In April 2016, the Supreme People's Court released the "Annual Report of the Intellectual Property Cases Heard by the Supreme People's Court in 2015". According to the report, the Supreme Court accepted 759 IP cases and concluded 754 in 2015..
According to the report, the newly accepted cases exhibit the following characteristics:
- Most of the cases are still related to patents or trademarks;
- The administration of cases involving grant and validation of patents or trademarks has increased substantially;
- The administration of patent cases mostly involves basic legal issues, such as division and interpretation of technical features, determination of the disclosure of the background technology, and sufficiency of disclosure of the description. Civil patent cases involving the doctrine of equivalents account for a high proportion, and prior art and prior user right defences are commonly used;
- Identity comparison via DNA technology, etc, in new plant variety cases is developing in depth and the technical issues have become more complex and specialised;
- Administration of trademark cases increased rapidly again in 2015. Legal issues such as determination of trademarks' similarity and protection of prior rights still dominate the cases, and the good-faith principle plays a prominent role in guidance of trademark cases' adjudication;
- The number and proportion of copyright cases remain steady, internet infringement is still a prominent issue in new business models, and disputes over film and TV works arise frequently; and
- Most of the competition cases involve trade secret disputes, in which the owner's ability to collect and present evidence is poor, making it difficult to determine the protection scope in some cases.
As stated in the report, determination of infringement under the doctrine of equivalents is a key issue in patent infringement cases. In a case included in the report, the Supreme Court points out that the application of the doctrine of equivalents should consider the interests of both the patentee and the public, and consider the levels of technology when the patent application is filed and when the alleged infringing act occurs, so that the protection scope of the patent can be determined appropriately. If a technical solution was excluded when the patent application was filed, it should not be included in the protection scope of the patent via application of the doctrine of equivalents when determining patent infringement.
This case, lodged by Sun Junyi, the owner of utility model patent 200320112523.2, relates to an exhaust valve used in heating system. The patentee argued that the product manufactured and sold by the defendants infringes his patent under the doctrine of equivalents, even though the product is different from the claim of the patent in that the inlet cover of the product is flat while the inlet cover of the claimed "anti-blocking automatic exhaust valve" is in a cone shape.
The court noted that it is recited in both the description and the claims that the upper surface of the inlet cover is a cone shape. The court also noted that the person skilled in the art would know that the upper surface of the inlet cover may be a cone or a flat shape before the filing date of the patent. Now that the patentee limits the upper surface of the inlet cover to a cone shape, he in fact excludes the technical solution involving a flat upper surface of the inlet cover.
The court therefore determined that the technical feature "upper surface in cone shape" shall not be expanded to "a flat upper surface"; otherwise, reliance of the public on certainty and predictability of the protection scope of the patent right would be impaired. Accordingly, the court made a ruling that infringement under the doctrine of equivalents was not established.
Another patent infringement case involving the same patent, finally heard by the Supreme Court in 2014, was selected as one of the top ten innovative IP cases of 2014 and is regarded as providing judicial guidance on determining subjective fault of the seller. It has been noticed that the patentee, Junyi, is very active to enforce his patent mentioned above, and filed more than ten patent infringement complaints with courts in several provinces.
Guangyu Zhang is a partner at Peksung Intellectual Property. He can be contacted at: email@example.com
This article first appeared in World Intellectual Property Review July/August 2016, Published by Newton Media Ltd.
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