China: 抵触申请和抵触申请之抗辩

Last Updated: 16 May 2019
Article by AFD China Intellectual Property

众所周知,具备"新颖性"是发明创造想要获得授权的客观标准之一。根据我国《专利法》第的规定,新颖性,是指该发明或者实用新型不属于现有技术;也没有任何单位或者个人就同样的发明或者实用新型在申请日以前向国务院专利行政部门提出过申请,并记载在申请日以后公布的专利申请文件或者公告的专利文件中。

分号前的部分告诉我们要具备新颖性首先不能属于"现有技术"。现有技术指申请日(有优先权的指优先权日)以前在国内外为公众知悉的技术。其判断标准为:

  1. 申请日/优先权日以前(不包括申请日/优先权日当天);
  2. 出版物公开、使用公开或其他方式公开,包括但不限于专利文献、科技期刊、书籍、学术论文、专业文献、技术手册、样本、说明书、产品目录、公开的会议记录和技术报告、使用、销售、展示、进口、交换、馈赠、演示、口头、广播、电视公开等;
  3. 公众能够得知,即不负有保密义务的人通过正当、合法手段想要获得就能获悉。

而分号后的部分,则向公众说明了什么是"抵触申请",同时明确了抵触申请对新颖性的破坏作用。由于抵触申请的存在在申请人递交申请时是无法获知的,这也就为后续侵权诉讼过程中留有了抗辩的余地。那么抵触申请如何界定,抵触申请之抗辩如何审查就成了大家关注的焦点。

今天我们就透过一个最高人民法院的再审案例来看看目前我国的审查标准。

案情概况:

本案涉案专利系一件与拖把和拖把底盘及脱水桶相关的发明创造,通过巧妙的结构设计,实现了清洗与脱水的不同旋转速度,从而达到改良的效果。专利权人(后简称A)诉侵权产品所有人(后简称B)侵犯其实用新型专利权。二审法院作出了不利于B的判决,B不服向最高人民法院提起了再审。

B在二审阶段找到了另一件实用新型专利,认为其构成了对涉案专利的抵触申请,且涉案专利系抵触申请与现有技术的结合,因此涉案专利被抵触申请破坏了新颖性。故而B生产的抵触申请的产品,不构成对涉案专利的侵权。

本案还有其他争议点,因为与抵触申请无关,在此不加赘述。

本案两个核心争议点在于

  1. 被找出的实用新型专利是否构成涉案专利的抵触申请;
  2. B提出的抵触申请之抗辩能否成立。

结合高院的判决,我们可以看出:

对于是否构成抵触申请,因为找出的实用新型专利的申请日在涉案专利申请日之前,授权公告日在涉案专利申请日之后,符合法律规定的条件,因此构成抵触申请。由此可见,抵触申请的判断只要从时间上考量即可。

而针对抵触申请之抗辩的审查判断标准,最高人民法院认为:

我国专利法第六十二条规定:"在专利侵权纠纷中,被控侵权人有证据证明其实施的技术或者设计属于现有技术或者现有设计的,不构成侵犯专利权。《关于审理侵犯专利权纠纷案件应用法律若干问题的解释》第十四条规定:"被诉落入专利权保护范围的全部技术特征,与一项现有技术方案中的相应技术特征相同或者无实质性差异的,人民法院应当认定被诉侵权人实施的技术属于专利法第六十二条规定的现有技术。"专利法第六十二条规定现有技术抗辩的主要理由,在于专利权的保护范围不应覆盖现有技术,既包括被诉侵权技术方案与现有技术相同的情形,也包括被诉侵权技术方案相对于现有技术无实质性差异的情形。在这两种情形下,被诉侵权技术方案相对于现有技术不具有新颖性或者创造性,不应被授予专利权,自然也不应被纳入涉案专利权的保护范围。由于抵触申请与现有技术均可以用于评价涉案专利的新颖性,因此如果被诉侵权技术方案已被抵触申请公开,则相较于抵触申请亦不应被授予专利权,相应地也不应被纳入涉案专利权的保护范围。因此,被诉侵权人以其实施的技术属于抵触申请为由,主张未侵犯涉案专利权的,人民法院可以参照适用专利法第六十二条、侵犯专利司法解释第十四条等有关现有技术抗辩的规定,对抵触申请抗辩进行认定。

需要指出的是,由于抵触申请与现有技术的含义和性质存在一定差异,故抵触申请抗辩的审查判断标准应与抵触申请的性质相适应,与现有技术抗辩的审查判断标准存在一定差异。根据专利法第二十二条第二款的规定,抵触申请的公开时间在涉案专利的申请日之后,不构成涉案专利的现有技术,故仅可以与涉案专利单独对比,评价其新颖性。

与之不同的是,根据专利法第二十二条第二、三款的规定,现有技术既可以评价涉案专利权的新颖性,也可以与其他现有技术或者公知常识结合,评价涉案专利权的创造性。综上,抵触申请仅仅可以被用来单独评价涉案专利权的新颖性,既不可以与现有技术或者公知常识结合,更不可以用于评价涉案专利权的创造性。因此,只有在被诉侵权技术方案的各项技术特征均已被抵触申请单独、完整地公开,相对于抵触申请不具有新颖性时,才可以认定抵触申请抗辩成立。如果被诉侵权的技术方案相较于抵触申请存在差异并具有新颖性,或者被诉侵权人主张将抵触申请与现有技术或者公知常识结合后进行抗辩的,抵触申请抗辩均不能成立。

就本案而言,经查,被诉侵权产品的技术方案并未被抵触申请单独、完整地公开,相对于抵触申请具有新颖性。而B将抵触申请与公知常识结合后进行抗辩的主张也与抵触申请的性质明显相悖。因此,再审申请人的抵触申请抗辩主张不能成立。

总结来看,抵触申请抗辩的审查判断标准:

首先,可参考现有技术抗辩的主要理由,从法理上专利不应保护与现有技术相同或无实质性差异的技术方案;其次,要注意抵触申请仅限于用来判断新颖性,不应与现有技术或公知常识结合,不能用来评价创造性。只有在各项技术特征均已被抵触申请单独、完整地公开时,才可认定抵触申请抗辩成立。我国对于抵触申请的判定是相对简单的,但是对于抵触申请之抗辩的审查是相对严格的。相信这也是为了防止规则的滥用,为了维护公平正义和市场的正常秩序。

希望上述分享对大家工作有所帮助。

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