Counterclaim in the most popular patent lawsuit

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Counterclaim in patent lawsuit refers to that in the judicial process, the plaintiff and the defendant have changed their roles in another lawsuit when the defendant tells the original to the court. In a patent infringement lawsuit, the "infringer" invalidates the patent right counterclaim of the patentee or resorts to the patentee as the defendant of another case, which is a counterclaim in a patent lawsuit. Properly apply counterclaim, which is also a way for the defendant to use legal means to protect his rights and interests

According to incomplete statistics, at present, there are about 15000 patent dispute cases in China that are being tried and closed by people's courts at all levels. 80% of these cases are patent infringement cases. Is the elongation after fracture and hardness relevant at this time? In the trial practice of these patent infringement cases, at the early stage of the trial procedure in the general court, many defendants have tried to "counterclaim" the invalidation of the plaintiff's patent right, that is, to initiate the procedure of "invalidating the patent right" to the Patent Reexamination Board of the patent office to request the invalidation of the plaintiff's patent right in order to obtain a trial result in favor of themselves. The main reason for this phenomenon is that China's patent law grants patent rights to utility model patents and design patents without substantive examination. Such patent disputes account for the majority of all patent disputes. Another reason is that it has something to do with the quality of examination and approval of invention patents. In the patent dispute cases that have been tried, there have been many patent invalidation cases, which is also one of the reasons for many patent infringers to file counterclaims

correctly understanding and mastering the counterclaim procedure in patent litigation for counterclaim is not only beneficial to "infringers", but also of practical significance for enterprises to correctly understand and use China's patent law to protect their legitimate rights and interests

1 counterclaim patent right invalidation

"infringer" starts the procedure of "declaring patent right invalid" against the patent right of the plaintiff patentee, hoping that the expected effect will be beneficial to him. However, the patent law has strict legal provisions on the specific reasons for declaring patent right invalid. That is, the "infringer" will not be accepted to declare the patent invalid for reasons other than the patent law, and the reasons for invalidation can only be limited to the reasons provided by the law

Article 64 of the detailed rules for the implementation of the Chinese patent law provides in detail the reasons for declaring the patent right invalid

in recent years, one of the most common reasons for "infringers" is to prove that the patented technical solution that has obtained the patent right does not meet any of the "novelty, creativity and practicality" specified in Article 22 of the patent law or does not comply with the relevant provisions of Article 23 of the patent law

for example, in april1999, the South African bluepie company sued a factory in Tangshan, Hebei Province for infringing the patent right and technical secrets of its impact roller, demanding huge compensation. The defendant immediately found the evidence that the same patented technical scheme in Australia had been disclosed before the date of application of the patent. On the ground that the plaintiff's "patent" did not meet the provisions on the grant of patent rights in China's patent law, the counterclaim against the plaintiff's "patent" was invalid, and finally a successful counterclaim was made in the patent lawsuit

On June 29th, 1991, Guangdong Heshan construction machinery factory applied to the China Patent Office for an invention patent named "tower elevator for construction site". The patent right was granted on August 23rd, 1995. In the process of handling patent dispute cases, a machinery company in Guangzhou and a construction machinery factory in Hainan, Guangdong declared the patent invalid on the ground that the patent did not conform to the "three properties" (i.e. novelty, creativity and practicality) stipulated in the patent law. The Patent Reexamination Board made decision No. 1485 declaring the patent right invalid. In order to protect its legitimate rights and interests, Heshan construction machinery factory refused to accept the decision of the Patent Reexamination Board and organized professionals to put forward professional details before the court of appeal. After the trial of the Beijing No. 1 Intermediate People's court, the maintenance department regretted the original decision of the reexamination board at the beginning of its use. The factory appealed again to the Beijing Higher People's court, and finally won the lawsuit. That is, the patent has the "three properties" specified in the patent law. The Beijing Higher People's court revoked the trial result of the Beijing first intermediate people's court and the Patent Reexamination Board's decision No. 1485 on invalidation

the small diesel engine produced by Jiangsu power engine factory in Yancheng City, Jiangsu Province has a number of patented technologies. Due to the large sales volume and wide sales range of its products in the national market, many domestic diesel engine manufacturers imitate the products of the patented technologies of the factory. To this end, the factory started legal proceedings against more than a dozen major "infringers" all over the country to recover patent royalties. When claiming against an internal combustion engine plant in Changzhou, an internal combustion engine plant in Changzhou and another interested plant in southern Jiangsu counterclaimed to the Patent Reexamination Board that the patent of the patentee did not have the "three properties" specified in the patent law, and the patent right of Jiangsu power engine plant was invalid. After hearing the case, the Patent Reexamination Board made a decision to maintain the full validity of the patent rights of Jiangsu power plant. At present, Jiangsu power machine factory has reached a patent license agreement with 7 infringing manufacturers, and has obtained a patent royalty of 3.33 million yuan. The patent disputes of other enterprises are also being handled

by analyzing and studying the details of the above three cases, it is learned that instrument systems with different functions can be formed by compiling different utilization software. When the counterclaim patent right is invalid, the enterprise must hire a lawyer with relevant professional background (such as construction machinery, construction machinery and internal combustion engine involved in this case) and who knows how to apply patent law to perform the counterclaim procedure. Because when it comes to the specific products and product structure of the profession, professionals will have a deeper understanding of the "Three Natures" stipulated in the patent law, and will put forward very important counterclaim reasons and evidence. As ordinary lawyers often fail to do this, they hire non professionals to handle the counterclaim, so the possibility of success is small

in the process of counterclaim, we must adhere to our own opinions and actively collect evidence. At present, patent lawsuits are tried by the intellectual property court. As patent lawsuits have appeared more in recent years, they are a "new thing" in China. The unified standard for determining the "benchmark for determining patent infringement" in China has not yet been issued. In march2003, the third trial chamber of the Supreme People's court began to establish a topic for research and solution. The topic progressed to november2003, and the discussion draft of "judicial interpretation of the benchmark for determining patent infringement" was published (a total of 71 articles). In addition, the judicial level and trial quality of the personnel handling patent dispute cases in the local courts need to be improved, and the final results of the trials of courts at all levels in various regions may be different. For example, there was a patent dispute case in China. When it was brought to the courts of 15 cities where the infringement occurred, it resulted in 8 wins and 7 losses

according to the actual situation of the author's involvement in patent lawsuits, the judicial level of the domestic upper court is higher than that of the lower court, especially in the trial of patent infringement cases. It is better to insist on the counterclaim until the court of second instance is finally adjudicated. In this way, although the litigation time is prolonged, more human and material resources are paid. However, the possibility of obtaining a fair trial result is greater

other legal reasons for the invalidation of the counterclaim patent right are as follows: the patent technical scheme makes it impossible for the personnel in the technical field to implement it, that is, the patent specification does not clearly explain the patent; The scope of protection claimed in the patent claims is not clear; The scope of protection in the patent claims is not based on the Patent Description; A patent is an invention creation subject to repeated authorization; The claims of the invention or utility model lack the necessary technical features; The applicant for an invention creation is not the first person to apply for the invention creation; An invention creation is a content which is not patentable as stipulated in Article 25 of the patent law. For other more detailed provisions, please refer to the "patent law", "detailed rules for the implementation of the patent law" and the "guidelines for examination" published by the patent office

2 prove that you are legally using a patent

China's patent law has made specific provisions on the legal use of a patent that does not pay a patent fee and is not considered an infringement

article 63 of the Chinese patent law provides for four specific provisions that are not deemed to infringe the patent right, which are illustrated as follows:

(1) the patentee uses, offers to sell or sells a patented product manufactured, imported, or manufactured or imported with the permission of the patentee, or a product obtained directly in accordance with the patented method after it is sold

(2) having manufactured the same product before the date of patent application, using the same method, or having made necessary preparations for manufacturing and use, and only continuing to manufacture and use within the original scope

this article refers to the "principle of first use right". For example, factory a produces air-conditioned cabs for loaders and supplies them to the south. Factory B applied to the Patent Office for the patent of "loader air conditioning cab", and factory B won the patent authorization in the future. Since factory a started production before the date when factory B applied to the Patent Office for a patent, it may not be regarded as infringement, and it may continue to produce on the original production scale and sell to the south. Of course, factory a may also counterclaim that the patent right of factory B is invalid if the patent of factory B does not meet the relevant provisions of "the patent must have novelty" stipulated in the patent law

(3) a foreign means of transport passing through China's territorial land, territorial waters and airspace temporarily uses the relevant patent in its devices and equipment for the needs of the means of transport in accordance with the agreements signed between the country to which it belongs and China or the international treaties to which it is a party, or in accordance with the principle of reciprocity

this is the "patent customs reciprocity principle". For example, the patented technology of a Chinese invention patentee's "pneumatic conveying device" can be used for rapid cabin unloading. If a foreign company's cargo ship imitates the patented product of the "pneumatic conveying device" for unloading in a Chinese port, it can be regarded as temporary transit use, not as infringement of the patent right

(4) the patent is specially used for scientific research and experiment if the machine is in standby mode

One of the main purposes of the patent system is to promote the development of technology. The development of new technology is generally based on the innovation of existing technology. In order to improve the patented technology that is still in the patent protection period, copying and using the existing patented technology is a legitimate means of scientific research and experiment. For example, factory a imitates a patented product "new shield machine cutter head" applied by a foreign company in China, and uses the developed product for construction test verification. It plans to localize and further improve its technology. As long as factory a does not sell the product and provide paid construction services for the product, no matter how many experimental prototypes are copied, they are deemed to belong to the scope of scientific research and testing, and are not deemed to infringe the patent rights of foreign companies

under the circumstances that the above patent law allows the use of other people's patents and does not consider it an infringement, when an enterprise reasonably uses the patented technology according to law, it will sometimes be pushed to court by the patentee, and the enterprise can produce evidence to prove its claim of legitimate use of the patent right. If the plaintiff

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