'dissimilarity 'can also constitute' similarity '-' using the spear of the child to attack the shield of the child 'is repeated

Recently, Rayto received a "Decision on Examination of Invalidation Request", which declared that all six designs in the involved patents requested by Rayto's agent were invalid. In the patent infringement dispute litigation corresponding to the involved patent, both the first and second trials have determined that it constitutes patent infringement and ruled that the defendant shall bear the liability for patent infringement compensation. This invalid decision is undoubtedly a reversal for the defendant, with a significant impact. Not only may they be exempt from compensation, but they can also continue to operate the products involved.

 

 

There are two major highlights of this invalidation decision: firstly, it is a case of "using the spear of the child to attack the shield of the child", and the evidence used is the patent owner's own prior application and later published patent documents; The second is to accurately sort out the differences in the judgments of "similarity" and "sameness" between different provisions of the Patent Law.

Basic case

The patent in question is a design patent related to streetlights, filed on October 22, 2019, which includes six design schemes. The patentee sued our client for infringement of the products produced and sold. After trial, the first instance court determined that the defendant constituted infringement. After a thorough patent search, we found that the patent owner applied for a patent on January 9, 2019, which may constitute a "conflicting application" of the patent in question. Subsequently, we filed an invalidation request for the patent in question before the second instance.

 

In the second instance and invalidation procedures, the patentee stated that the patent in question was originally a joint application with the comparative design as one patent. However, during the examination, the State Intellectual Property Office deemed that the design of the patent in question and the comparative design did not constitute a similar design and lacked unity. Therefore, the patentee filed a new patent for the design that the examiner deemed dissimilar, which is the patent in question. The patentee insists that since the previous examination opinion of the State Intellectual Property Office has determined that the design of the patent in question does not constitute a similar design to the comparative design, the comparative design does not constitute a conflicting application of the patent in question.

 

 

However, the China National Intellectual Property Administration still determined in the invalid decision that the patent design involved was essentially the same as the comparative design, and the design of the patent involved lacked novelty, and accordingly declared all the patent rights involved invalid.

 

 

Lawyer's analysis

Many people may have questions: Previously, the State Intellectual Property Office claimed that the two were "dissimilar" during the patent application examination process, but now in the invalidation procedure, the State Intellectual Property Office claims that they are "substantially the same". Isn't this contradictory?

Seemingly contradictory, in reality, this' similarity 'is not that' similarity '. There are significant differences in the same or similar judgment rules involved in different provisions of the Patent Law.

The reason why the patent application examination opinions consider it "dissimilar" and the invalidation decision considers it "substantially identical" is actually due to different applicable laws and judgment rules. Specifically, the "dissimilarity" pointed out in the examination opinion of the patent application is subject to the provisions of Article 31 (2) of the Patent Law. When determining whether similarity is constituted based on this provision, the specific comparison rule is: after overall observation, whether other related designs are the same or similar to the basic design, the differences between the two should be limited to local subtle changes, and the focus of the comparison rule is on "whether the overall comparison is similar".

The substantive similarity considered in the invalidation decision is the application of Article 23 (1) of the Patent Law, which focuses on "inclusion" and whether the existing design or conflicting application contains all the design elements of the patent in question.

Therefore, when making judgments on whether the same or similar appearance designs are identical, the comparison methods and results may be "completely different" for different legal provisions.

Legal reference

1. Article 23 (1) of the Patent Law: The design for which a patent right is granted shall not be an existing design; No unit or individual has filed an application for the same design with the patent administration department of the State Council before the application date and recorded it in the patent documents published after the application date.

2. Article 31 (2) of the Patent Law: A design patent application shall be limited to one design. Two or more similar appearance designs of the same product, or two or more appearance designs of products sold or used in sets for the same category, can be submitted as one application.