(By Luo Yanjie) Abstract: After the official publication of an application for a patent of invention, the applicant may demand the entity or individual exploiting that invention to pay an appropriate fee, but is not entitled to prevent others from using the patent. After grant of patent rights by the patent office, the applicant has no right of demanding the subsequent entity or individual to pay an appropriate fee. In today’s post, our case is involved in the 2011 Min Ti Zi No. 259 Civil Judgment of the Supreme People’s Court’s
Pursuant to the Patent Law, it is a difficult question to protect an applicant’s rights in a patent protection vacuum regarding the period between being officially published its application for an invention patent and being granted the patent rights for an invention. In today’s post, we will discuss and analyze the protection rules for the following.
Introduction to the Case:
Shenzhen Siruiman Fine Chemicals Co., Ltd (the “Siruiman”) filed an application on January 19, 2006 for the equipment in manufacturing highly purified chlorine dioxide (the “disputed patent”) with the State Intellectual Property Office. The disputed patent was officially published on July 19, 2006 and granted to announce the decision that the patent administrative department decide to grant the patent right for an invention on January 21, 2009. In 2008, Shenzhen Kengzi Water Supply Company bought a similar equipment using the dispute patent from Shenzhen Kangtai Blue Water Treatment Equipment Co., Ltd. After found such fact, Siruiman brought a suit to courts, alleging that the afore-said two companies constituted infringement and requesting the two companies shall assume liability for patent infringement.
The Supreme People’s Court modified the judgments contained by the courts of first instance and second instance and overruled the plaintiff’s claims on the basis of judgment that subsequent use, sell or offer for sell the patented goods in the patent protection vacuum did not constituted patent infringement after being granted a patent rights of invention.
In a small number of cases in practice, the Supreme People’s Court may repeal the judgments handed down by the courts of first instance and second instance. Our analyses are as follows:
1. How could patentees protect its invention that be published yet not granted a patent right?
Pursuant to the Patent Law, an application for a patent of an invention shall be published promptly within eighteen months from the filing date. That is, at this time, there are no patent rights granted for this invention, resulting in a patent protection vacuum in which the applicant not only loses the confidentiality of this patent but also cannot protect its rights accordingly. As for this protection vacuum, the Patent Law stipulates that the applicant may demand the entity or individual exploiting that invention to pay an appropriate fee after the official publication of an application for a patent of invention. What calls for special attention is the provision of the Implementing Regulations of the Patent Law that requests made by patentees to the Patent Administrative Authorities or the courts for the disputes concerning the inadequacy of royalties for the use of an invention after the invention patent application has been published and before the patent has been granted shall be submitted after the patent right has been granted.
2. What types of liabilities shall the manufacturers and sellers undertake?
As previously stated, the applicant in the protection vacuum may only have the right to request the user exploiting the invention to pay an appropriate fee. However, there is no clear legislation stipulating whether the use of such invention constituted patent infringement. According to the judgment of the Supreme People’s Court, the answer to this question is obviously “no”.
In accordance with the decision of the Supreme People’s Court, it is easily to conclude that the applicant for an invention patent is not entitled to prevent others from using its invention in the period of protection vacuum, and furthermore such use of the invention does not constitute patent infringement. After the patent right has been granted, the patentees have no right to prevent others who manufacture, sells or imported the patented goods in the period of protection vacuum from subsequent use, offering for sell or selling. Additionally, the sellers, or users of the patented goods shall assume liabilities for compensations of an appropriate fee unless the sellers or users could prove the patented goods to be from legal sources.