Recently, our firm won the first instance of an administrative litigation case for invalidation of an invention patent, in which it is ruled that the invention patent should be comp...
Introduction In the chemical field, it is difficult to seek invalidation of a patent claiming to have achieved unexpected technical effect. This case provides a strategy for success...
Linda Liu & Partners Successfully Invalidated “Beauty Roller” Design Patent on behalf of MTG Co., Ltd.
Guide: MTG has filed an invalidation request for the Chinese design patent imitating MTG's ReFa beauty roller and won the invalidation finally.
Case brief: The petitioner filed an invalidation request for the design patent of the patentee Guo, of which the patent number is 201230491066.7, and the title is "beauty roller (Y-shaped with curved handle)". Our firm was entrusted to handle the related invalidation procedure.
The Patent Reexamination Board of CNIPA decided in favor of us and asserted that the overall outline, size ratio and positional relationship of the constituent parts of the beauty roller have a significant influence on the overall vision; the design patents of the petitioner and the respondent present similar overall visual effects with their specific shape designs of the main components such as the roller head and handle, while the differences in the other parts are subtle and do not have significant impact on the overall visual effect. All rights of the design of the involved beauty roller were declared invalid.
The invalidation decision of the Patent Reexamination Board was upheld after the first and second instance.
Highlights:
The involved patentee Guo believed that (1) the two involved products had different curvatures of the handle side; (2) the handle of evidence 1 had a ridgeline on the side face while the involved patent did not have a ridgeline on handle surface; (3) the handle end of the involved patent was a closed taper, while that of evidence 1 was not; (4) the shapes of the roller heads were different. Guo claimed that, the involved patent was completely different from and not similar to the evidence, and had obvious differences from the evidence. The patentee also claimed that he had developed the Y-shape massager product as early as 2010 and had applied for a series of patents.
In fact, Guo’s product was modified based on Refa the beauty roller of MTG. Not only the related products were sold, but multiple patents are applied for the products.
After the Patent Reexamination Board made the invalidation decision, Guo filed an administrative lawsuit before the Beijing Intellectual Property Court. The first instance was concluded on November 3, 2017 that the accused decision made by the Patent Reexamination Board had sufficient main evidences, applied to laws and regulations correctly, gone through legal procedures and come to appropriate conclusion, and thus, Guo’s claim was rejected. Guo was not satisfied with and refused to accept the first-instance judgment and lodged an appeal before the Beijing Higher People's Court. On February 20, 2019, the Beijing Higher People's Court rejected the appeal and upheld the original judgment on the grounds that the assertion of Guo lacks factual and legal basis.
It is quite clear that the behavior such as Guo’s malicious patent application would not be supported by the Patent Reexamination Board, the Intellectual Property Court and the Supreme People’s Court.
