—(2020) Supreme People’s Court Final Civil Judgment No. 699

If the party applied for invention patents and utility model patents of the same technical solution on the same day, the invention patent application was not authorized due to the lack of novelty or being determined not to involve inventive step based on the same technical field and the legal status had been determined, and then the party request for infringement damage relief based on the authorized utility model patent, in this case, the people's court shall not provide support.

The second instance of the Supreme People's Court held that the patent right is protected by law, and that the patent right is legal and effective and the right is relatively stable is the premise for obtaining protection in accordance with the law. Patent holders have the right to implement their patents and prohibit others from implementing their patented technology without permission, thus providing necessary incentives for invention and creation. However, for technical solutions that should not be protected by law, and the accused infringer also clearly argues that the accused act did not constitute infringement or should not be liable for infringement, if the court still supports the prohibition from others’ implementing it, it is obviously unfair and goes against the legislative purpose of the patent law. For the same technical solution in which the same applicant applies for invention and utility model patents respectively on the same day, utility model patent application can be granted patent right without substantive examination, and invention patent application may be must granted patent right through necessary substantive examination. Therefore, in practice, it is likely that the same technical solution is rejected or modified due to being determined as not conforming to the authorization condition during the examination process of the invention patent application, but it is authorized during the utility model patent application process. In this case, whether the examination conclusion of the invention patent application affects the protection of the utility model patent right should be specifically analyzed in specific circumstances. Generally speaking, if the applicant accepts the examination conclusion of the invention patent application of the same technical solution, or the invention patent application of the same technical solution is rejected due to no use of reference documents and lack of novelty, it can usually be regarded as a the basis of judging whether the utility model patent of the same technical solution conform to the authorization condition, and it may have a substantial impact on whether the utility model patent should obtain civil protection. Nevertheless, if the invention patent application of the same technical solution is rejected due to being deemed to lack inventive steps, then it should appropriately consider the difference in inventiveness requirements between the invention patent and the utility model patent and make different treatments. Generally, if an invention patent application of the same technical solution does not significantly exceed the examination standard of the utility models patent authorization conditions when being identified lack of inventive-step. For example, if the examination standards for authorization condition of invention patent application are not obviously different from that of utility model patent in technical field and the number of reference documents, then the examination conclusion of the invention patent application can be used as the basis for judging whether the utility model patent of the same technical solution conforms to the authorization condition, and it may also have a substantial effect on whether the utility model patent should obtain civil protection. Therefore, in this case, there is no the situation in which a technical solution that cannot be granted protection for invention patent right may be authorized protection for a utility model patent right due to the difference in the inventive step requirements of the invention and utility model patents. In addition, the patent right evaluation report issued by the CNIPA also shows that the validity of the patent right involved is unstable. In the lawsuit for infringement of a utility model patent right, if the utility model patent on which the patentee claims rights protection is highly likely to belong to a technical solution that should not be authorized, then it does not belong to the “legitimate rights and interests” protected by the patent law either, it should not be protected. Considering the above mentioned circumstances overall, the patent involved does not belong to the "legitimate rights and interests" protected by the Patent Law. Therefore, the plaintiff’s claims based on claims 1-5 of the patent involved should all be rejected.

From The Intellectual Property Court of the Supreme People’s Court

July 26th, 2021