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1. On the Conditions for the Background to be used as the basis for amendment of application documents
2. The Supreme People's Court issued the Opinions of the Supreme People's Court on Strengthening Applications of Blockchain in Judicial System
3. Sanyou held a webinar on "China Trademark Rights Protection Practice"
4. Analysis on the infringement of Valeo Lighting Belgium’s ofan invention patent for front fog lamp assembly infringement ofan invention patent for front fog lamp assembly
1.On the Conditions for the Background to be used as the basis for amendment of application documents
In June 2021, entrusted by an important client, our firm submitted an application for "pre-litigation evidence preservation" to the Shanghai Intellectual Property Court, requesting that the court preserve the evidence of textile machinery (hereinafter referred to as the target machinery) displayed at the China International Textile Machinery Exhibition (Shanghai ITMA Asia Exhibition), on the grounds that the textile machinery is suspected of infringing the invention patent rights of our client. The judge of the Shanghai Intellectual Property Court then quickly organized a hearing and issued a ruling granting evidence preservation. After successfully preserving the evidence of the target machinery, on behalf of our client our firm filed a patent infringement lawsuit with the Shanghai Intellectual Property Court. During the litigation, the Defendant filed a countersuit for invalidation to the CNIPA against the patent involved, which is the basis of our client's right in the patent infringement litigation. Whether its validity can be maintained will determine the future of the infringement litigation. According to Article 2 of the interpretation of the Supreme People's Court on Several Issues concerning the Application of Law In The Trial of Patent Infringement Dispute Cases (2): If the claims claimed by the patentee in the patent infringement lawsuit is declared invalid by a patent administration department under the State Council, the people's court that handles the dispute case of patent infringement may rule to reject the suit of the patentee which is based on such invalid claims. Regarding whether the Background can be used as the basis for amendment of claims in the substantive examination procedure, there is no clear guidance and provisions given in either the Patent Examination Guide or the Patent Law and relevant judicial interpretations. After thorough research and internal discussions, our lawyers formed the following ideas for the defense. The Background of the specification clearly recorded the information directly related to the technical solution of the invention, so that those with sufficient technical skill are able to realize that such information forms a crucial part of the technical innovation of the invention. Thus, the basis for amendment of the application document shall also include the content of the Background. The judicial panel finally adopted our opinion and decided to maintain the validity of all the patents involved The success of this case maintained the ongoing infringement litigation, while providing a legal guarantee for our client to expand domestic sales channels in the future.
2. The Supreme People's Court issued the Opinions of the Supreme People's Court on Strengthening Applications of Blockchain in Judicial System
The Supreme People's Court issued the " Opinions of the Supreme People's Court on Applications of Blockchain in Judicial System (hereinafter referred to as the Opinions) to further promote the use of key technologies represented by blockchain to accelerate the digital transformation of the people's courts. The Opinions clarify the general requirements for people's courts to promote judicial application of blockchain and the requirements for the construction of blockchain platforms for people's courts. It also proposes four typical scenarios for the application of blockchain technology: enhance judicial credibility, improve judicial efficiency, enhance judicial coordination, and serve economic and social governance. The Opinions have the following distinctive features:
1. propose the establishment of an interoperable and shared judicial blockchain alliance;
2. clarify the requirements for the construction of the people's court blockchain platform;
3. propose the use of blockchain data tamper-proof technology to improve judicial credibility;
4. propose the application of blockchain to optimize business processes and improve judicial efficiency;
5. fully tap the potential of blockchain interoperability and strengthen judicial coordination; and
6. use the value attribute of mutual recognition and mutual trust of the blockchain alliance to serve economic and social governance.
3. Sanyou held a webinar on "China Trademark Rights Protection Practice"
Recently, Sanyou held a webinar on "China Trademark Rights Protection Practice". The speaker is Hu Xiaoxia, a lawyer in Sanyou’s Legal Department. The main content of the lecture：
1. Common ways of rights protection against trademark infringement.
Common ways of rights protection against trademark infringement include: sending warning letters, complaints before industrial and commercial departments, civil litigations, customs protection, e-commerce platform complaints, domain name complaints, criminal procedures, and exhibition rights protection. In specific cases, it is necessary to comprehensively consider factors such as the scale of infringement, the results of investigation and evidence collection, the budget for rights protection costs, and the expected rights protection results to decide the most appropriate method of rights protection. 2. Trademark Infringement Judgment Rules.
The premise of determining whether a trademark infringement is constituted is that there must be a trademark use behavior. After determining that the establishment of trademark use, the review goes on determining whether the goods or services used by the alleged infringing party are the same or similar to the classes of goods or services claimed by the right holder, and whether it is easy to cause confusion among relevant public. 3. Review of Trademark Infringement and Defense Grounds.
The review of trademark infringement is mainly divided into the following four steps:
1). Review the subject of trademark rights and the trademark involved.
2). Review on whether the use of the alleged infringing trademark constitutes trademark infringement.
3). Review the grounds of defense.
4). After the establishment of infringement, liabilities shall be determined. Such liabilities may include stopping the infringement, eliminating the impact, civil compensation, administrative penalty etc.
The defenses include: fair use defense and non-compensation defense despite infringement. The fair use defense includes the descriptive use defense and the indicative use defense. Whereas the non-compensation defense despite infringement includes the defense of non-use of the registered trademark and the defense of legal source.
4. Analysis on the infringement of Valeo Lighting Belgium’s ofan invention patent for front fog lamp assembly infringement ofan invention patent for front fog lamp assembly
Recently, the Shanghai Intellectual Property Court (hereinafter referred to as the Shanghai IP Court) made a first instance judgment on a dispute over the infringement of an invention patent for front fog lamp assembly. The plaintiff in this case is Valeo Lighting Belgium, a world-famous auto parts manufacturing company. A lamp company in Zhuhai and an automobile sales company in Shanghai were ordered to stop the infringement, with the former compensating the plaintiff for the economic loss of 5 million RMB and a reasonable expenditure of 350,000 RMB. The Shanghai IP Court affirmed that the technical solution used by the alleged infringing product fell within the protection scope of the patent right involved, and both defendants shall bear civil liability for ceasing the infringement and compensating for losses in accordance with the law. In this case, the plaintiff claimed to calculate the damages based on the defendant's profits. Because the defendant, a lamp company in Zhuhai, sells a large number of products and there is no evidence to prove that the company is engaged in infringement, the business profit shall be taken into account when determining the amount of compensation. Since the evidence on file cannot reflect the business profit of the alleged infringing product, the infringing profit of the lamp company in Zhuhai could not be directly calculated. According to the relevant provisions of the patent law, the Shanghai IP Court adopted a legal compensation method to determine the amount of compensation in this case, comprehensively considering the situation of the involved patent, the sales quantity and sales amount of the alleged infringing products, the gross profit margin and business profit of the defendant company, the gross profit margin of the products of companies in the same industry, the contribution rate of the patent involved in the alleged infringing products, and the period of time during which the infringement took place, etc. In the trail of first instance, the Shanghai IP Court ruled that the defendants, a lamp company in Zhuhai and an automobile sales company in Shanghai, shall stop the infringement. The lamp company in Zhuhai was sentenced to compensate the plaintiff, Valeo Lighting Belgium, 5 million RMB for the economic loss and 350,000 RMB for reasonable expenses such as lawyer fees, notarization fees and product purchase fees. The new patent law, which came into effect on June 1, 2021, raised the upper limit of legal compensation for patent infringement damages from 1 million RMB to 5 million RMB. This case is the first case in which the Shanghai IP Court applied the maximum compensation after the implementation of the new patent law, which shows that the Chinese government has further strengthened the protection of the IP rights of foreign enterprises.
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