Case Brief

The client, a company in Qingdao, is a high-tech enterprise specializing in providing safety devices and technical services for oil depots, petrol stations, and related fields. The company now holds several series of products, such as static alarms, leak detectors, liquid level meters, quantitative loading systems, oil vapor recovery online monitoring systems, vacuum pumps, oil-submerged pumps, and safety protection. In October 2021, the client launched a retractable grounding device at an exhibition and made sales to the public.

In this case, the patent belongs to a company in Beijing and is a patent for utility model that has exceeded its protection period. The company claimed that the company in Qingdao violated the provisions of the Chinese Patent Law by exploiting the patent involved during the protection period of the patent without authorization, so the company filed a lawsuit seeking the amount of compensation of 500,000 yuan, and requested the court to carry out the evidence preservation and on-site inspection regarding the products sued for infringement.

Entrusted by the company in Qingdao, Unitalen's attorney team actively prepared to respond to the lawsuit. Unitalen lawyers found that the company in Beijing had claimed rights against several other companies on the basis of the patent involved, which had exceeded the protection period. In the Evaluation Report of Utility Model Patent of the patent involved, it was clearly stated that "Claim 1 does not meet the conditions for grant of the patent right" and "Claim 1 does not involve an inventive step under Article 22.3 of the Chinese Patent Law". However, the plaintiff explicitly claimed only the right of Claim 1. Therefore, Unitalen lawyers considered that the plaintiff in this case was claiming a right to a claim that substantively does not involve an inventive step, and the core strategy for responding to this case was to file a request for invalidation against the patent involved.

Based on the existing evidence in the evaluation report, Unitalen lawyers fully conducted supplemental searches and obtained evidence, including several patent documents and public use. After close technical exchanges with the client, Unitalen lawyers determined the evidence combination strategy for the invalidation request and filed a request for invalidation with the CNIPA. After an oral hearing, the CNIPA ultimately made an invalidation decision, declaring that a plurality of claims of the patent involved, including Claim 1, were invalid.

As a result, the plaintiff was forced to withdraw the lawsuit as the basis for its rights no longer existed, and Unitalen won the lawsuit for its client.

Case Significance

Although anyone is free to implement the patent technology after the expiration of the patent right, the law does not lift the retroactive viability of the infringement behavior that occurred during the protection period of the patent right. Therefore, when confronted with the infringement lawsuit concerning the expired patent right, the enterprises should not lower their guard, and should entrust a professional attorney team to conduct a targeted search analysis as early as possible to file a request for invalidation against the patent, so as to fundamentally eliminate the risk of the lawsuit. In addition, the inspiration provided by this case lies in the fact that, while safeguarding the legitimate exercise of the intellectual property rights, enterprises should also prevent the abuse of intellectual property rights and eliminate the practices of appropriating technologies in the public field for their own use and taking advantage of the opportunity to make profits.