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Guide for Appealing Against Patent Infringement Complaints

 

Introduction: If you receive a patent infringement complaint and you believe that your product does not infringe any patent, how should you appeal? This article will show you:

1) Types and definition of patents

2) Punishments for patent infringement

 

3) How to search for the complainant's patent

4) How to appeal against alleged patent infringement

I. Types and definition of patents (We take China, the United States, and Europe as examples here, but the classification of patents may vary across different countries/regions.)

Article 2 of the Patent Law of the People’s Republic of China:

For the purposes of this Law, invention-creations mean inventions, utility models, and designs.

Inventions mean new technical solutions proposed for a product, a process, or the improvement thereof.

Utility models mean new technical solutions proposed for the shape and structure of a product, or the combination thereof, which are fit for practical use.

Designs mean, with respect to a product, new designs of the shape, pattern, or the combination thereof, or the combination of the color with shape and pattern, which are rich in an aesthetic appeal and are fit for industrial application.

Article 64 of the Patent Law of the People Republic of China:

The scope of protection of patent rights for an invention or a utility model shall be based on the contents of the claims; the specification and drawings may be used to explain the contents of the claims.   The scope of protection of patent rights for a design shall be based on the design of the products illustrated in the pictures or photographs; the brief explanation of the design may be used to explain the design of the products illustrated in the pictures or photographs.

Europe: Commonly-seen European IPR rights include designs and patents. European patents are granted for inventions in accordance with the European Patent Convention. Once granted, a European patent has the same effect and is subject to the same conditions as a national patent in the designated contracting states. Common European designs include registered community designs and non-registered community design. The scope of the protection shall be confined to the designs. The right owners can also apply for a patent under the national law of an EU member state. Once granted, the patent is only protected in such member state.

United States: In the United States, the main categories of patents are: (1) utility patents, which are patents that cover any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof (There are strict statutory requirements in the United States for granting a patent for an invention); (2) design patents that protect the novel and aesthetic or ornamental designs of a functional item, including layout designs. The United States also grants plant patents under the patent law.

Explanation: Common types of patents include invention, utility model, and design patents (some countries do not have utility models). The scope of protection of a patent for an invention or a utility model shall be confined to what is claimed. The alleged product may fall within the scope of protection of a patent if it contains technical features identical or equivalent to those described in the claim of the patent. The scope of protection of a design patent shall be confined to the design of the product as shown in the drawings or pictures. Where a design identical or similar to the patented design is incorporated in the product of the same or similar category of the product incorporating the patented design, the alleged design shall be deemed to have fallen within the protection scope of the design patent. 

 

II. Punishments for patent infringement

Please note that intellectual property right violations are prohibited on the platform. Where someone complains that your product has infringed their patent right:

If you are a seller on Alibaba.com, refer to Intellectual Property Rules of Alibaba.com:

https://rule.alibaba.com/rule/detail/11000393.htm?spm=a271m.8038972.0.0.1de86d82myvghT

1. Serious violations: The punishments depend on the severity of violations. Punishments and penalty points are accumulative. Serious violations may lead to the closure of stores.

2. Patent infringement: Unauthorized listings and sales of products that infringe others' patents (including design, utility model, or invention patents), and other improper use of others' patents without permission.

In case of any product violation and infringing act, the platform has the right to impose punishments, including but not limited to: (1). deleting products/information; (2). restricting the listings of products; (3). temporarily freezing the account; and (4). closing the account. For sellers whose accounts are closed, the platform has the right to prevent them from signing up again.

If you believe your product does not infringe any patent and want to appeal:

On Alibaba.com, please raise the appeal at

 https://appeal.alibaba.com/complaint/seller/appeal.htm

 

III. How to search for the complainant's patent

1) You can search for the complainant's patent in the following ways:

Chinese patents: http://cpquery.cnipa.gov.cn/

 (Chinese/multinational patent inquiry system)

U.S. patents: http://patft.uspto.gov/netahtml/PTO/search-bool.html 

(U.S. patent and trademark authority)

European patents: https://euipo.europa.eu/eSearch/(Designs)

https://www.epo.org/searching-for-patents.html (Patents)

2) In some cases, you can assess and download the complainant's IPR rights on the Appeal page

3) How to check the application date/priority date of the complainant's patent?

a. Download the complaint's intellectual property materials on the Appeal page and check the application date of the patent as shown above.

b. Search on the website of China National Intellectual Property Administration: http://cpquery.cnipa.gov.cn/ (Chinese/multinational patent inquiry system)

Priority date: Priority date is a special concept under the patent law. Under Article 29 of the Patent Law of People’s Republic of China,

Where an applicant, within twelve months from the date of first-filed patent application for an invention or utility model in a foreign country or within six months from the date of the first-filed patent application for a design in a foreign country, also files a patent application for the same subject in China, he/it may enjoy priority in accordance with the agreement entered into between the foreign country and China or the international treaty participated by both the foreign country and China or under the principle of mutual recognition of priority.   Where an applicant, within twelve months from the date of the first submission in China of an application for a patent for invention or utility model, or within six months from the date of the first submission in China of an application for a patent for design, also files an application for a patent for the same subject with the patent administrative department under the State Council, he/it may enjoy priority.

If a patent has a priority date, the materials should prove that the prior use occurred prior to the priority date. If you cannot identify the priority date on the patent license, you can check it on the patent inquiry website.

 

IV: How to raise an appeal and provide evidence?

Formal proof of purchase

 

Direct procurement/authorization

1)If you claim that the alleged product is purchased from the patentee, please provide documents about the transaction made in recent six months before the complaint, such as contract or invoice, or purchase orders or receipts for overseas sellers. The contract or invoice must be signed or sealed by the two parties, and the purchased quantity must be appropriate (more than 20 pcs). The product purchased must be consistent with the alleged product (for example, product model and pictures). Do not use the invoice of any other product, which will result in a waste of appeal opportunities.

2)If you claim you have obtained a patent license from the patentee, please provide the patent licensing agreement or related proof, which must be signed or sealed by the two parties, and ensure that the license is still valid when the complaint is raised. The patent number involved in the licensing agreement must be consistent with that of the complainant's patent.

 

purchased from or authorized by an authorized supplier of the trademark owner

 

You need to provide relevant purchase documents issued by an agent (such as contract and invoice) and the agent's procurement document or authorization letter issued by the patentee. The authorization letter must be signed or sealed by the patentee. Ensure the seal is legible, the authorization is authentic, and the procurement document and invoice are legible and traceable.

Claim difference

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If you believe that the overall appearance of your product is different from the complainant's design patent or your product does not fall under the patent’s protection scope, you can appeal based on the difference.

How to claim the differences?

Design patent infringement complaint — You can claim that the design of the alleged product is significantly different from the complainant's patented design.

Invention/utility model patent infringement complaint — You can claim that the alleged product does not contain any technical features identical or equivalent to those described in the claim of the patent, and therefore does not fall into the scope of protection of the patent. You need to provide a specific comparison description or comparison table.

Example: You can submit a comparison table and description similar to the following table to claim the differences, which must include: (1) the prior design (the design most similar to yours, if applicable); (2) the complainant's patent; and (3) your product involved, and explain why they are different. If you cannot find a prior design, you can only illustrate by providing the six-sided comparisons between the complainant’s patent and your product.  

 

Note: What if my appeal is not accepted even I have claimed differences? 

The appeal against a design patent infringement complaint requires overall visual comparisons. Partial, immaterial and differences in the material cannot be used as proof of non-infringement. Such subtle differences have no significant impact on the visual effects of the overall design of a product.

In the case of an invention/utility model patent infringement complaint, if your product contains one or more technical features identical or equivalent to those described in the claim of the patent, it may fall under the scope of protection of the patent.

Prior rights

prior order on Alibaba platforms or prior inquiry on alibaba.com

If you believe the complainant's patent has already been publicized, you can provide materials to prove that the alleged product has been sold before the complainant applied for a patent. If the complainant’s patent has a priority date, you need to provide materials to prove that the alleged product has been sold before the priority date of the patent.

The proof of prior use includes relevant public information that proves the complainant's patented technology or design (for example, prior sales order or that the product style, design, or plan was publicized) has been disclosed before the application date or the priority date of the patent (if any).

If you assert prior use based on online sales order, please provide the prior sales orders on any platform of Alibaba Group, such as Taobao, Tmall, and 1688.com (provide the order number and screenshot). The screenshot should contain the relevant order number, order time, and product information.

If you assert prior offline sales, please provide the sales documents dated earlier than the patent application date, including but not limited to, the sales contract (with product pictures), invoice, and shipment document.

Please note that the style, design, or plan of the product in the order must be complete and verifiable and the order/contract must be placed earlier than the "application date" of the complainant's patent, or earlier than the priority date of the complainant’s patent (if any).

 

IP Right has been previously exposed or disclosed to the public

For the proof of public disclosure on other platforms such as Weibo, major video sites, newspapers, magazines, and books (provide links and screenshot of related content), the platform will evaluate as appropriate.

For example: Mr. Zhang opened a Taobao store selling water guns and other toys. One day, he received a design patent infringement complaint. He found a prior video on a public video site. If he wants to raise an appeal with the proof of public disclosure, what should he do?

Answer: He needs to verify that the video was published earlier than the application date/priority date of the complainant's patent and the water gun shown in the video must be the same as the alleged product.

 

 

 

 

 

 

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