1. Foreward
Since 2008, the number of patent reexamination and invalidation cases in China has greatly increased, and reached more than 20, 000 in 2012, which is nearly 5 times the number in 2008. The Patent Reexamination Board (hereinafter referred to as “the Board”) has carefully selected top 10 important cases from the reexamination and invalidation cases in 2012, including those that have drawn extensive attention from the society, such as the patent invalidation and administrative litigation case concerning “Mercury-Free Button Battery”, the patent invalidation case concerning “Easily-Cleaning Multifunctional Soybean Milk Maker”, the patent invalidation case concerning “Shaver”, and the patent invalidation case concerning “Vehicle” of Neoplan Bus GmbH (hereinafter referred to as “Neoplan”). Such cases involve infringement lawsuits with huge object amounts, or have exerted/will exert significant influence on the relevant industries, or relate to major and difficult legal issues.
This article discusses the patent invalidation case concerning “Vehicle” of Neoplan from three aspects: ① foreign evidence collection and admissibility; ② whether photos of the vehicle model can be used to invalidate the design patent for the real vehicle; ③ the conditions for non-prejudicial disclosures.
2. Case Summary
The patent invalidation case was caused by an infringement dispute between Neoplan and Yancheng Zhongwei Passenger Coach Co., Ltd. (hereinafter referred to as “Zhongwei”). After Neoplan initiated an infringement litigation against Zhongwei, Zhongwei filed many invalidation requests against the Neoplan patent and finally invalidated the Neoplan patent. The following is the invalidation process.
The design patent “vehicle” owned by Neoplan has the Application Number “200430088722.4”, the filing date “September 23, 2004” and the priority date “September 20, 2004”.
In 2006, Neoplan discovered that three A9-type passenger coaches manufactured and sold by Chinese companies including Zhongwei probably infringed the Neoplan patent. As a result, Neoplan sued Zhongwei at the Beijing No. 1 Intermediate People’s Court on September 19, 2006, accusing Zhongwei of infringing the Neoplan patent.
On October 26, 2006, Zhongwei requested the Board to invalidate the Neoplan patent on the grounds that the Neoplan patent does not comply with Article 23 and Article 9 of the Chinese Patent Law. The Board issued the No. 10362 invalidation decision on August 6, 2007 to maintain the validity of the Neoplan patent.
On May 25, 2007, Zhongwei requested the Board to invalidate the Neoplan patent on the grounds that the Neoplan patent does not comply with Article 23 of the Chinese Patent Law. The Board issued the No. 11155 invalidation decision on March 6, 2008 to maintain the validity of the Neoplan patent.
On January 20, 2009, the Intellectual Property Tribunal of the Beijing No. 1 Intermediate People’s Court made the first-instance judgment and ruled that Neoplan won the lawsuit. The court required the three defendants to pay a compensation of RMB 21.16 million together, including economic losses of RMB 20 million and reasonable litigation costs of RMB 1.16 million, and to immediately stop selling the passenger coaches concerned and manufacturing the infringing passenger coaches ((2006) No. 12804 First-Instance Civil Judgment of the No. 1 Intermediate People’s Court).
Dissatisfied with the first-instance judgment, Zhongwei and Zhongda Industrial Group appealed to the Beijing Higher People’s Court, which then accepted this case on March 23, 2009.
On July 21, 2009, Zhongwei again filed an invalidation request with the Board against the Neoplan patent. On February 25, 2010, the Board issued the No. 14484 invalidation decision to completely invalidate the Neoplan patent.
Dissatisfied with the invalidation decision made by the Board, Neoplan initiated an administrative litigation at the Beijing No. 1 Intermediate People’s Court and asked the court to revoke the Board’s decision. On February 27, 2012, the Beijing No. 1 Intermediate People’s Court made a judgment to uphold the Board’s decision ((2010) No. 2148 First-Instance Administrative Judgment of the No. 1 Intermediate People’s Court).
Dissatisfied with the administrative judgment, Neoplan appealed to the Beijing Higher People’s Court. On July 11, 2012, the Beijing Higher People’s Court rejected the appeal and affirmed the original judgment ((2012) No. 911 Final Administrative Judgment of the Higher People’s Court).
On August 10, 2012, the Beijing Higher People’s Court revoked the first-instance civil judgment ((2006) No. 12804 First-Instance Civil Judgment of the No. 1 Intermediate People’s Court) and rejected Neoplan’s request.
From then on, the Neoplan patent which is the basis of Neoplan’s accusation has been invalidated, and the claimed patent right no longer exists, so Neoplan’s lawsuit claims cannot be supported. In other words, the three defendants in the civil litigation do not need to pay a compensation of RMB 21.16 million any more.
Zhongwei has filed many invalidation requests against the Neoplan patent. Among the 3 invalidation decisions that have been searched out, the earlier 2 invalidation decisions maintained the validity of the Neoplan patent, for the prior designs submitted by Zhongwei are not identical with or similar to the Neoplan patent, or the submitted foreign evidence was not notarized, or the adminicular evidence was submitted after the expiration of the time limit for providing evidence.
The following section will introduce the No. 14484 invalidation decision made by the Board in detail.
3. Invalidation Process and Analysis
3.1 Neoplan Patent
Neoplan obtained a design patent (Application Number “200430088722.4”) according to law. The following are views of this design patent:
3.2 Legal Basis
Pursuant to Article 23 of the Chinese Patent Law, any design for which patent right may be granted must not be identical with and similar to any design which, before the date of filing, has been publicly disclosed in publications in the country or abroad or has been publicly used in the country.
3.3 Allegations of Both Parties
Allegation of the Party Requesting Invalidation:
The provided evidences are authentic and valid, and comply with the laws. They support each other to form a complete chain of evidences, which sufficiently proves that the design in the Neoplan patent has been publicly disclosed in German publications including Bus Aktuell and Bus Magazine before the priority date, so the Neoplan patent does not comply with Article 23 of the Chinese Patent Law and should be invalidated.
Allegation of the Patentee:
Neither Bus Aktuell nor Bus Magazine (Issue 9, 2004) has the publication date and cannot prove the facts related to this case;
Both Bus Aktuell and Bus Magazine (Issue 9, 2004) disclose photos of passenger coach models. Passenger coach models and passenger coaches fall into different product categories, and are certainly not identical designs; besides, the photos are disclosed without the authorization and consent of the patentee.
The patentee also provided the witness testimony of the manager and permanent delegate from the Leipzig headquarter of the German National Library as Counterevidence 9 to prove that the date of delivery of giftbooks to the German National Library is not equivalent to the publication date or the date of public use for media.
Further, the patentee asserted that the date when the counterevidence reached the library is not the date of disclosure to the public.
3.4 Comments on Evidences and Facts
In the invalidation decision, the collegial panel makes the following comments on the evidences:
1) Publication Time of the Publications
① Bus Aktuell
Evidence 1: No. H0676/2009 Notarial Deed by a notary in Munich, Germany, which proves that the library of the German Museum has collected Bus Aktuell (Issue 9, 2004).
Evidence 6: For proving that the publication time of Bus Aktuell (Issue 9, 2004) is September 17, 2004 at the latest. This evidence includes three documents: 1. No. F.360/2009 Notarial Deed by a German notary, which notarizes the testimony of a German lawyer who asked the Hauser + Mende companies about the time-to-market of Bus Aktuell (Issue 9, 2004), and to which the reply of the Hauser + Mende companies (with seals of the companies and signatures of the principals) is attached; the reply indicates that Bus Aktuell (Issue 9, 2004) was put on shelf in the bookstores on September 17, 2004 and was supplied to the subscribers at the same day according to the computer records; 2. No. 218-a/2009 Notarial Deed by a notary in
Stuttgart, Germany, which proves that the notary went to the Hauser + Mende companies to ask about the delivery time of Bus Aktuell (Issue 9, 2004), and to which a copy of the computer screen of the Hauser + Mende companies is attached to show that the delivery time is September 17, 2004; 3. Registration certificates of the Hauser + Mende companies signed by a judicial clerk responsible for company registration at the Mannheim District Court to prove that the two companies are legitimate corporate entities. All the above three documents have been authenticated by the Chinese embassy in Germany.
In the collegial panel’s opinion, Evidence 1 and Evidence 6 can prove that Bus Aktuell (Issue 9, 2004) published in Germany was disclosed to the public on September 17, 2004, which is earlier than the priority date (September 20, 2004) of the Neoplan patent, and thus is a publication publicly disclosed before the filing date of the Neoplan patent under Article 23 of the Chinese Patent Law.
② Bus Magazine
Evidence 4 alleges that the publication date of Bus Magazine (Issue 9, 2004) is September 6, 2004. Evidence 4 includes a notarized testimony of the director from the Leipzig office of the German National Library and a copy of relevant pages of Bus Magazine (Issue 9, 2004). The testimony asserts that Bus Magazine (Issue 9, 2004) was registered at the library on September 6, 2004 with the seal of the German National Library affixed.
Counterevidence 9 submitted by the patentee is a notarized testimony of the person who gave the testimony of Evidence 4. Based on the fact that Bus Magazine (Issue 9, 2004) was registered at the library on September 6, 2004, Counterevidence 9 asserts that the date of delivery to the library is not equivalent to the publication date or the date of public use for media.
In the collegial panel’s opinion, Evidence 4 and Counterevidence 9 can prove that Bus Magazine (Issue 9, 2004) was registered at the library on September 6, 2004. The publisher provides Bus Magazine to the German National Library for the public to read, and the German National Library itself also belongs to the public, so the date of receipt of Bus Magazine by the German National Library is the time of public acquisition. Accordingly, it can be deemed that Bus Magazine (Issue 9, 2004) was disclosed to the public on September 6, 2004, which is earlier than the priority date of the Neoplan patent, and thus is a publication disclosed before the filing date of the Neoplan patent under Article 23 of the Chinese Patent Law.
2) Disclosure without the Authorization and Consent of the Patentee
The patentee submitted the notarized
Counterevidences 1 to 7 to allege that “when the passenger coach model was presented at a press conference held on August 24, 2004, the attending media was informed that the taken photos should not be published before September 23, 2004.”
However, some witnesses listed in Counterevidences 1 to 7 did not participate in the press conference, and the testimony of those present at the press conference does not mention that someone at the press conference required the exhibited product not to be published before a certain date; one witness is an employee of the patentee and has a conflict of interest in this case, so his testimony was inadmissible with no other evidence provided. In the collegial panel’s opinion, the counterevidences submitted by the patentee cannot support the assertion that the media journalists attending the press conference was informed that the taken photos should not be published before September 23, 2004.
Moreover,
the counterevidences of the patentee can prove that
the patentee held a press conference about an exhibited product for the purpose of recommending a new type of passenger coach to the public. Under such a circumstance, it is illogical for the patentee to require the journalists attending the press conference to keep the exhibited vehicle type as a secret. Further, the patentee clearly knew the form and purpose of the press conference as well as the professional characteristics of the attendants, so the patentee should have at least submitted, upon filing the design application, the declaration on non-prejudicial disclosure and the certification within two months from the date of knowing that another person has disclosed the content of the design application (i.e., within two months after the publication of Bus Magazine) in accordance with the SIPO’s
Guidelines for Patent Examination. Nonetheless, the patentee failed to submit the declaration and the certification within the specified time limit, and thus cannot enjoy the grace period concerning novelty under Article 24.3 of the Chinese Patent Law.
3.5 Identical and Similar Designs
The patentee asserted that Bus Aktuell (Issue 9, 2004) publishes the taken photos of the model, and used Counterevidences 1 to 8 to prove its assertion. However, the first article on the first page of Bus Aktuell mentions “safety means”, “EPS and brake assist system (BAS)” and so on. The information presented in this article shows a new passenger coach to the readers rather than just introduce the model based on the photos of the model. Although the patentee asserted that the taken photos relate to the passenger coach model, they actually show the design of the passenger coach. The collegial panel at last concluded that the photos in Bus Aktuell (Issue 9, 2004) disclose the design of the passenger coach.
Based on the above facts, the collegial panel ruled that Bus Aktuell (Issue 9, 2004) and the Neoplan patent relate to similar designs, and invalidated the Neoplan patent.
4. Comments on this Patent Invalidation Case
The main controversies of this patent invalidation case are as follows:
(1) How to acquire foreign evidence and what are the standards for evaluating evidence admissibility?
(2) Do the photos of the passenger coach model published by the patentee show the design of the passenger coach?
(3) Is the ground “disclosure without authorization and consent of the patentee (non-prejudicial disclosure)” acceptable?
We make the following comments on this patent invalidation case:
(1) The evidences formed abroad should be notarized and authenticated.
Foreign evidence should be notarized by a notary organ in that country and authenticated by the Chinese embassy in that country or go through the certification procedures as prescribed in relevant agreements established between China and that country.
(2) The applicant should disclose the relevant technique and design after filing a patent application.
(3) In case of disclosure before the filing date, if the patent application complies with the provision on non-prejudicial disclosure, that is, if an invention-creation for which a patent is applied for was first exhibited at
an international exhibition sponsored or
recognized by the Chinese government, or was first made public at a prescribed academic or technological meeting, or was disclosed by another person without the consent of the applicant) within six months before the filing date (or the priority date if the priority is claimed), it is suggested to submit the corresponding certifications in time, so as to meet the provision on non-prejudicial disclosure.
Unlike Europe, the provision on non-prejudicial disclosure in China is only limited to the above three circumstances. Other disclosures before the filing date, even those by the applicant itself or himself, will not be recognized, and once such disclosures are used by other persons as evidences to file an invalidation request, the patent will probably be invalidated.
Moreover, in China, the examination on non-prejudicial disclosure is very strict. For example, if an invention-creation was first exhibited at an international exhibition sponsored or recognized by the Chinese government, the sponsor is required to provide a certification, on which the date/place/title of the exhibition as well as the exhibition date/form/content of the invention-creation should be indicated, with an official seal of the sponsor affixed. In practice, the official seal of the sponsor is very difficult to acquire.
(3) Although the photos published in prior publications relate to the passenger coach model, if the design of the passenger coach is indeed presented, they can still be used as evidence to destroy the patentability of the Neoplan patent.
The patentee used Counterevidences 1 to 7 to allege that the press conference held on August 24, 2004 showed a passenger coach model, which is different from a passenger coach, so as to prove that the two cannot be compared with each other. However, these evidences meanwhile prove that the patentee held a press conference about an exhibited product for the purpose of recommending a new type of passenger car to the public.
In addition, the first article on the first page of Bus Aktuell mentions “safety means”, “EPS and brake assist system (BAS)” and so on. The information presented in this article shows a new passenger coach to the readers rather than just introduce the model based on the photos of the model. Although the patentee asserted that the taken photos relate to the passenger coach model, they actually show the design of the passenger coach. The collegial panel at last concluded that the photos in Bus Aktuell (Issue 9, 2004) disclose the design of the passenger coach.
(4) It should be especially noted that the submitted counterevidence should not be favorable to the party requesting invalidation.
In this patent invalidation case, the patentee submitted Counterevidence 9 to try to prove that the date of delivery of giftbooks to the German National Library is not equivalent to the publication date or the date of public use for media, but the patentee did not realize that the German National Library itself also belongs to the public, so the time of receipt of Bus Magazine by the German National Library is the time of public acquisition. That is to say, once Bus Magazine enters the warehouse, it can be ordered by the readers. Hence the collegial panel did not agree with the patentee. On the contrary, Counterevidence 9 further proves that the publication date of Bus Magazine is earlier than the priority date of the Neoplan patent.
(5) Invalidating the patent concerned is the most effective way to deal with an infringement lawsuit.
Upon filing an invalidation request, the party requesting invalidation should pay attention to evidence collection, guarantee authenticity, relevance and legitimacy of evidences, and ensure that all the evidences can form a complete chain of evidences.
(6) Different countries have different patent systems. Before filing a patent application in another country or region, the applicant should know local laws and inform the entrusted agent whether there is previous disclosure.
5. Conclusion
This case involves some typical legal issues, including the evidence collection in EU countries for a design patent invalidation case in China and the standards for evaluating admissibility of such a kind of evidence. For example, in order to prove that the Neoplan patent was disclosed before the filing date, Zhongwei submitted a magazine named Bus Aktuell published in Germany, hired a German lawyer to collect the magazine on-shelf time recorded on the computer of the magazine retailer, and asked a German notary to collect evidence on site at the merchandising location of the retailer and to acquire the magazine sales record. In this way, Zhongwei managed to prove that the Neoplan design was made public before the patent application for the Neoplan design was filed. The collegial panel considered the evidences as admissible and finally issued a decision to invalidate the Neoplan patent.
After introducing the No. 14484 invalidation decision, this article discusses some typical issues involved in this decision, and gives some advices on how to deal with these issues in practice. I hope that this article can be of some help to you.
