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The qualification of the subject applying for a patent invalidation on the ground of a conflict with the legal rights obtained earlier by others shall
2018.03.23
Basic Information
Court of trial: The Supreme People's Court
Case No.: (2017) Zuigaofa Xing Shen No.8622
Case type: Civil
Retrial applicant (the third party in the first instance, the appellant in the second instance): Staples Inc.
Agent ad litem: Liu Jun, lawyer of Guangdong Junzhiquan Law Firm
Respondent (the plaintiff in the first instance, the appellee in the second instance): Luo
The Defendant in the first instance: Patent Reexamination Board of the State Intellectual Property Office
Case Description
The Respondent Luo in this case is the patentee of the design patent No. ZL200830102005.0 (entitled "paper shredder (HC0802)") (hereinafter referred to as "the Patent"). The applicant for the retrial of this case, Staples Inc. (hereinafter referred to as "Staples"), filed an invalidation claim with the Patent Reexamination Board on May 25, 2012 on the ground that the Patent conflicted with its prior copyright. Afterwards, Staples assigned the copyright to a third party on November 20, 2012. On April 2, 2013, the Patent was declared totally invalid by the Patent Reexamination Board.
Luo refused to accept the decision made by the Patent Reexamination Board. Therefore, on the ground that Staples was not a prior right holder and was not qualified to file an invalidation request. The court of first instance revoked the patent invalidation decision made by the Reexamination Board on the ground that all the evidence submitted by Staples in the invalidation application and litigation stages is insufficient to prove its prior copyright, nor can it prove that the Patent and the copyright obtained earlier are conflicted.
In 2016, Staples filed an appeal with the Beijing Higher People's Court, which dismissed the appeal and upheld the original judgment.
In 2017, Staples applied to the Supreme People's Court for a retrial.
Result of Judgment
The Supreme People's Court recently ruled that:
1. The Beijing Higher People's Court shall retry this case;
2. The execution of the original judgment shall be suspended during the retrial.
Focus of Dispute
1. The qualification of the subject who applying for a patent invalidation on the ground that there is a conflict between the design patent rights and the legal rights obtained earlier by others;
2. When the administrative procedure for invalidation is initiated, will the qualification of the requester be deprived of due to changes in the legal relationship of the object of litigation?
3. Whether the fact-finding in the second instance judgment that Staples is not the copyright owner or a stakeholder of the work involved is correct.
Reasons for Judgment
(1) As for the Focus of Dispute 1, the Supreme People's Court analyzed from the aspects of the nature of the object being regulated, the purpose of legislation, the effect of legal order, etc., and held that: "When the provisions of Article 45 of the Patent Law concerning the defined subject scope of a requester apply to an invalidation claim submitted due to a conflict between the design patent rights and the legal rights obtained earlier by others, the qualification of the invalidation requester will be restricted due to the nature of the object being regulated, the purpose of legislation, the effect of the legal order, etc. In principle, only the holder of prior legal rights and the stakeholders thereof can claim the relevant rights".
(2) As for the Focus of Dispute 2, the Supreme People's Court held that the subject qualification of the requester shall not be deprived of due to subsequent changes in the legal relationship which is involved in the object of litigation. The reasons are as follows:
1. The Constant Party Doctrine applies to civil litigations
According to Article 249 (1) of the Interpretation of the Supreme People's Court on the Application of the Civil Procedure Law of the People's Republic of China, "Where the disputed civil rights and obligations are assigned in a lawsuit, the subject qualifications and litigation status of the parties shall not be affected. The legally effective judgment or ruling made by the people's court shall be binding upon the assignee". This article embodies the Constant Party Doctrine in civil litigations.
2. The Constant Party Doctrine is of reference value for administrative litigations
The significance of the Constant Party Doctrine is to ensure the stability of litigation procedures and avoid litigation uncertainty and waste of judicial resources. At the same time, after the legal relationship which is involved in the object of litigation changes, the interests of the new right holder can be protected through procedural designs.
3. The Constant Party Doctrine is also of reference value for the administrative procedure of patent invalidation
The administrative procedure of patent invalidation is a quasi-judicial procedure as both parties can participate in it and the Patent Reexamination Board can impartially adjudicate the dispute in principle. The Constant Party Doctrine is also of reference value to the procedure.
(3) As for the Focus of Dispute 3, the Supreme People's Court held that Staples, as the requester who has made an invalidation request on the ground of a conflict of rights, shall not be deprived of its subject qualification due to an assignment of rights.
In this case, it is assumed that Staples was indeed the copyright owner or a stakeholder of the work involved when it made the request for invalidation. Even if it subsequently assigned the copyright of the work to a person not involved in the case, its subject qualification to make an invalidation request on the ground of a conflict of rights shall not be deprived of.
Attached: Administrative Ruling （2017）Zuigaofa Xingshen No. 8622
http://wenshu.court.gov.cn/content/content?DocID=acb8c30e-30ca-4610-995e-a87a01114a4e
Court of trial: The Supreme People's Court
Case No.: (2017) Zuigaofa Xing Shen No.8622
Case type: Civil
Retrial applicant (the third party in the first instance, the appellant in the second instance): Staples Inc.
Agent ad litem: Liu Jun, lawyer of Guangdong Junzhiquan Law Firm
Respondent (the plaintiff in the first instance, the appellee in the second instance): Luo
The Defendant in the first instance: Patent Reexamination Board of the State Intellectual Property Office
Case Description
The Respondent Luo in this case is the patentee of the design patent No. ZL200830102005.0 (entitled "paper shredder (HC0802)") (hereinafter referred to as "the Patent"). The applicant for the retrial of this case, Staples Inc. (hereinafter referred to as "Staples"), filed an invalidation claim with the Patent Reexamination Board on May 25, 2012 on the ground that the Patent conflicted with its prior copyright. Afterwards, Staples assigned the copyright to a third party on November 20, 2012. On April 2, 2013, the Patent was declared totally invalid by the Patent Reexamination Board.
Luo refused to accept the decision made by the Patent Reexamination Board. Therefore, on the ground that Staples was not a prior right holder and was not qualified to file an invalidation request. The court of first instance revoked the patent invalidation decision made by the Reexamination Board on the ground that all the evidence submitted by Staples in the invalidation application and litigation stages is insufficient to prove its prior copyright, nor can it prove that the Patent and the copyright obtained earlier are conflicted.
In 2016, Staples filed an appeal with the Beijing Higher People's Court, which dismissed the appeal and upheld the original judgment.
In 2017, Staples applied to the Supreme People's Court for a retrial.
The Supreme People's Court recently ruled that:
1. The Beijing Higher People's Court shall retry this case;
2. The execution of the original judgment shall be suspended during the retrial.
Focus of Dispute
1. The qualification of the subject who applying for a patent invalidation on the ground that there is a conflict between the design patent rights and the legal rights obtained earlier by others;
2. When the administrative procedure for invalidation is initiated, will the qualification of the requester be deprived of due to changes in the legal relationship of the object of litigation?
3. Whether the fact-finding in the second instance judgment that Staples is not the copyright owner or a stakeholder of the work involved is correct.
Reasons for Judgment
(1) As for the Focus of Dispute 1, the Supreme People's Court analyzed from the aspects of the nature of the object being regulated, the purpose of legislation, the effect of legal order, etc., and held that: "When the provisions of Article 45 of the Patent Law concerning the defined subject scope of a requester apply to an invalidation claim submitted due to a conflict between the design patent rights and the legal rights obtained earlier by others, the qualification of the invalidation requester will be restricted due to the nature of the object being regulated, the purpose of legislation, the effect of the legal order, etc. In principle, only the holder of prior legal rights and the stakeholders thereof can claim the relevant rights".
(2) As for the Focus of Dispute 2, the Supreme People's Court held that the subject qualification of the requester shall not be deprived of due to subsequent changes in the legal relationship which is involved in the object of litigation. The reasons are as follows:
1. The Constant Party Doctrine applies to civil litigations
According to Article 249 (1) of the Interpretation of the Supreme People's Court on the Application of the Civil Procedure Law of the People's Republic of China, "Where the disputed civil rights and obligations are assigned in a lawsuit, the subject qualifications and litigation status of the parties shall not be affected. The legally effective judgment or ruling made by the people's court shall be binding upon the assignee". This article embodies the Constant Party Doctrine in civil litigations.
2. The Constant Party Doctrine is of reference value for administrative litigations
The significance of the Constant Party Doctrine is to ensure the stability of litigation procedures and avoid litigation uncertainty and waste of judicial resources. At the same time, after the legal relationship which is involved in the object of litigation changes, the interests of the new right holder can be protected through procedural designs.
3. The Constant Party Doctrine is also of reference value for the administrative procedure of patent invalidation
The administrative procedure of patent invalidation is a quasi-judicial procedure as both parties can participate in it and the Patent Reexamination Board can impartially adjudicate the dispute in principle. The Constant Party Doctrine is also of reference value to the procedure.
(3) As for the Focus of Dispute 3, the Supreme People's Court held that Staples, as the requester who has made an invalidation request on the ground of a conflict of rights, shall not be deprived of its subject qualification due to an assignment of rights.
In this case, it is assumed that Staples was indeed the copyright owner or a stakeholder of the work involved when it made the request for invalidation. Even if it subsequently assigned the copyright of the work to a person not involved in the case, its subject qualification to make an invalidation request on the ground of a conflict of rights shall not be deprived of.
Attached: Administrative Ruling （2017）Zuigaofa Xingshen No. 8622
http://wenshu.court.gov.cn/content/content?DocID=acb8c30e-30ca-4610-995e-a87a01114a4e
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