expert Comment

  This case provides a reference for the design patentee to use the information disclosed on the Internet to prove infringement. One is infringement comparison. Generally speaking, in order to prove the patent infringement, the right holder needs to purchase the infringing product of the entity, otherwise it is difficult to compare the infringement. In this case, the design patent involved protects a motor used for the air blower of a refrigerator. Judging from the pictures, the motor design is not complicated, and the product displayed on the Internet can be used as evidence for infringement determination. The second is about third-party sales. Although it is a third party who sells online, the administrative agency, through careful analysis of relevant evidence and facts, determined that the respondent authorized the sale to a third party and actually provided the alleged infringing product, so its manufacturing and sales were accused of infringement. The establishment of the infringing behavior provides a new way for the patentee to pursue the responsibility of the manufacturer of the infringing product, which is conducive to better safeguarding the interests of the patentee. Compared with other ways of safeguarding rights, administrative protection has special advantages. The claimant’s successful safeguarding of rights in this case provides an example for foreign patentees to safeguard their rights through administrative means, and reflects the “same protection” of the administrative agency for both Chinese and foreign rights holders. (Wang Zhengzhi, Partner of Beijing Gaowen Law Firm)

Case 9

The Market Supervision and Administration Bureau of Dafeng District, Yancheng City, Jiangsu Province investigated and dealt with the case of Jianhu Jinmao Pharmaceutical Co., Ltd. selling counterfeit patented medical devices

Brief Introduction

  In May 2020, the Market Supervision Administration of Dafeng District, Yancheng City, Jiangsu Province inspected the Dafeng People’s Hospital of Yancheng City and the Second People’s Hospital of Dafeng District, Yancheng City, and found that Jianhu Jinmao Pharmaceutical Co., Ltd. was selling to the above two medical centers. The institution’s needle products are suspected of counterfeiting patents (passing off). The manufacturer of the above products is Suzhou Linhua Medical Instruments Co., Ltd., and the product name is “Disposable Intravenous Needle”. Jianhu Jinmao Pharmaceutical Co., Ltd. is the seller of Suzhou Linhua Medical Equipment Co., Ltd. needles. The model of the needle sold by Jianhu Jinmao Pharmaceutical Co., Ltd. to Yancheng Dafeng People’s Hospital is ZFⅡ-B, and the packaging is printed with patent numbers such as ZL200620076287.7, ZL200720037665.5, ZL200720038724.0. The needle product model sold to the District Second People’s Hospital is type Ⅱ-A, and the patent number ZL200720038724.0 is printed on the package. The total sales amount of the above products is 217,360 RMB.

  Upon investigation and verification of the Market Supervision Bureau of Dafeng District, Suzhou Linhua Medical Device Co., Ltd. did have the aforesaid three patents, which lapsed when Jianhu Jinmao Medical Co., Ltd. sold the aforesaid products involved in this case due to the expiration of the patent right. After the termination of the aforesaid three patents, the Company continued to print the patent number on the product package and sell it to Jianhu Jinmao Pharmaceutical Co., Ltd. Dafeng District Market Supervision Bureau determined that the aforesaid acts of Jianhu Jinmao Pharmaceutical Co., Ltd. violated the provisions of item (2), paragraph 1, Article 84 of the Detailed Rules for the Implementation of the Patent Law of the People’s Republic of China, and were acts of passing off . The Patent Office of the People’s Republic of China made an administrative punishment decision in accordance with Article 63 of the Patent Law of the People’s Republic of China, ordered Jianhu Jinmao Pharmaceutical Co., Ltd. to correct the illegal act and made an announcement thereon, and confiscated the illegal gains of 217,400 RMB and transfer the evidence to the place of production for handling.

Expert Reviews

  This case is a case of passing off medical device patents investigated and dealt with by the county-level patent administrative law enforcement department. First of all, the subject of law enforcement is qualified. According to the “Regulations on Patent Promotion of Jiangsu Province”, the Market Supervision and Administration Bureau of Dafeng District, Yancheng City, Jiangsu Province has the law enforcement power to investigate and deal with passing off patents. Second, the law enforcement behavior is appropriate. Fake medical device patents are not only related to the economic interests of related enterprises and the order of market competition, but also to the lives and health of the people. Administrative law enforcement is highly efficient and convenient, and can quickly block the flow of counterfeit patented medical devices into the market. Especially in the context of the current normalized prevention and control of new coronavirus, the investigation and handling of medical devices should be strengthened. Finally, the administrative penalty is reasonable. According to the provisions of the Patent Law, the administrative agency can not only confiscate the illegal income, but also impose a fine of up to four times the illegal income. In this case, the Dafeng District Market Supervision and Administration Bureau made a decision to confiscate illegal gains, demonstrating the rationality and standardization of patent administrative enforcement. (Professor of China University of Political Science and Law Lai Xiaopeng)

Case 10

The Intellectual Property Office of Mianyang City, Sichuan Province mediated disputes over the ownership of utility model patents for “a navigation system” and the qualifications of inventors

Brief Introduction

  The respondent, Sichuan Science and Technology Co., Ltd., obtained a utility model patent entitled “a navigation system” on April 3, 2018, with the patent number ZL201721283498.2. The patent right was legal and valid when the requester filed a request for adjudicating infringement disputes.

  On December 17, 2020, an oil and gas field branch of the petitioner and the respondent filed a adjudicating request with the Intellectual Property Office of Mianyang City, Sichuan Province due to a dispute over the ownership of the utility model patent. After obtaining the consent of the other party, Mianyang City The Intellectual Property Office opened the case in accordance with the law on December 22.

  The petitioner believes that it has entered into a technical cooperation contract with the respondent, and the petitioner’s technicians, as the developers of the technical cooperation project, have participated in the whole process from project initiation to acceptance, including the design, data collection and arrangement of the scheme of the navigation terminal for inspection of hand-held well stations, the collection and arrangement of site geography, traffic information, and the feedback of equipment trialing. Both the petitioner and the technicians of the respondent have made creative contributions to the substantive features of the invention-creation involving the patent involved. Therefore, the petitioner requested to change the patentee from the respondent to the petitioner and the respondent, adding nine persons, namely Zhao, He, and Zou, as inventors of the patent.

  After mediation, the respondent had no objection to the claimant’s opinions. The two parties reached a settlement and signed a “Patent Dispute Mediation Form”. The respondent agreed to cooperate with the claimant in handling the relevant procedures for changing the patent ownership and inventors.

Expert Comment

  According to the relevant provisions of the Patent Law, the administrative department of patents may, at the request of the parties, mediate the disputes over the patent ownership involved. The processing of this case took only one week from application filing to dispute mediation. The two parties reached an agreement after mediation, so that the dispute was properly resolved. This fully highlights the advantages of professional, fast and efficient patent administrative protection. Handling disputes with clear facts enables the administrative agency to timely process the dispute and will not only avoid excessive costs to the parties, but also prevent the entry of judicial procedures thereby wasting precious judicial resources. (Dong Tao, Professor of Beijing International Studies University)

Author: Aaron Wininger

Aaron Wininger is a Senior Attorney and Director of China Intellectual Property at Schwegman Lundberg & Woessner.

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Author: Aaron Wininger

Aaron Wininger is a Senior Attorney and Director of China Intellectual Property at Schwegman Lundberg & Woessner.