China: 美立法打击"专利流氓"利好中企

Last Updated: 1 October 2015
Article by Michael W. Vella

伴随着越来越多的中国企业在美国销售产品,尤其在电子消费品领域崭露头角,中国企业们不得不应付来自"专利流氓"接连不断的专利滥诉。最近美国国会立法方面的一些动向,可能给这些中国企业带来利好消息。

2015年年初,美国参众两院就改进美国的专利系统、抑制无限制的滥诉,分别提交了一份法案。尽管目前两个法案还存在不小分歧,但参众两院均表示会致力于达成共识,在今年通过一项打击"专利流氓"的法案。

"专利流氓",又称为"专利蟑螂",他们本身不制造产品,而是通过收购专利并以此向别家公司提起诉讼为生。"专利流氓"会去骚扰任何业绩颇佳的公司,不论其股东国籍。尽管"专利流氓"所持有的专利可能很薄弱,但是他们依旧可以通过说服被告接受和解来获利。而从被告的角度,和解的方式可以避免他们在时间、费用上的消耗,以及败诉的风险。

2015年早些时候,美国参众两院针对专利滥诉,分别提交了一份法案,给出了两种不同的解决方法。

众议院的提案称为"Patent Reform Innovation Act"(专利改革创新法案),着眼于改良专利诉讼程序本身。它的支持者相信,过多的企业已经被迫在专利诉讼上花费大量资源而不是把这些资源用于创新,在现有的法律框架下,专利诉讼被滥用了。

而参议院的提案称为"STRONG Patents Act"(强大专利法案),着眼于提高授权专利的质量。它的支持者认为,消除专利滥诉不能以削弱对专利权人的保护为代价,而是应该通过强化专利商标上诉委员会("PTAB")作用,来挑战"专利流氓"以薄弱专利提起滥诉的行为。

众议院"Patent Reform Innovation Act"的重要条款

众议院法案要求原告在最初的诉状中提供更多的细节。具体来说,诉状中需要点明:(1)每个声称被侵权的权利要求;(2)每条声称"间接侵权"(即故意地诱使或帮助第三方侵权)的行为;(3)声称侵权一方的主要业务;以及(4)针对相同专利所提出的每条诉状。该法案还要求法庭判决由败诉方承担胜诉方的律师费,除非败诉方的行为"合理正当"。这种"转赔"律师费的做法在美国诉讼中是不常见的。因此,该法案的支持者相信支付被告律师费的风险会减少"专利流氓"以薄弱专利提起滥诉的行为。

众议院法案还将"证据开示"程序(在该程序中当事人会被要求提供信息、文件、证明给对方)限制到法庭解读了专利权利要求之后。"证据开示"程序在美国诉讼中是花费最贵的部分,通过将这一程序押后,将大大削弱"专利流氓"用来逼迫被告接受早期和解协议的筹码。

众议院法案还对PTAB的行政程序提出一些建议。例如,要求PTAB在确定专利有效性时考虑联邦地方法院作出的任何对权利要求的解释。

最后,众议院法案还提出要允许法庭在一定条件下中止对制造商产品的终端消费者的诉讼。这样的条件包括终端消费者同意受对制造商的法庭终局判决的约束。这一提议将显著限制"专利流氓"公司在早期逼迫被告接受不平等的和解协议。

参议院"STRONG Patents Act"的重要条款

参议院法案聚焦于:1、改进在PTAB无效薄弱专利的程序;2、增加行政程序用于破坏专利流氓恶意发函索取和解费的战术。

与众议院法案一致,参议院法案要求PTAB在其复审程序中考虑联邦地方法院之前作出的对权利要求的解释。不一致的是,参议院法案会假定专利是有效的,类似于在诉讼中审判庭所假定的那样。因此,无效请求人需要在PTAB程序中以清楚并且有说服力的证据来证明专利无效。参议院法案还禁止PTAB中参与作出允许复审请求决定的法官再参与到对复审程序的实质性内容进行判断的工作中。另外,参议院法案将可以提起授权后复审程序的请求人资格限制为那些能证明"有合理的可能性"被控告侵权的个人和实体。

值得注意的是,参议院法案将赋予联邦贸易委员会(FTC, 负责保护美国消费者的机构)对某些恶意律师函的执法权,这将是对"专利流氓"最严厉的措施。比方说,如果专利流氓以不能行权或者无效的专利来恶意发出律师函索取赔偿,那么FTC可以认定其有"失诚信或欺诈的行为"。在某些条件下,可以对其采取民事处罚。

参众两院尚需达成共识

目前两部提案都处于立法程序中。在此过程中,两者不一致的地方需要被调和。只有在内容上尽可能达成共识,才有机会同时在参众两院通过。尽管两个提案还存在不小分歧,参众两院均表示会致力于达成共识,在今年通过一项打击"专利流氓"法案。

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