1Response strategy

1. Clarify the subject, verify the territory, and determine the statute of limitations for litigation

① Does the plaintiff have the qualification to be the subject of litigation

② Does the people's court being sued have jurisdiction

③ Has it exceeded the statute of limitations for litigation

2. Request for invalidation or suspension

① During the defense period, collect evidence and submit a request for invalidation to the review committee

Reason for request

request scope

Evidence Use

② Timely request for suspension

3. Other strategies

① Proactively seeking reconciliation

② Delaying time

③ Defense

④ Counterclaim

twoNon infringement defense

1. Exhaustion of rights

① DefinitionAny person in the public who purchases a patented product that has been legally sold (either by the patentee themselves or by their licensor) shall have the right to dispose of the product freely. Thereafter, no matter how the purchaser uses the product, or further resells, sells, or donates the product, it shall not constitute an infringement of the patent right.

② (Article 69 (1) of the Patent Law) If a patented product or a product directly obtained by a patented method is sold by the patentee or a unit or individual authorized by them, and the product is used, offered for sale, sold, or imported, it shall not be deemed as an infringement of the patent right;

2. First use right

① (Article 69 (2) of the Patent Law) If the same product has been manufactured, the same method has been used, or necessary preparations for manufacturing and use have been made before the date of patent application, and only the original scope of manufacturing and use continues, it shall not be deemed to infringe the patent right.

② Consider the following factors:

• Necessary preparations have been made for manufacturing and use

Continue to manufacture and use within the original scope

• Other restrictions

3. Temporary Transit

Article 69 (3) of the Patent Law states that foreign transport vehicles temporarily passing through China's territorial land, waters, or airspace shall not be deemed to infringe on patent rights if they use relevant patents in their devices and equipment for their own needs in accordance with agreements signed between their country of origin and China or international treaties jointly participated in, or based on the principle of reciprocity.

4. Research and experimentation

① (Article 69 (4) of the Patent Law) The use of relevant patents exclusively for scientific research and experimentation;

② The meaning of "using patents specifically for scientific research and experimentation":

③ The use of relevant patents exclusively for scientific research and experimentation "refers to the manufacture, use of patented products or method patents, as well as the use of products directly obtained through patented methods, in scientific research and experiments conducted specifically for the purpose of researching, verifying, and improving patents, excluding other scientific research and experiments conducted through patents.

5. Drugs or medical devices used for administrative approval

① Article 69 (5) of the New Patent Law states that the manufacture, use, or import of patented drugs or medical devices for the purpose of providing information required for administrative approval, as well as the manufacture or import of patented drugs or medical devices specifically for them, shall not be deemed as an infringement of patent rights.

② Purpose:

In order to implement the technology immediately after the expiration of the patent validity period, the manufacture, use, or import of patented drugs or medical devices for clinical trials during the process of applying for drug registration shall not be considered as infringement of patent rights.

6. Existing technology defense

① In a patent infringement dispute, if the accused infringer has evidence to prove that the technology or design implemented belongs to existing technology or existing design, it does not constitute infringement of the patent right.

② Definition of existing technology:Existing technology refers to the technology known to the public both domestically and internationally prior to the application date.

③ The development of existing technology defenses:Prior art defense, also known as public knowledge defense or prior art defense, had no written legal basis for the principle of prior art defense before the amendment of the Patent Law. In judicial practice, it is generally believed that if the defense of the accused infringer is not established, the patent right in question can only be declared invalid through an invalidation procedure to exempt them from liability for patent infringement. However, patent invalidation procedures and administrative litigation procedures in the first and second trials will consume a lot of time. Even if the accused infringer wins the lawsuit, they will suffer significant losses in terms of time, funds, market, and reputation. Therefore, in judicial practice, the people's court has drawn on foreign experience and gradually developed the existing technology defense into a defense principle in patent infringement disputes through some precedents and theoretical interpretations.

④ Comparison object of existing technology defenses

⑤ Compare standards

(1) Three perspectives:

A. The existing technology defense can only be a single technical solution, such as an embodiment recorded in a patent document, a product or method that has been publicly disclosed domestically or internationally before the application date or priority date, that is, the novelty standard.

B. The existing technology defense may include a simple combination of a single technical solution and common knowledge, that is, using standards of obvious similarity or standards that are clearly not creative.

C. In addition to the above situations, the existing technology defense also includes the obvious combination of multiple technical solutions, that is, the use of creative judgment criteria.

(2) Notice of the High People's Court on Several Issues Concerning Fully Utilizing the Function of Intellectual Property Trial to Promote the Great Development and Prosperity of Socialist Culture and the Autonomous and Coordinated Development of the Economy: An obvious combination of an existing technical solution or design recorded in a comparative literature with common knowledge or customary design.

(3) Does the existing technology defense include conflicting applications

(4) Notice of the High People's Court on Several Issues Concerning Fully Utilizing the Trial Function of Intellectual Property Rights to Promote the Great Development and Prosperity of Socialist Culture and the Autonomous and Coordinated Development of the Economy: If the implementation of a conflicting technical solution or design in an application claims that it does not constitute patent infringement, it may be judged based on the examination and judgment standards of existing technology or design defenses.

3、 (Partial) Defense of exemption from liability for compensation

Article 70 of the Patent Law states that if a patent infringing product is used, promised for sale, or sold for the purpose of production and operation without the knowledge that it was manufactured and sold without the permission of the patent owner, and it can be proven that the product is of legal origin, no liability for compensation shall be borne.

4、 Contract defense

1. The so-called contract defense,It refers to the defendant in a patent infringement lawsuit who raises a defense of infringement on the grounds that the technology implemented was legally obtained from a third party through a technology transfer contract. This defense is not a defense against patent infringement, but only a defense against assuming infringement liability.

2. Legal Basis

① Article 63 (2) of the Patent Law: Those who use or sell patented products or products obtained directly through patented methods for production and business purposes without knowing that they were manufactured and sold without the permission of the patentee, and can prove the legal source of their products, shall not be liable for compensation. (The meaning and burden of proof of "not knowing", manufacturing and import are exempt from liability)

② Article 353 of the Contract Law: If the assignee infringes upon the legitimate rights and interests of others by implementing a patent or using technical secrets in accordance with the agreement, the assignor shall bear the responsibility, except as otherwise agreed by the parties.