Sanyou client: Shanghai XX Company
Trial organ: China National Intellectual Property Administration
Trial result: declare all patent rights of the other party invalid
Case facts
Shanghai XX company (invalidation petitioner/our client) and its competitor in Beijing (patent right holder) are both manufacturers and sellers of a family planning product. In 2021, a company in Beijing filed a lawsuit with the Beijing Intellectual Property Court, claiming that the Shanghai XX company had infringed its design patent right, and requested our client to stop infringing and compensate their economic losses of RMB 3 million.
After receiving the documents forwarded by the court, the Shanghai XX company consulted Sanyou for solution. After analysis, Sanyou’s legal team believed that the other company's patent was not valid, and therefore suggested our client request invalidation of the other company's patent.
The Shanghai XX company then entrusted Sanyou to file a request for invalidation on its behalf. A large amount of evidence was submitted in the invalidation procedure, effectively proving that the shape, pattern, color, etc. of the packaging box required for protection by the other company's design patent were publicly disclosed before the application date. The patented design does not have significant distinctiveness compared to existing design or a combination of existing designs.
After hearing, CNIPA finally adopted Sanyou’s opinion and declared that the patent rights of the other company were all invalid. The other company did not appeal against the invalidation examination decision, which has taken effect.
Due to the loss of the right basis, the other company subsequently withdrew its appeal in Beijing Intellectual Property Court.
Typical significance
For design patents, because CNIPA does not conduct substantive examination at the filing stage, some competitors may apply for existing designs as patents.
In this case, the other company not only sued our client for infringement based on their patent, but also made a big fuss about their lawsuit against our client on social media platforms, which attracted some netizens' attention and condemnation on our clients, and to some extent, affected the goodwill of our clients.
After investigation, we found that the packaging boxes with the same or similar shapes, patterns and colors of the patents involved already existed in the existing design, and practitioners in several industries (including our client) had used the packaging boxes with the same or similar designs before the other company flied the patent application. And thus there was no patent infringement act (as alleged by the other company) to speak of. Sanyou successfully invalidated the patent of the other company and indirectly safeguarded the client’s goodwill.
It is widely recommended that business practitioners not only focus on developing their own products and applying for their own patents, but also pay appropriate attention to relevant situations of competitors, especially to patent applications.
In the meantime, it is also recommended to conduct routine monitoring on intellectual property rights held by competitors, such as patents, and give priority to filing request for invalidation of patents when necessary, to avoid being accused of unnecessary patent infringement and potential impact on rights and interests.
