In 2018, the procuratorial organs increased the supervision of major and complicated cases, supervised 10 cases of major trademark infringement cases, and jointly supervised 22 cases with central authorities. The procuratorial organs supervised the administrative law enforcement agencies to transfer more than 300 suspected IPR infringement cases; supervised the public security organs to file nearly 200 IPR infringement cases. As a result, cases are established and transferred as necessary, and those should be held criminally responsible are not let loose with a financial penalty. In 2018, the national procuratorial organs approved nearly 3,000 arrests for the crime of producing and selling counterfeit drugs, the crime of producing and selling inferior drugs, the production and sale of foods that did not meet the safety standards, and producing and selling toxic and harmful food; about 12,000 people were prosecuted.
(Source: website of CNIPA)
On February 12, the CNIPA official website published “Several Provisions on Regulating the Application and Registration of Trademark (Draft for Comment)”
On February 12, the CNIPA official website published “Several Provisions on Regulating the Application and Registration of Trademark (Draft for Comment)” to solicit public opinion. The deadline for comments is March 14, 2019. The draft includes eight provisions; reaffirming the principle of good faith established by the Trademark Law and applying for trademark registration on the premise of willingness to use; specifying the type of behavior and legal consequences of abnormal application for trademark registration; proposing specific measures to regulate the registration of abnormal trademark applications; clarifying the responsibilities of the competent intellectual property authorities at all levels to guide and regulate the application, registration and use of trademark.
The Draft proposes that, in addition to the provisions of the Trademark Law and the Implementation Regulations of the Trademark Law, the acts of abnormal application for trademark registration may be subject to disciplinary measures according to the circumstances. If an act of abnormally applying for trademark registration defrauds funds, supports or rewards, and the circumstances are serious enough to constitute a crime, it will be transferred to the relevant authorities for criminal responsibility according to law. Trademark agencies engaged in the registration of abnormal trademarks will also be punished according to law.
(Source: China Intellectual Property Network)
Trademark graphic intelligent retrieval function officially launched
Recently, the trademark graphic intelligent retrieval function officially launched. This is a new milestone in building trademark informatization following the full launch of the trademark online service system and the free opening of the trademark database to the society. It marks a new starting point for the transformation of China’s trademark examination from automation to intelligence. The application of intelligent retrieval technology has realized the transformation of trademark examination from pure manual retrieval to “search by graph” intelligent retrieval, effectively avoiding inconsistent standards caused by manual examination. By significantly reducing the number of similar trademarks for comparison, human labor is reduced and the checking quantity has halved from about ten thousand to about five thousand.
The Trademark Office will continue to promote the integration of artificial intelligence technology and trademark examination, expand the application of new technologies such as artificial intelligence in the trademark field, strengthen the construction of information technology, further enhance the quality and efficiency of trademark examination, and continuously improve the service level of trademarks.
(Source: website of CNIPA)
The newly amended Patent Agency Regulation has been passed by the State Council executive meeting and will be implemented on March 1, 2019.
The newly amended Patent Agency Regulation has been passed by the State Council executive meeting and will be implemented on March 1, 2019. The current Patent Agency Regulation was implemented in 1991. By the end of October 2018, 42,569 people had obtained the status of patent attorney, the number of practicing patent agents reached 18,468, and the number of patent agencies reached 2,126. Based on the principles of “Minimizing the government’s direct control over market resources, minimizing direct government intervention in market activities, and invigorating the micro-subjects”, this amendment canceled two administrative approval procedures, optimized two administrative approval procedures, and relaxed the access conditions for patent agents and agencies.
(Source: website of CNIPA)
CNIPA No. 295 Announcement
The original Patent Reexamination Board of the State Intellectual Property Office was incorporated into the Patent Office of the National Intellectual Property Administration. The original Trademark Office, Trademark Review and Evaluation Committee and Trademark Review and Cooperation Center of the State Administration for Industry and Commerce were integrated into the Trademark Office of the National Intellectual Property Administration. The Patent Reexamination Board, the Trademark Review and Evaluation Committee and Trademark Review and Cooperation Center were cancelled. After the adjustment of the organization, the patent and trademark examination work will be carried out in the name of the National Intellectual Property Administration. The names of Patent Reexamination Board, Trademark Office, Trademark Review and Evaluation Committee and Trademark Review and Cooperation Center of the State Administration for Industry and Commerce will no longer be used. The procedures for matters handled by the original Patent Reexamination Board, Trademark Office, Trademark Review and Evaluation Committee and Trademark Review and Cooperation Center of the State Administration for Industry and Commerce will remain unchanged. Unfinished matters are handled by new institutions that continue to exercise their powers. The notifications issued, the administrative decisions made, and the various agreements signed continue to be valid.
(Source: website of CNIPA)
Hao Qingfen, Chairperson of Dragon group, received Top Ten Patent Attorneys for the 2019 Qiangguo Intellectual Property Forum
On February 23, 2019, the Organizing Committee of the Qiangguo Intellectual Property Forum and the Beijing Qiangguo Intellectual Property Research Institute hosted the “Insight Trends • Shining into the Future – 2019 Qiangguo Intellectual Property Forum New Year Sharing Meeting and Service Industry Awarding Ceremony” at China Hall of Peking University Boya International Hotel. Ms. Hao Qingfen, Chairperson of Dragon group, attended the meeting along with 300 experts and scholars, corporate leaders, and 104 lawyers and institutional representatives.
At the award ceremony, the organizing committee presented the award of the 2019 “Top Ten” Qiangguo Intellectual Property Forum Service Industry. Ms. Hao Qingfen, Chairperson of Dragon Group, was awarded as one of the Top Ten Patent Attorneys of the Year for her outstanding contribution in the field of intellectual property.
As an expert of the Chinese Intellectual Property Expert Library and a Chinese Intellectual Property Leader, Ms. Hao Qingfen is proficient in Chinese patent law, has extensive experience in patent application, patent reexamination, patent invalidation, patent litigation, etc., and is a well-known first-class patent agent in China.
Dragon Special Report and Agency Practice
The application of the estoppel principle and related response in patent allowance and right determination procedures
The estoppel principle refers to prohibiting the right holder, in determining whether an equivalent infringement is constituted in patent infringement litigation, from incorporating contents previously given up by the patent applicant or patentee, in the manner of narrowing amendment or statement of observation, into the protection scope of the patent again [1]. The purpose of the estoppel principle is to prevent the patentee from profiting at both ends.
In china, the estoppel principle is a supplement to Article 59 of the Patent Law “The extent of protection of the patent right for invention or utility model shall be determined by the terms of the claims” and cannot rule beyond such basic principle of Patent Law. When identical infringement is established, there is no need to consider the principle of estoppel; only when identical infringement is not established, the principle of estoppel is considered to judge whether equivalent infringement happens. In other words, the estoppel principle is only a limit to equivalent principle [2].
Instead of going deeper into the theory of the estoppel principle, this article focuses on its judicial interpretation. Four typical cases judged by the Supreme People’s Court will be analyzed to give some insight into the application of the estoppel principle in infringement litigation. Measures in patent allowance and right determination procedures will also be discussed.
I. Legal basis
Interpretation of the supreme people’s court on certain issues about the application of law in adjudications about patent infringement disputes (Law Interpretation 2009, No. 21) (hereinafter referred to as “judicial interpretation of patent infringement I”) introduces the estoppel principle into Chinese Patent Law in its Article 6: “where a technical solution is abandoned by a patent applicant or patentee in the procedure of patent allowance or invalidation through amendment to claims or description or statement of observation, the People’ Court shall not uphold the patentee’s incorporating such solution into the protection scope of the patent in dispute over infringement of patent rights”.
Interpretation of the supreme people’s court on certain issues about the application of law in adjudications about patent infringement disputes (II) (Law Interpretation 2016, No. 1) (hereinafter referred to as “judicial interpretation of patent infringement II”) provides restrictions on the application of the principle of estoppel in its Article 13: “Where the right holder proves that the narrowing amendment or statement made by the patent applicant or the patentee in the patent allowance and ownership determination procedure is clearly denied, the people’s court shall determine that such amendment or statement does not result in abandonment of technical solution.”
Articles 61-64 of Guidelines for Patent Infringement Judgment (2017) issued by Beijing Higher People’s Court specify the definition, application scope, application conditions and application premises of the principle of estoppel.
Besides, the Supreme People’s court includes many cases relating to the estoppel principle in “Guidance by the Supreme People’s Court about Intellectual Property Trial Cases (Volumes 1-10)”, specifying the criteria of judgment.
II. Analysis of typical cases
1. Case 1[3]
Claim 1 of the patent in question relates to a pile lock for automobiles.
One of the controversial points in this case is whether the court can apply the principle of estoppel on its own initiative.
The first and second instance courts believed that explanations on the technical features made by the patentee in allowance, invalidation and judicial examination procedures as well as judgment made by the patent reexamination board and the court shall all serve as significant evidence for interpreting claims. When determining equivalent infringement, the court shall also examine whether the principle of estoppel is applicable according to the facts of the case, limiting the application of equivalent infringement to an appropriate scope.
According to applicant for reexamination (patentee), because the defendant (alleged infringer) did not put forward the principle of estoppel as a defense in counterplead, there was no legal basis for the second instance court to apply the principle of estoppel on its own initiative.
According to the Supreme people’s court, the estoppel principle was a restriction on the determination of equivalent infringement, and the current law and judicial interpretation did not stipulate whether the people’s courts can actively apply the principle of equivalence. In order to maintain the balance of interests between the patentee, the accused infringer and the public, the People’s Court should not restrict active application of the estoppel principle. Therefore, in determining whether an equivalent infringement is constituted, even if the accused infringer did not request the application of the principle of estoppel, the people’s court may also, according to the facts already ascertained, impose necessary restrictions on identical scope by applying the principle of estoppel, so as to reasonably determine the scope of patent protection.
Besides, the judgment of this case shows that statement of observation alone will also lead to the application of the estoppel principle. Please also refer to Reference Case 2 [3].
2. Case 3[4]
Claim 1 of the patent in question relates to a pharmaceutical composition.
In order to overcome the drawback that claim is not supported by the description in substantive examination, the patentee amended “soluble calcium agent” to “active calcium” and received a patent right. The description of the patent publication clearly stated that “soluble calcium agents are calcium gluconate, calcium chloride, calcium lactate, calcium carbonate or active calcium”.
The product of the accused infringer contained calcium gluconate. The patentee claimed that the allegedly infringing product was the same as the technical solution of the patent involved, while the defendant argued that they were different.
According to the first and second instance courts, only amendments and statement of observations with the purpose of overcoming novelty and inventiveness drawbacks can produce estoppel effect, and not all of them cause the application of the estoppel principle. As a result, the amendment in this case did not produce estoppel effect, and the allegedly infringing product shall be regarded as falling into the protection scope of the patent involved.
According to the Supreme People’s court, the patentee’s amendment in the patent allowance procedure had abandoned the technical solution containing the technical features “calcium gluconate”. Therefore, the protection scope of patent shall not include the technical solution containing the technical feature “calcium gluconate”. The corresponding technical characteristic of the allegedly infringing product was calcium gluconate, which belonged to the technical solution abandoned by the patentee in the patent allowance procedure. It should not be regarded as equivalent to the technical feature “active calcium” in claim 1 and be included in the protection scope of patent. The original judgment misunderstood the principle of estoppel, and inappropriately considered them to be the same feature.
Comment:
Article 62 of the Guidelines for the Judgment of Patent Infringement (2017) of the Beijing Higher People’s Court provides that the estoppel principle is applicable not only to amendments and statement of observations with the purpose of overcoming novelty and inventiveness drawbacks. Instead, the amendments in the manner of limiting or partially abandoning protection scope made to overcome the following substantive drawbacks are all subject to estoppel principle: lacking novelty or inventiveness, lacking necessary technical characteristics, claim not supported by the description, insufficient disclosure of the description. In brief, amendments to claims for purposes apart from overcoming novelty and inventiveness drawbacks are all subject to the estoppel principle.
3. Case 4 [5]
Claims 1-3 of the patent involved relates to a model steering gear.
In the invalidation procedure of this case, claims 1-2 of the patent involved were declared invalid, and the patent was maintained valid on the basis of claim 3.
The additional technical feature of claim 3 was a newly added technical feature, which defined the guide strip as “silver film”. The product accused of infringement used “gold-plated copper strip” as guide strip. The dispute in this case focused on whether the fact that claims 1-2 had been invalidated led to the restriction on the additional technical features in claim 3 based on the principle of estoppel, so that the product of the defendant did not constitute an equivalent infringement.
The Court of Second Instance held that the reason for the validity of dependent claim 3 was the addition of the additional technical features of dependent claims 2 and 3 to claim 1, which was essentially amendment to claim 1. As a result, it can be determined that the additional technical feature of claim 3 was a narrowing amendment for maintaining validity of the patent. According to the estoppel principle, technical solutions using conductive materials apart from “silver film” as the guide strip shall all be regarded as abandoned by the patentee.
The Supreme People’s Court held that the protection scope of a dependent claim shall not be limited on the basis that its independent claim had been invalidated. Claims 1-2 did not mention “silver film” in claim 3, the plaintiff did not amend the description or claims in the allowance and invalidation procedures, and no statement of observation abandoned technical solutions using conductive materials apart from “silver film” as the guide strip. As a result, although claims 1-2 had been invalidated, the additional technical feature “silver film” in claim 3 was still subject to equivalent principle. The estoppel principle was not applicable to this case, and equivalent infringement happened in this case.
Comment:
Generally speaking, additional technical features of a dependent claim include technical features further defining preceding features and newly added technical features. When a dependent claim has newly added features (in this case, the additional technical features of claim 3 are not covered by claim 1 or 2) and the patentee does not make delimiting amendment or statement of observation in allowance or invalidation procedures regarding such new feature, the estoppel principle is inapplicable.
4. Case 5 [6]
Claim 1 of the patent in question relates to a shark fin antenna.
The technical features in claim 1 related to the estoppel principle are features a, b, and c.
Feature a: the antenna signal output end is connected to the antenna amplifier signal input end through the antenna connection component, or directly connected to the coaxial cable;
Feature b: the radio receiving antenna is mounted on the upper inner side of the antenna casing by injection molding or fixed clamping;
Feature c: the radio receiving antenna is an AM/FM shared antenna.
In the substantive examination procedure, the patentee claimed that the signal output connection method (antenna connection element) of claim 1 (feature a) was different from D1, and the mounting method (injection molding or fixed clamping) (feature b) on the inner side of the antenna housing was not common knowledge. However, the examiner asserted that impedance matching by connecting components (feature a) was a common technical means in the art, and “injection molding” and “fixed clamping” (feature b) were also commonly used in the field of locking and are common knowledge in the art. As a result, as the applicant cannot establish inventiveness based on feature a or feature b, feature c was added to claim 1 to narrow the protection scope and land allowance.
In the invalidation procedure, the patentee still claimed that claim 1 of the patent involved possessed three distinguishing features a, b, c over D1, feature a did not belong to conventional technical means and feature b was not disclosed. In the above limiting statement, the patentee emphasized that the technical solution of the patent involved must include features a and b. This meant that the patentee abandoned technical solutions that, though not comprising features a and b, comprised features equivalent to features a and b. The Patent Reexamination Board did not specifically evaluate whether features a and b made the patent involved inventive. Instead, the Board upheld the patent right on the basis that feature c made the patent inventive.
In infringement litigation, the defendant argued that the alleged infringing product did not use an antenna connection component (feature a) or injection molding or fixed clamping (feature b), and the technology used had been abandoned by the patentee.
The court of second instance held that the patentee made a limiting statement on the claim in the patent invalidation procedure, and the statement of opinion was not explicitly denied by the Patent Reexamination Board. As a result, the defendant’s following propositions should be accepted: the “antenna lead” of the product being sued cannot be equated with the “connecting element” of the patent in question (feature a), the “glue bond” of the product being sued cannot be equated with the “injection molding or fixed clamping” (feature b) of the patent in question, and the product being sued had not fallen into the protection scope of the claim.
In the retrial, the Supreme People’s Court asserted that although patent allowance and right determination were two procedures, they were interconnected. Whether the statement made by the right holder was “clearly negated” shall be based on objective and comprehensive judgement of examination on the technical features in patent allowance and right determination stages. The emphasis should be on whether the delimiting statement made by the patentee was ultimately accepted and whether such statement caused allowance or maintenance of patent right. In this case, because the examiner clearly rejected argument based on features a and b, allowance was not granted due to narrowing statement on features a and b. Besides, the Patent Reexamination Board did not overturn the negative opinion held during the substantive examination procedure. As a result, the narrowing statement by the patentee shall be regarded as clearly negated. Such statement did not cause abandonment of technical solution in legal sense, the estoppel principle was inapplicable to the present case, and the second instance court was ordered to conduct a retrial.
Comment:
The abandonment of technical solutions can be divided into abandonment of meaning expression and abandonment with legal effect. In general, only the latter can lead to the application of the estoppel principle. In other words, the estoppel principle is applicable only when an abandonment made in patent allowance and right determination procedures to make/keep the patent valid is accepted. As administrative proceedings may overturn the examiner’s determination of amendment or statement, being “clearly negated” includes two stages-patent examination and administrative litigation.
Specific to this case, in the allowance procedure, the examiner clearly negated features a and b and granted a patent right based on feature c; in the right determination procedure, because the Patent Reexamination Board did not specifically comment on features a and b, the patent right was maintained based on feature c. Because features a and b did not produce substantive effect in allowance and right determination procedures and the patentee benefited nothing from the features, narrowing statement on features a and b does not constitute abandonment of technical solution based on the estoppel principle. The criterion of being “explicitly negated” should not be understood mechanically and literally, but from the perspective of substantive effect. It is necessary to determine objectively and comprehensively the contents of OAs in the allowance procedure and Invalidation Decisions in the right determination procedure, and to determine whether the examiner or the Patent Reexamination Board holds a clearly negative attitude. The purpose of “the estoppel principle” is to prevent the patentee from profiting from both ends and damage the interests of the public. But that does not mean the patentee’s legitimate interests can be damaged by making him suffer at both ends.
III. Response in allowance and right determination procedures
In the infringement procedure, the basis for the application of the estoppel principle is the amendment or statement of observation to claims or description by the patent applicant or patentee in allowance and right determination procedures. Such amendment and statement of observation are recited in the patent examination docket. According to the provisions of the Article 6.2 of the Patent Infringement Judicial Interpretation, the patent examination docket includes written materials filed by the patent applicant or patentee in patent examination, reexamination and invalidation procedures; the Office Action, the meeting record, the oral hearing record, the decision on the examination of patent reexamination request in force, and the decision on the examination of patent invalidation request, etc., issued by the patent administration department under the State Council and its Patent Reexamination Board. In the interpretation of the claims, although the patent examination docket is only used as “internal evidence” in preference to common knowledge and the general understanding of those skilled in the art, since the estoppel principle emphasizes the patentee’s “self-delimitation”, it should be at the most preferred status. Once there is a situation of abandonment of technical solution, it should not be included in the patent protection scope. Therefore, it is necessary to make amendment to claims and description and statement of observation, in allowance and right determination procedures, with great care. It is even necessary to ponder on the wording in the statement of observation, so as to avoid effect from the application of the estoppel principle.
This article provides some countermeasures in the allowance and right determination procedures as well as for related patents.
1. Allowance procedure
First, the statement of observation should be limited to overcoming the drawbacks pointed out by the examiner. No additional statement is recommended, and it is less recommended to comment on unrelated technical features, technical solutions or claims. Particularly, when overcoming novelty or inventiveness drawback, if the applicant adds a dependent claim whose novelty or inventiveness is accepted by the examiner to an independent claim, the applicant is advised to superficially state the fact of addition and give no comment on substantive content.
Further, as an important principle in patent infringement litigation, the estoppel principle cannot be applied to a statement of observation filed by the applicant in allowance procedure for correcting mistakes in previous statement of observation. As a result, if the applicant finds mistaken expression in previous statement of observation before allowance, it is advisable to file a correcting statement of observation at the right timing. [7]
Therefore, if an argument in a previous statement of observation may trigger application of the estoppel principle, the applicant may actively file a supplementary statement of observation or include such correction in the next response to OA.
2. Right determination procedure
In invalidation procedure, especially invalidation procedures in patent infringement litigation, the invalidation requestor usually not only attempts to invalidate all claims but also lead the patentee to interpret technical features in the claims to their own disadvantage. The purpose is to narrow the protection scope of the patent and to benefit the requestor’s counterpleading against infringement litigation.
Therefore, in invalidation procedure, the patentee needs not only to fight for the largest possible protection scope but also to avoid unnecessary narrowing interpretation to claims made to prevent invalidation. Once falling into such trap, the estoppel principle may be applicable in later infringement litigation to damage the patentee’s legitimate rights.
3. Effects from other patents
According to Article 6.2 of the judicial interpretation of patent infringement, the people’s court may interpret the claims of a patent based on its parent or divisional applications, patent examination dockets of such patents, and judicial documents for decision on patent allowance or right determination in force. In other words, such related patent dockets may also cause application of the estoppel principle in infringement litigation.
Therefore, apart from the amendment and statement of observation to the patent involved, it is also necessary to consider amendment and statement of observation to parent applications, divisional applications [8], other patents claiming the same priority [9], and even the series of similar patents filed by the same applicant.
IV. Summary
This article introduces the legal basis for the application of the principle of estoppel. Four typical cases of the Supreme People’s Court are then analyzed to interpret the application of the principle of Estoppel in infringement procedures. Last, some countermeasures in patent allowance and right determination procedures are introduced. We hope this article can be helpful to you.
(Author: Weidong WANG)
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