A. Case Information:
- Plaintiff//Invalidation Petitioner: Chenghai Dongli Hudong Agricultural Equipments Factory
- Patentee: LIN Chunhao
- Agency of Patentee: Beijing Genuineways Intellectual Property Agency Co., Ltd.
- Courts/Bodies with Jurisdiction: Beijing Higher People's Court/Beijing First Intermediate People's Court/ Patent Reexamination Board
B. Result of Processing / Judgment:
The patent right is maintained.
C. Analysis of the Case:
The case involved the design patent No. 03318422.4 titled "Handle for Screwdriver (core 2)" which was published by the State Intellectual Property Office on September 10, 2003, and whose patentee is LIN Chunhao.
We, acting on behalf of LIN Chunhao, participated in the invalidation response and the follow-up proceedings of Higher People’s Court. The issues of this case are mainly in two aspects: 1. the problem of determination of design of product made of transparent material; 2. the determination of conflicting applications.
Our attorneys replied focusing on the following two major issues:
1. The application problem of Article 9 of the Patent Law and Rule 13.1 of the Implementing Regulations of the Patent Law; Article 9 the Patent Law cannot be applied on the same applicant of different applications. In addition, due to the territorialism of patent, Article 9 of the Patent Law and Rule 13.1 of the Implementing Regulations of the Patent Law cannot be applied to patents examined or granted by the foreign patent office.
2. On product using transparent materials: the shape, pattern and color within the transparent part that can be observed by the human visual shall be regarded as part of the design. The present patent uses transparent materials and one can see that the handle is embedded in a color decorative belt whose sectional is triangular, obviously different from the reference document.
Finally the panel admitted our point of view and maintained the validity of the patent. The petitioner, dissatisfied with the decision, initiated an administrative proceeding, and after procedures of the first instance and the second instance, the patent is still maintained.
D. Comments by Attorney:
The above case can help us review the following legal issues:
1. For the problem of determination of conflicting applications, before the revision of the law on 2009.10.1, the determination of conflicting applications was always based on other’s earlier application, which meant that the earlier application of one’s own does not constitute a conflicting application.
2. Concerning the determination of double-patenting: it refers to that for any identical creation-invention, only one patent right can be granted. Herein the expression of a patent is based on the same countries; different countries cannot constitute double-patenting. That is the major reason why the petitioner failed to invalidate the patent in dispute on the ground of double-patenting based on the US patent.
3. On determination of contents of design of product made of transparent material: the shape, pattern and color within the transparent part that can be observed by the human visual shall be regarded as part of the design
- Attachments:
- 1. Examination decision of the Patent Reexamination Board of SIPO on invalidation request of the case. PDF
- 2. Judgment of First Instance by Beijing First Intermediate People's Court of this case. PDF
- 3. Judgment of Second Instance by Beijing Higher People's Court of the case. PDF
