Abstract:

Guangzhou Intellectual Property Court, as the only specialized court in China with six permanent technical investigators, has been studying and improving the technical investigation officer system and has explored a specialized model for Guangzhou Intellectual Property Court, which is referred to as “Guangzhi Model” with a team of permanent technical investigators, part-time technical investigators, technical consulting experts and technical consultants.

In recent years, the number of patent infringement cases handled by courts has been increasing, and the participation of technical investigators is increasingly needed to assist judges in identifying technical facts. Guangzhou Intellectual Property Court, as the only specialized court in China with six permanent technical investigators, has been studying and improving the technical investigation officer system and has explored a specialized model for Guangzhou Intellectual Property Court, which is referred to as “Guangzhi Model” with a team of permanent technical investigators, part-time technical investigators, technical consulting experts and technical consultants.[1] The court has held two national technical investigation officer system seminars in 2017 and 2020, technical investigation case handling process is increasingly standardized, and some case handling experience and skills are summarized.

Determination of technical investigation content

According to a court survey, 99% of the surveyed judges believe that the technical opinions submitted by technical investigators are of high use value [2], so the author believes that the content of technical investigation should be strictly regulated, at least there should be "three restrictions".

First of all, according to Article 2 of the Several Provisions of the Supreme People's Court on Technical Investigators' Participation in Legal Proceedings of Intellectual Property Cases, technical investigators are trial supporting personnel. The position of technical investigators as technical assistants to judges has been increasingly recognized by the industry [3]. Therefore, the initiation of technical investigation opinions should come from the designation of the court or the judge, and technical investigators cannot take the initiative to intervene in the case to give their own opinions, that is, the restriction to the initiation.

Secondly, after the judge makes an application for technical investigation needs, the content of the required technical investigation should be specified in the application form, which can come from the claims of both the plaintiff and the defendant, or can be the technical facts that the judge thinks need to be identified after reading the file. Therefore, the technical investigation opinion should be limited to the content issued by the judge in the application form, that is, the restriction to the content.

Third, the basis of technical investigation opinions should be limited to the materials provided by the original defendant and the site investigation, in-court comparison of the information obtained. Technical investigators should not take the initiative to search for existing technology, expand the scope of relevant information, that is, the restriction to the scope. This is essentially the embodiment of the principle of debate, different from the active and comprehensive search of prior art in patent examination and authorization, but more similar to the process of patent invalidation and confirmation.

Types of Technical Investigation Opinions

In patent infringement cases, the defendant's technology-related defenses are mainly divided into three types: not falling into the scope of patent protection (I don't have it), claiming prior art (others have it) and filing invalidation (you shouldn't have it). The defendant may raise one, two or three of the above three defenses. For the above three defenses, since the trial function of invalidation is in the Reexamination and Invalidation Department of the Patent Office, the technical investigation opinions are aimed at the other two. There are two materials useful for the drafting of technical investigation opinions for reference. The first is that according to Articles 56 and 57 of the Detailed Rules for the Implementation of the Patent Law of the People's Republic of China, if the patent in question is a design or utility model, the people's court may request the patentee to provide the assessment report of the patent. Although the assessment report has no legal effect, since the design and utility model patents are authorized without substantive examination, the reassessment report is equivalent to a further assessment of the stability of the patent right, which has a critical reference role for technical investigation. Secondly, suppose the party submits a request for invalidation and has made a decision on it. In that case, the invalidation decision should be provided together to facilitate the technical investigator to more accurately grasp the patent's validity and the scope of protection.

Process of technical investigation

After receiving the request for technical consultation, the Technical Investigation Office of Guangzhou Intellectual Property Court adopts an individual responsibility system. If the technical investigator considers it necessary, they can convene two other technical investigators for discussion. When encountering technical difficulties, they can ask the examiner of the Patent Examination Cooperation Guangdong Center of the Patent Office for technical consultation. If it is a major and difficult case, they can also ask technical experts from the technical expert pool for guidance to assist in identifying technical facts.

Generally speaking, if A represents the alleged infringing product (referred to as the defendant’s product), B represents the patent involved in the case claimed by the plaintiff (referred to as the plaintiff’s patent), and C referred to as the prior art, the overall process of the technical investigation case is shown in Figure 1 (Note: the red part is the act of the court, and the blue part is the act of the patent office).

                                   Figure 1 Flow chart of the technical investigation case

It can be seen that, although the court completes the judicial trial, the invalidation trial of the patent right is made by the Reexamination and Invalidation Department of the Patent Office. This defense method is essentially a counterclaim in a civil lawsuit. Its conclusion on the validity of the patent has an essential impact on the outcome of the judicial trial. According to the Measures for the Administration of the Prioritized Examination of Patents of the CNIPA (Order No. 76), the People's Court can make its own request for prioritized examination of invalidation proceedings to enhance trial efficiency

Technical investigation case handling ideas

The relationship between the defendant's product A, the plaintiff's patent B and the prior art C, for visual display, Figure 2 adopts a circle area diagram, in which A is a specific product, the area tends to be close to the point and cannot be divided again; B is the scope of patent protection, the area is limited; C is the prior art, the area is the largest. The principles are as follows:

The relationship between the defendant's product A, the plaintiff's patent B and the prior art C, for visual display, Figure 2 adopts a circle area diagram, in which A is a specific product, the area tends to be close to the point and cannot be divided again; B is the scope of patent protection, the area is limited; C is the prior art, the area is the largest. The principles are as follows:

1. If A∩B﹦A, the defendant's product falls into the scope of patent protection;

2. If A∩C﹦A, the defendant claims that the prior art defense is established;

3. If B∩C﹦B, all patents are invalid;

4. If 0﹤B∩C﹤B, the overlapping part of the patent is invalid.

On this basis, it can be divided into three categories of nine types, as shown in Figure 2.

Figure 2 The relationship between the defendant's product A, the plaintiff's patent B and the prior art C

The alleged infringing product does not fall into the scope of patent protection, that is, A∩B=0

Relationship 1: A∩B﹦0, B∩C﹦0, A∩C﹦0. The right of B is stable, but A is not related to B, nor does it belong to C. In fact, it can also obtain the patent right, which is called "the advanced sue the other advanced".

Relationship 2: A∩B﹦0, B∩C﹦0, A∩C﹦A. The right of B is stable, but A is not related to B and belongs to C, which is called "the advanced sue the lag behind".

Relationship 3: A∩B﹦0, B∩C﹦B, A∩C﹦0. B is at risk of being invalidated, but A is not related to B and does not belong to C. In fact, it is possible to obtain patent rights, which is called "the lag behind sue the advanced".

Relationship 4: A∩B﹦0, B∩C﹦B, A∩C﹦A. B is at risk of being invalidated, but A is not related to B and belongs to C. This is called "the lag behind sue the other lag behind".

Relationship 5: A∩B﹦0, 0﹤B∩C﹤B, A∩C﹦A. There is a risk that B will be partially invalidated, but A is not related to B and belongs to prior art C, which is called "the semi-advanced sue the lag behind", which is transformed into relationship 2 "the advanced sue the lag behind" after invalidation.

For these five situations, the defendant will generally adopt the defense method of claim not falling into, when technical investigation opinion mainly focuses on comparing the technical features of the defendant’s product A and the plaintiff’s patent B. It should be noted that there is a possibility that the defendant does not know the technology, but instead fall in and take other ways to defend, which requires the technical investigator's "discerning eye" to identify the technical facts ex officio through the comparison of technical features and assist the judge in making a judgment of not falling in.

The alleged infringing product falls into the scope of patent protection, but the prior art defense can be made, that is, A∩B﹦A, and A∩C﹦A

Relationship 6: A∩B﹦A, B∩C﹦B, A∩C﹦A. B has the risk of being invalidated, and A falls into the scope of patent protection, and also belongs to C, which is called "the lag behind sue the infringed".

Relationship 7: A∩B﹦A, 0﹤B∩C﹤B, A∩C﹦A. B has the risk of being partially invalidated, A falls into the scope of patent protection, also belongs to C, but does not fall into the scope of protection of the invalidated patent, which is called "the semi-advanced sue the infringed", which is transformed into relationship 2 "the advanced sue the lag behind" after invalidation. For example, if independent claim 1 is invalidated and dependent claim 2 remains valid, A falls into the scope of claim 1 but not 2.

For these two cases, the defendant will generally recognize the fall in and assert the prior art defense as well as the invalidation, and the technical investigation opinion will mainly focus on the comparison of technical features between the defendant's product A and prior art C.

The alleged infringing product falls into the scope of patent protection, and no prior art defense is allowed, that is, A∩B﹦A, and A∩C﹦0

Relationship 8: A∩B﹦A, B∩C﹦0, A∩C﹦0. The right of B is stable, A falls into the scope of patent protection and does not belong to C. This is called "the advanced sue the infringed", which is the most typical patent infringement.

Relationship 9: A∩B﹦A, 0﹤B∩C﹤B, A∩C﹦0. B has the risk of being partially invalidated, A falls into the scope of patent protection, does not belong to C, and also falls into the scope of protection of the patent after being invalidated, which is called "semi-advanced sue the infringed". After invalidation, it is transformed into relationship 8 "the advanced sue the infringed". For example, the independent claim 1 of the patent is invalidated and the dependent claim 2 remains valid, while the defendant's product happens to fall into the scope of protection of claim 2.

For these two cases, since the defendant's product A has fallen into the scope of protection of the plaintiff's patent B, the prior art defense cannot be established, so the defendant may "be desperate", neither recognizing the fall into, but also claiming the prior art defense and invalidation, such the technical investigation opinion should not only compare the technical features of the defendant's product A and the plaintiff's patent B, but also compare the technical features of the defendant's product A and the prior art C.

According to the above logical relationship, it is not difficult to draw conclusions on the above nine relationships, as shown in Table 1.

Table 1 List of the relationship between the defendant's product A, the plaintiff's patent B, and the prior art C

Techniques for writing technical investigation opinions  

In judicial practice, the defendant's first line of defense often claims not to fall into. If it does, retreat to the second line of defense, claiming prior art defense or invalidation. Therefore, this article does not discuss the situation in which the defendant does not actually fall into but the defendant agrees to fall, that is, voluntarily giving up the first line of defense. The writing of the most common technical investigation opinions can be divided into the following situations:

Claim not to fall into

In the case that the defendant did not claim or only claimed not to fall into the situation, the technical investigation opinions mainly focus on the technical comparison between A and B, and there is no shortcut in the written report. In the field inspection or court comparison stage, the technical investigator should ask the parties to fully express their views and debate on the correspondence of technical features to help identify technical facts (relationship 1-5).

Admitted fall into + prior art defense

If the defendant admits to falling into the scope of protection of the patent and raises a prior art defense and does not file a request for invalidation, it can be discussed in the following three cases.

The first one, invention patent. For invention patents, you can inquire about the notice of substantive examination through the patent examination information inquiry system of China and many countries http://cpquery.cnipa.gov.cn. The prior art defense materials submitted by the defendant may have already been used in the substantive examination, then the part of the technical investigation opinion on the prior art defense can refer to the content of the notice.

The second, design or utility model patents. The court may require the plaintiff to submit a patent assessment report for design or utility model patents. The prior art defense materials submitted by the defendant may have been used in the patent assessment report, so the part of the technical investigation opinion on prior art defense may refer to the content of its assessment report.

The third, utility model patent and the invention patent was applied for on the same day. A relatively special case for utility model patents is that if the cover states that the same invention also applied for a patent on the same day, you can check the notice of substantive examination of the patent. The prior technical materials submitted by the defendant have likely been used for the substantive examination of the invention patent. The technical investigation opinion regarding the defense of the prior art can refer to the content of the notice of the invention patent's substantive examination.

Admitted fall into + prior art defense + invalidation

In some cases with the high subject matter, invalidation is a common strategy of the defendant to "pull the plug", i.e., I recognize that I fall into your protection scope, but your scope of protection should not exist. At this point, B falls into A, that is, B and A partially or entirely overlap. The defendant will likely raise the prior art defense and the prior art used in the invalidation is the same, also divided into the following three situations.

First, all patents are invalidated. At this point, the defendant's prior art defense is established, and the part of the technical investigation opinion on the prior art defense can be directly quoted from the invalidation decision. In fact, after the patent is invalidated as not existing since the beginning, the patentee has lacked the right basis, i.e., relationship 6.

Second, the patent is partially invalidated. According to the Interpretation of the Supreme People's Court on Several Issues concerning the Application of Law in the Trial of Patent Infringement Dispute Cases issued in 2018, since the invalidated claims are often independent claims whose features will be carried in their entirety to the dependent claims citing them. Therefore, it is necessary to compare the features of the invalidated claims. As the claims are invalidated, this part of the feature comparison must have been completed in the invalidation decision. The opinion on the prior art defense can refer to the content of the commentary on the invalidated claims in the invalidation decision, i.e., relation 7 or 9. If the fall in claim has been invalidated, that is, relationship 7, partially invalidated is equivalent to relationship 2. If the fall in claim is still valid, that is relationship 9, and partially invalidated is equivalent to relationship 8.

The third is that the patent is maintained valid. Under the premise that the patent is maintained valid in its entirety, the prior art defense is not established, and the opinion on the prior art defense can be directly quoted from the invalidation decision. This situation is often a typical infringement, that is., relationship 8.

Conclusion

Chinese General Secretary Xi Jinping stressed during the 25th collective study of the Political Bureau of the 19th Central Committee that it is important to improve the protection system from examination and authorization, administrative enforcement and judicial protection, to strengthen the coordination and cooperation, to build a large protection work pattern, and to promote the unification of administrative enforcement standards and judicial adjudication standards for intellectual property rights. Therefore, it is of great significance to clarify the ideas of handling intellectual property technical investigation cases, fully utilize the opinions and information in patent examination and authorization to improve technical investigation opinions, and deal with the contradiction between a large number of technical investigation cases and little personnel, so as to unify review and confirmation of rights and judicial judgment standards and improve the quality and efficiency of intellectual property trials.

References

[1] Zou Xiangqiu. ‘Theoretical Design and Realistic Confusion of the Technical Investigation Officer System’. Intellectual Property, 2021(4), p45-57.

[2] Yi Jun, Li Qing, Wen Guoyong, et al. ‘Research on the mechanism of disclosure of technical investigation opinions in China's intellectual property trials’. Electronic intellectual property, 2019(6), p78-87.

[3] Zheng Zhizhu and Lin Yihao. ‘On the role of technical investigators in intellectual property litigation’. Intellectual Property, 2018(8), p8.