Therefore, agents and agencies often suggest or require customers to sell their products after submitting patent applications, because if patents are granted, the protection period will be counted from the date of patent application.
But is it foolproof to sell products after the patent application is submitted? The author clearly tells you that the answer is no.
We know that the invention patent will be published within 18 months from the date of application at the latest, and the application for invention to this case is generally 2-3 years; The review period of the utility model is 7- 14 months; The examination period of design patent is generally 3-6 months. Then, during the period from the patent application date to the authorized disclosure, does the implementation behavior of others constitute infringement? What kind of legal responsibility should I bear? How should patent applicants respond?
During the period from the date of patent application to the date of publication (invention patent) and the date of patent application to the date of authorization announcement (utility model and design), whether others should bear legal responsibility for exploiting patents without permission is not expressly stipulated in the patent law. On this issue, the author briefly analyzes the risks of rights protection and feasible countermeasures from the perspective of patent applicants.
There are several time points in the patent law that have great influence on the rights and obligations between the patentee and the public. In different periods, others who exploit patents without permission should bear corresponding legal responsibilities.
For invention patents, these time points are the date of application, the date of publication and the date of authorization announcement;
For utility model and design patents, these time points are the date of application and the date of authorization announcement;
Before the date of application, from the date of publication of the application to the date of authorization announcement (invention patent) and after the authorization announcement, the relevant laws have explicit provisions, and the author only makes a brief overview.
I before the date of application
1, prior art defense, prior art refers to the technology that has been published before the patent application. If the technical scheme implemented by the implementer belongs to the protection scope of patent right, but the defense of existing technology is established, the implementer's behavior does not constitute infringement of patent right, and the implementer can freely implement the technical scheme.
2, the right of first use defense, before the patent application has been made the same product, using the same method or have made the necessary preparations for manufacturing and using, and just continue to manufacture and use within the original scope, is not regarded as infringement of the patent right. Using, promising to sell or selling patented products manufactured under the above circumstances or products directly obtained according to patented methods shall not be regarded as infringement of patent rights.
Prior right defense is a defense that is not regarded as infringement, and prior technology defense is a defense that is not infringement; The defense of not considering infringement belongs to the exception of patent infringement, and its freedom of implementation after patent authorization is less than that of existing technology, which is limited by "only within the original scope" and "not being able to transfer its own prior implementation technology".
Two. From the date of publication to the date of authorization announcement
The temporary protection period shall be from the date of publication of the invention patent to the date of authorization announcement. After the publication of the application for a patent for invention and before the announcement of authorization, the patentee after the patent authorization may require the inventor to pay an appropriate fee. Its implementation does not belong to patent infringement.
It is worth noting that:
1. If the protection scope on the publication date of the application for a patent for invention is inconsistent with the protection scope of the authorization announcement, and the technical scheme implemented by the implementer only falls into one of the protection scopes, it shall be deemed that the invention has not been implemented within the temporary protection period.
2. The patentee has no right to request to stop the exploitation of his invention during the temporary protection period of the patent; Even without the permission of the patentee, the implementer can continue to use, promise to sell and sell the product after the patent authorization, that is, the patentee has no right to prohibit others from using, promise to sell and sell the alleged infringing product manufactured, sold or imported during the temporary patent protection period. (No further manufacturing is allowed, only the manufactured inventory can be used and sold).
3. If the implementer neither pays the appropriate reasonable fees nor explicitly expresses his willingness to pay the appropriate fees, the patentee may also claim to require the implementer to stop using, promise to sell and sell the products that have been manufactured and imported by the implementer within the temporary protection period after the announcement of patent authorization.
Three. Date of application to date of publication
Here comes the point. From the above analysis, it can be seen that taking the invention patent as an example, the patent application date → publication date → authorization announcement date, with the progress of time, the rights of the patentee are continuously strengthened, and the rights of the public are gradually restricted. According to the principle of law, the responsibility of others to exploit the patent from the date of application to the date of publication should not be lower than that before the date of application, nor should it be higher than that from the date of publication to the date of authorized announcement.
Undoubtedly, from the date of patent application to the date of publication, others can implement the technical scheme during this period. The question is:
1. After the announcement of patent authorization, can the patentee ask him to pay the implementation fee during this period?
2. During this period, whether the products produced by implementing this technical scheme are infringed by the manufacturers or sellers or buyers (not ordinary consumers) who continue to sell, promise to sell or use them? Should it be banned?
3. After the announcement of patent authorization, can others continue to manufacture patented products and use patented technical solutions?
The answer given by the author is as follows:
Question 1: No; From the legislative purpose, the production responsibility of patented products from the date of patent application to the date of publication should be lower than or equal to that from the date of patent publication to the date of authorization. The law only stipulates the payment of royalties for products produced between the patent disclosure date and the authorization date, but does not stipulate the responsibility to stop infringement. Therefore, after the date of patent grant, selling or using products produced between the date of patent application and the date of publication does not constitute infringement, and no fees should be paid to the patentee. Only in this way can the interpretation conform to the logic of law.
Question 2: It does not constitute infringement and should not be prohibited; Patented products produced between the date of patent application and the date of publication are prohibited from being sold or used after the patent is granted, which will inevitably lead to the waste of social property as a whole. If it is allowed to be sold or used, it will neither hinder the realization of the legislative purpose of the patent law, nor prevent the applicant from applying for a patent and making the technology public. On the contrary, if the patent is not made public as soon as possible, it will affect the interests of the patent applicant, so it will prompt the patent applicant to make the patent public as soon as possible to obtain protection. Therefore, producers, sellers or users who continue to sell or use patented products produced between the patent application date and the patent disclosure date after the patent authorization date do not constitute infringement and do not bear legal responsibility.
Question 3: No, if others continue to manufacture patented products, use patented technology; Still constitutes patent infringement; Because this period is not enough to constitute the right of preemption, its right boundary should be lower than the right boundary of preemption defense. As mentioned above, the defense of first use is regarded as non-infringement, which is an exception to infringement, and its continued implementation after patent authorization is subject to many restrictions, such as "only within the original scope"; Therefore, light should be given priority. During this period, others have manufactured the same product, used the same method or made necessary preparations for manufacture and use, which does not constitute the right of first use. After the patent is granted, even if the patented product and patented technology continue to be manufactured and used within the original scope, it still constitutes patent infringement.
The period from the date of application to the date of announcement of patent authorization for utility model patent is equivalent to the period from the date of application to the date of announcement of invention patent, and the relevant responsibilities are the same.
Four. Respond to suggestions
The market is changing rapidly, and it is the limit of patience to put products on the market after filing a patent application. If the product is put on the market after the patent is authorized, the day lily will be cold; Some FMCG products have a market life of only 1-3 months from the design to the shelf in different seasons. It is an inevitable consideration for commercial operation to bring products to market in time, but now many customers' products are put on the market after submitting patent applications, and countless counterfeit products appear in the market in a short time. At this time, the patent application has not been authorized, and it is impossible to defend rights; What can we do in the face of this dilemma? The author has the following suggestions:
1. Do a good job in protecting trade secrets. The general public may know that patent is a system of rules in which publicity is exchanged for protection, but they don't know that patent application is a technical game. For example, the technical scheme you need to protect is a ginseng, and the patent document written by a qualified professional patent agent will try to enclose the mountain where the ginseng grows for you, which is equivalent to the patent document only disclosing that there is one ginseng in this mountain, and it is in your hands where the ginseng grows and how to get there as quickly as possible. In practice, competitors can use patent documents to make products, but they can't or can't make your products so well for a long time; Therefore, while applying for a patent, we should not underestimate the protection of trade secrets. We can do the following: enhance employees' awareness of intellectual property rights, regularly organize all employees to carry out intellectual property rights training, sign necessary confidentiality agreements and competition agreements, set the confidentiality level and employee authority level of technology and technology, isolate different stations in the production line of key processes, prevent the processes of the whole production line from leaking and cross-posting, take safety measures in special production workshops, set access control and prohibit taking pictures. If the technical scheme implemented by others constitutes an infringement of trade secrets, the obligee may request the anti-unfair competition law to protect his own technology. Incidentally, although many enterprises are trying to get government subsidies, the standards of intellectual property management system in GB/T29490-20 13 are still of good reference value, and enterprises with conditions can selectively implement them.
2. Supply chain management, the complete realization of a technical solution often includes the support of downstream supply chains such as materials and molds. It takes time to select material specifications and debug molds, which will also affect product quality; Manage your own supply chain and try not to let competitors know about your downstream suppliers; Sign confidentiality agreement and exclusive supply agreement with suppliers when necessary. Take the mold as an example to avoid spending a lot of money debugging the finalized mold for a long time. Our competitors approached our mold supplier and said, "I want a mold like theirs." The mold supplier said, "Oh, you have found the right person. You don't know. Before it was successful, we had been debugging and reworking the mold with them for n months. The final sketch has been completed and filed. If you want another pair, you can use them. You can give him a 7.5% discount on the price, delivery date 1 month ... "
3. Apply for the priority exam. The Measures for the Administration of Patent Priority Examination came into effect on August 1 2065438. As long as the necessary conditions are met, the patent application or patent reexamination case may be requested for priority examination, and the application for patent for utility model and design shall be closed within two months; An application for a patent for invention shall notify the first examination opinion within 45 days and be closed within one year. Greatly shorten the patent application review cycle.
4. Copyright registration should be carried out at the same time. According to the provisions of Article 3 of the Copyright Law, product design drawings and industrial appearance themselves are protected by the Copyright Law. Therefore, for some design products, as rights holders, they can apply for design patents and make industrial products in copyright registration and copyright registration within 1 day to obtain copyright registration certificates. When it is impossible to claim the patent right, you can claim the copyright from others, and the responsibility to stop infringing the copyright also includes stopping the use and compensating for the losses. As for why you want to apply for a patent and copyright registration, what is the difference between them? Interested readers can refer to the author's previous two articles, "Does a toy car similar to a car constitute an infringement of the appearance patent? "and" The Impact of Design Termination on Picture Copyright "(see" Read the original "at the end of the article for details).
5, clever use of patent marks, the patentee has the right to indicate the patent mark on its patented product or the packaging of the product; The function of patent mark can deter competitors to some extent. It is worth noting that the Measures for Marking Patent Marks has corresponding provisions on how to mark patent marks. Before the patent is granted, the use of the marked patent in accordance with the provisions of the Measures for the Marking of Patents has little deterrent effect, but there will be corresponding punishment measures in violation of the provisions of the Measures. The "possibility" in punishment means that judges and law enforcement units can exercise discretion according to the actual case. The so-called prudence is the recruitment information that HR often sends. The salary of a position is 5000-50000 yuan/month, and the recruiting enterprise can decide whether it is 5000 yuan/month or 100000 yuan/month. The author has said so much, and here are the laws on risk notification.
Due to the length of the article, some key points mentioned in the article are not fully developed, such as the specific comparison instructions of the prior art defense; Conditions and restrictions of preemptive right; Requirements and specific procedures for priority review; Why do you want to apply for a patent and copyright registration at the same time, the difference and connection between appearance patent and copyright; Welcome to add the author's WeChat at the end of the article to exchange and discuss.
Author: Lawyer Luo Xianshui (Internship)/Patent Agent