Are rights protected during the patent recovery period?

As we all know, patent protection has a time limit. Depending on the type of right, there are two types: 20 years and 10 years. To obtain continuous protection, the patent "protection fee" (I. e. annual fee) must be paid to the State Knowledge Bureau every year. However, according to statistics from Nanjing Hua Xun, the number of patents that can really pay the full annual fee in China is even less than 1% of the total.

There are roughly three reasons:

1., although China is a big patent country and the number of new applications is amazing every year, a considerable part of them have little protection value and are made up for the sake of obtaining government subsidies, high declaration and other policy rewards, which are especially found in the underdeveloped but growing areas of patents;

2. patented technology has its commercial life, some of the technology was born very novel, but the market development after a few years gradually abandoned, lost the need to continue to protect, such as the traditional low-pressure mercury lamp (fluorescent lamp), keyboard mobile phone, has been almost all more energy-saving and durable LED lights and powerful smart touch screen mobile phone instead;

3. the annual patent fee increases year by year, the higher the cost of protection. This is a deliberate design of the patent system, urging the right holders to weigh the pros and cons and contribute the patented technology as soon as possible for the benefit of mankind.

For the reasons mentioned and not mentioned above, 99% of the patent rights are terminated before the expiration of the term. Among them, except for a small part of the rights holders who voluntarily gave up donating to the society, most of them were terminated because they did not pay the protection fee halfway. Most of these non-payment are determined to die and do not intend to ask for low-value or outdated patents, and some have special circumstances, force majeure or accidentally forgot to pay the missed deadline.

The patent law has designed two layers of protection to save these still valuable patents.

1. delay period

If the patentee fails to pay the annual fee on time, or if the amount paid is insufficient, the patentee may pay the annual fee within six months from the expiration date of the annual fee, and pay a certain late fee at the same time. The amount of late fees varies from free to 25% of the full annual fee depending on the time of payment, and the later the payment, the higher the fee. Within 6 months after the expiration of this annual fee, regardless of whether the annual fee and late fee are paid in full and on time, the patent right is still in normal validity.

If the payment is not made within the six-month overdue period, then I am sorry, the patent right is terminated. Two months after the expiration of the overdue period, the State Knowledge Bureau will issue a notice of termination of the patent right (not strictly applicable in practice, usually one month after the expiration of the overdue period), stating that the patent right shall be terminated from the date of expiration of the annual fee payable. If the right holder fails to initiate the restoration procedure, the Patent Office will announce the invalidity of the patent right in the patent gazette four months after the termination notice is issued.

Restoration of 2. rights

If the obligee has a legitimate reason or encounters force majeure, resulting in the loss of his rights, he may request the restoration of his rights to the State Information Bureau within a certain period of time, usually within two months of receiving the notice of termination of the patent right. After paying sufficient fees (restoration request fees, as well as arrears of annual fees and late fees) and passing the formalities, the State Information Bureau will grant restoration of rights and issue a notice of approval of the restoration request. If the termination of the patent right has been announced, the decision to restore the right will also be announced in the patent gazette.

Confusion in 2. Practice

It can be seen that when applying for the restoration of patent rights, there will be the following two situations:

1. the State Knowledge Bureau has not issued a notice of termination of the patent right, the right holder has applied for restoration;

After the notice of termination of the 2. patent right is issued, the right holder applies for restoration.

In the first case, since the notice of termination has not been issued, the patent right has not been officially terminated, regardless of it;

In the second case, the termination notice has been issued, and before the restoration, the legal status of the patent right has been terminated on the expiration date of the annual fee payable. There is a gap between the termination date and the completion of the rights restoration procedures. If the patent right is restored in accordance with the law, will the patent right temporarily lose its protection during this gap period? Can the infringement be sanctioned?

This question can be split further:

Does the date of termination of the 1. patent right mean the date of expiration and loss of protection of the patent?

Is the date of restoration of the 2. patent right the date of the notice of restoration of the right, or is it retroactive to the date of termination of the patent right?

In practice, the notice of termination of the patent right will specify the date of termination of the patent right (the expiration date of annual fee payment), but the notice of restoration of the right only records the date of issuance, the date of the notice of termination of the patent right issued by the State Council and the date of the request for restoration made by the obligee, thus avoiding the question of when the patent right will be restored, making people a little at a loss as to how to deal with this gap.

3. sparse jurisprudence

These questions are gaps in the law and there are no official standard answers to be found. Perhaps because this situation is relatively rare, the number of judicial documents that can be retrieved is not large, most of which tend to support the establishment of infringement, but the legal state of the patent right at the time of infringement has been mentioned, no evaluation has been given, only a few cases have made a meaningful exploration of this situation. One of the courts held that the public can know by consulting the records of the patent register that although the patent right is terminated, it is still in the recovery period, so only if the right holder fails to successfully initiate the recovery procedure, the termination of the patent right is an "unrecoverable termination", and the termination of the patent will not come into effect until the announcement of the State Knowledge Bureau expires. If the right holder successfully recovers, the termination of the patent right will not take effect, and there is no gap in patent protection. There are also individual cases to the contrary that the notice of termination of the patent right issued by the State Intelligence Bureau means that the patent right will be terminated from the expiration date of the annual fee payment, and the basis of rights has been lost during this period, so there is naturally no infringement.

4. Silent Discussion Draft

In 2003, there was a discussion draft on the provisions of the Supreme Law on several issues concerning the trial of patent infringement disputes, in which Article 49 expressed opinions on whether others have the right to use when the patent right is lost and restored: "If the patent right is restored after being lost, the implementation of the patent by others during the period of loss of rights does not constitute an infringement of the patent right, but the actions of others are the continuation of the infringement before the loss of the patent right, the people's court shall still determine that it constitutes patent infringement.

During the period of the loss of the patent right, if another person starts to manufacture the same product, uses the same method, or has made the necessary preparations for manufacture and use, and continues to manufacture and use only within the original scope after the restoration of the patent right, it shall not be regarded as an infringement of the patent right, but if the perpetrator is malicious, the people's court shall still determine that it constitutes patent infringement.

A person who has the right to use it in accordance with the preceding paragraph shall not have the right to license or transfer to another person the technology or design it implements, unless it is transferred or inherited together with its enterprise as a whole."

It can be seen that the Supreme Law has considered this issue in detail, and once tended to support the existence of the gap period, but in the end it did not retain this clause in the formal judicial interpretation issued in 2009, but chose to leave it blank, which means After weighing the interests, the Supreme Law still adopted an ambiguous posture on this issue.

5. personal exploration

(Note that the following represents the author's personal opinion only.)

On the issue of the termination date of the patent right, China's patent law stipulates that the creation of the patent right shall be subject to the registration announcement, but it does not stipulate that the termination of the patent right is the same. Among the three types of termination, the expiration of the termination, the validity period of the patent right is fixed for 20 or 10 years. All three will be made public in accordance with the announcement procedure.

Official documents issued by the State Information Bureau, in the absence of special provisions for their entry into force by law, should have definite legal effect from the date of issue, which is not only the parties concerned, but also the protection of trust for the public (procedural legal documents of patents, most of which are publicly available). The subsequent announcement procedure, which is the declaration of the legal status of the patent right to the public, is a necessary post-procedure, and where the law does not provide that the announcement is an element of entry into force, the announcement is not a procedure for determining the validity of the official document that has been issued. In the case of the termination of the three patent rights, the patent law, the rules and the review guide do not provide that the effect of termination is related to the announcement, on the contrary, it clearly stipulates that the date of termination of arrears is "the date on which the annual fee shall be paid". Therefore, the validity of the patent right may be considered to terminate from that date when the State Knowledge Office has officially issued a notice of termination of the patent right with the date of termination.

Can the restoration of rights be traced back to the date of termination of the patent right? This is a more controversial issue, not only is there no provision in laws and regulations, but friends who have experience in patent agency practice know that the notice of restoration of rights with only a few words leaves people with only endless confusion.

The reason is that there is a game between the right holders and the public interest behind it. No matter whether the answer is "yes" or "no", there are advantages and disadvantages.

The pros and cons of "yes:

Infringement during the recovery period will be sanctioned, patent rights will be protected without dead ends, and malicious infringers will lose room for speculation. However, "immediate termination is not termination", the patent right is in an unstable state and may be resurrected at any time. The public's trust in the patent procedure documents and copies of the registration book will be destroyed. The obligee relies too much on the recovery procedure and fails to pay the fee in time, which leads to raise the standard of the right to check and balance; the National Knowledge Bureau will increase the burden of many procedural work, resulting in the overall efficiency of patent work being lowered.

Pros and Cons of No:

In order to avoid falling into the unfavorable situation of rights restoration, truly valuable patents will actively pay annual fees. Junk patents and valuable patents are easier to distinguish; The workload of the rights restoration procedure of the State Knowledge Bureau will be reduced, and more resources will be allocated to other affairs, which will slightly improve efficiency, but malicious infringers will be very happy. The risks and fees of annual fee management of patent agencies will be increased; there will be a gray industry that helps others "drill the gap". The patent legal status inquiry page of the State Knowledge Bureau will maintain a high traffic volume for a long time, increasing maintenance costs and the risk of collapse. The copy of the patent register is busier. There will be more disputes about the time period when infringement occurs, resulting in an increase in the workload of judicial review in patent litigation and a decrease in trial efficiency.

In addition, the increased uncertainty makes patent litigation more difficult, leading to lawyers flowing to other professional fields, including but not limited to the construction engineering field to which the breasts belong, to grab the cake, and the breasts will be unhappy.

Therefore, weighing the pros and cons, it is difficult to say which of the two is better. The first one pays more attention to the protection of patent rights, and the second one is more active in competition and more in line with the characteristics of the market. Perhaps it was that when this matter was discussed that year, China was not ready to make full strides towards a market economy. This may also be one of the reasons why the Supreme Court deleted the final conclusion of the discussion in the official interpretation.

In individual cases, lawyers have different coping strategies depending on the position of the agent. If you want the referee to support the patentee, you can try to sort out the brain hole from the following aspects:

Emphasize the difference between the termination of arrears and the importance of the announcement procedure;

Explain that the copy of the patent register sets out the legal status of the patent right in the recovery period, which shows that the public can easily understand the possibility of recovery of the patent right, thus proving that the infringement during this period is speculative and subjective malice;

The procedure for the restoration of the rights of the adjudicator can be traced back to the date of termination of the patent right. There are strict legal procedures for the establishment of the patent right. If the existence of the gap period is recognized, the "rebirth" restored after the termination of the patent right belongs to the newly established patent and should naturally conform to the corresponding legal procedures. The view that the gap period should not exist is proved by the method of attribution;

Depicts the positive impact on social effects and the negative impact of the opposite judgment on social effects.

If acting as an infringer, you can:

Emphasizes that the law clearly stipulates that the patent right shall be terminated from the date of expiration of the annual fee;

It is explained that the right holder is negligent in fulfilling the statutory obligation to pay the fee, resulting in the termination of the right, which is to blame for the act;

Persuade the adjudicator to restore the patent right from the date of issuance of the restoration notice. Many of the notices and decisions stipulated in the review guidelines are issued on the date of issuance. The right restoration notice can refer to analogy. If the restoration is traced back to the date of termination of the right, the "infringement" behavior carried out by the actor based on the trust in the legal status of the patent right disclosed at that time is adversely determined, resulting in the destruction of this trust, thus shaking the foundation of the patent system;

Depicts the positive impact on social effects and the negative impact of the opposite judgment on social effects.

Conclusion

In these disputed areas, Nanjing Huaxun U.S. patent experts believe that sometimes there is no need to pursue a definite conclusion, which is the work of scholars. Not to mention superstitious legal precedents, even if they are made by the supreme law, even if they represent absolute advantages, as long as there are no guiding cases, they are only for reference. In this legal blind area, it is precisely the time to highlight the role of lawyers. Lawyers naturally have a stand. How to guide the referee's tendency in each case greatly tests the lawyer's wisdom and persuasive ability, but the reward of success is also rich. After all, the best thing about being a lawyer is not the moment when you see your carefully prepared, argued and painstaking views supported by the referee.