Docket number of the case in the first instance: 195, first instance (初), civil case (民), (2020) IP Court of Chengdu Intermediate People’s Court (川01)
[Prefatory Syllabus]
The utility model patent right shall go into effect as of the date of announcement. After the utility model patent is granted, any act of producing or selling a patented product for production or business purposes without the authorization of the patentee constitutes an infringement. However, any act of third parties implementing the patented technology after the application date and before the authorization announcement date for the utility model patent is not prohibited by the Patent Law, and doesn’t constitute an infringement. After the utility model patent is granted, the act of implementing the technology that continues without the authorization of the patentee shall constitute an infringement upon the patent right. A product manufactured and sold after the application date and before the authorization date for the utility model patent doesn’t belong to the infringing product. The patentee has no right to prohibit the subsequent sales or use of the non-infringing product after the authorization announcement date.
[Basic Facts]
Plaintiff: Chengdu Andi Optical-Technology Co., Ltd. (Hereinafter: Andi Optical-Technology)
Defendant: Qingdao Yuanjing Outdoor Supplies Co., Ltd. (Hereinafter: Yuanjing), Shiyan Huisicheng Special Purpose Vehicle Co., Ltd. (Hereinafter: Huisicheng), and Sichuan Juxincheng Information Technology Co., Ltd. (Hereinafter: Juxincheng)
Andi Optical-Technology is the patentee of a utility model patent named "A Folding Structure, Multi-Purpose Bed and Recreational Vehicle", which still remains in effect. Andi Optical-Technology purchased from Juxincheng a "Huisicheng" brand caravan jointly manufactured by Yuanjing and Huisicheng on December 30, 2018. Holding that the parts of the caravan fall within the scope of protection of the patent involved and constitute an infringement upon its utility model patent right, Andi Optical-Technology filed a lawsuit with the Intermediate People's Court of Chengdu, Sichuan Province, requesting Yuanjing, Huisicheng and Juxincheng to stop infringement and jointly compensate it for economic losses of RMB 95,000 and reasonable expenses of RMB 5,000.
The Intermediate People's Court of Chengdu, Sichuan Province ruled that the alleged infringing product is listed into the scope of protection of the patent right involved in the same way. However, if the alleged infringing product in this case is manufactured and sold after the application date and before the authorization date for the patent involved, then it doesn’t belong to the infringing product. Andi Optical-Technology has no right to claim liability for tort for the product, nor to prohibit subsequent sales and use of the non-infringing product. However, Yuanjing and Huisicheng continue to manufacture the alleged infringing product together after the authorization announcement date, constituting an infringement. Moreover, as there is no evidence to prove that Juxincheng has continued to distribute the alleged infringing product after the authorization announcement date, Juxincheng doesn’t constitute an infringement.
Based on the above grounds, the court ruled in first instance that: Yuanjing and Huisicheng shall immediately stop manufacturing products that fall within the scope of protection of the utility model patent involved, and jointly compensate Andi Optical-Technology for an economic loss of RMB 15,000. Neither of the two sides filed an appeal against the first-instance judgment. The judgment of has gone into effect.
[Typical Significance]
This case separates and identifies the acts of third parties that implement the patented technology after the application date and before the authorization announcement date for the utility model patent without the authorization of the patentee, from the acts of continuing to implement the patented technology after the authorization announcement date for the utility model patent, and makes it clear that the utility model patent is not subject to temporary protection. However, any act of third parties that implement the patented technology after the application date and before the authorization announcement date for the utility model patent is not prohibited by the Patent Law. The patentee has no right to claim that such acts of third parties at that time node constitute an infringement, nor to claim infringement on subsequent sales, use and other acts. However, if the act of third parties that implement the patented technology continues after the utility model patent is granted without the authorization of the patentee, such act shall constitute an infringement.
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