- Nanjing Yuanding Electromechanical Co., Ltd. v. Liu Chen,
(2014) Min Shen Zi No. 1050, Supreme Court
Article 62 of the Chinese Patent Law (2009) reads, in a patent
infringement dispute, where the alleged infringer has evidence to
prove that the technology or design exploited by it or him forms
part of a prior art or is a prior design, such exploitation does
not constitute infringement of patent right. This is so called
prior art or prior design defense, which can be alleged by a
defendant in a patent infringement litigation. When a patent for
design is alleged by the plaintiff, the defendant may, as a
defense, prove to the court that the design taken by the accused
product is identical with or not substantially different from a
design already known before the filing date of the alleged design
In Nanjing Yuanding Electromechanical v. Liu Chen made by the
Supreme Court on Nov. 4, 2014, defendant Liu Chen submitted
notarized documents to support his argument that, in a Special
Report of the 18th Beijing International Radio, TV & Film
Exhibition (BIRTV) (2009), an exhibited product - load bearing vest
"Knight d204" made by Shenzhen Movcam Technology Co.,
Ltd. was shown; since the Exhibition was held before the filing
date of the alleged design patent 201230039875.4, the design of the
load bearing vest "Knight d204" is prior design to the
alleged design patent; the accused infringing product copied the
design of the exhibited load bearing vest. In response, Nanjing
Yuanding Electromechanical alleged that Shenzhen Movcam did never
attend the Exhibition. Nanjing Yuanding Electromechanical also
submitted a notarized document to support its argument.
The Court found, the Special Report of the Exhibition shows a
front view of the load bearing vest, however, said view of the vest
is blurry and does not clearly shows the overall shape of the vest
as well as the shapes of the relevant parts of the vest, it is
therefore not possible to compare the accused infringing product
with this prior design of said exhibited vest alleged by defendant
The Court held,even if Shenzhen Movcam attended the Exhibition,
it is yet not possible to prove that the alleged infringing product
sold by Liu Chen copied the load bearing vest "knight
d204" as disclosed in the Special Report of the Exhibition
instead of the alleged design patent. The image shown in the
Special Report of the Exhibition can not be valid evidence for
supporting the prior design defense by the accused infringer.
The retrial request of the accused infringer, i.e. the defendant
Liu Chen, was therefore rejected by the Supreme Court.
Incidentally, during the above litigation, Liu Chen filed a
request for invalidation with the Patent Reexamination Board
against the design patent 201230039875.4 based on evidence
including the notarized documents which were submitted in the
infringement litigation for supporting his prior design defense.
The Patent Reexamination Board made a decision finally by
announcing the design patent valid and Liu Chen did not appeal said
decision. Yet the Supreme Court didn't take this fact in
reasoning its ruling.
From this case, it is clear that, to support a prior design
defense, the prior design shall have already been clearly disclosed
so that one can definitely identify the design, before the filing
date of the patent concerned.
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