The defense of patent unenforceability is not based on American statute law, but originated from American patent judicial precedent. Based on this defense, the accused patent infringer can claim that the patent right is unenforceable because the patentee violated the principle of fairness in the process of patent application.
Relevant provisions on acts violating the principle of fairness.
Because the patent examination of the United States Patent and Trademark Office is a unilateral procedure, usually, the examiner only determines the patentability of the patent application in a limited time by retrieving the information he has obtained. In most cases, the inventor or applicant actually knows the relevant information of the patent application best. Therefore, in order to protect the public interest, the US Patent and Trademark Office has written the corresponding provisions of the applicant's disclosure and notification obligations, as well as the ethical standards of frankness and honesty into the Collection of Federal Administrative Regulations and Chapters 600 and 2000 of the US Patent Examination Guide.
Part of the extract of Article 56 of Title 37 of the Federal Administrative Regulations is translated as follows: "Everyone who participates in the patent application and examination process has the obligation to be frank and honest with the Patent Office, including the obligation to disclose the information he/she knows about the nature of patentability"; "Information that meets the following conditions will be considered to be related to patentability in essence: a) information itself or combined with other information can initially determine the patentability of patent claims; B) The information overturns the applicant's claim about patentability or is inconsistent with it, or the information overturns the applicant's reason for not patentability or is inconsistent with the rebuttal reason "; "The so-called' person related to the patent application and examination process' includes: a) every inventor of the patent application; B) Every agent or lawyer who prepares or participates in the patent application; C) Any other person who is substantially involved in the preparation of the patent application, and anyone related to the inventor or assignee, or anyone who is obliged to transfer the patent application ".
Therefore, if the applicant fails to fulfill the obligation of disclosure in the patent application examination and violates the ethical standards of frankness and honesty, it can be regarded as a violation of the principle of fairness. When judging whether this behavior violates the principle of fairness, two factors usually need to be considered: whether the missing information is related to the nature of patentability and whether the applicant's behavior "intentionally" misleads the Patent Office.
1 Information related to patentability nature
The information related to the nature of patentability refers to the characteristics that may affect the patentability or expose the examiner's concerns when examining a patent. Among them, the patent review process includes the review process of new applications, the patent review process and the re-announcement review process. The disclosure obligation of the patent applicant is not limited to the past cases known to the applicant, but also includes all other information related to patent patentability, including litigation information. According to the US Patent Examination Guidelines, lawsuits include those involving invalid patents and those accusing patent applicants of cheating or violating the principle of fairness.
For example, in Critikon v. Becton Dickinson, Critikon's patent was ruled unenforceable by the Federal Circuit Court because it failed to fulfill its obligation to disclose invalid litigation information related to its patent during patent reexamination. After hearing the case, the Federal Circuit Court ruled that Critikon's patent could not be implemented because Critikon violated the principle of fairness in the patent examination process. In violation of the principle of fairness, Critikon Company did not disclose the invalid lawsuit related to le miex patent in the process of re-announcement and review of le miex patent. The patent involved in invalid litigation (McDonald's patent) is related to the patentability of Lemiuex patent, and the undisclosed behavior can be inferred as misleading intention.
The main dispute between the District Court and the Federal Circuit Court in this case is whether the McdonaId patent involved in the lawsuit is the information related to the patentability of Lamiuax patent. The local court held that McDonald's patent was not substantially related because it was substantially different from the patent involved. However, the federal court held that McDonald's patent revealed two important features, which were the features that examiners focused on when examining patents. Although these two features are applied to two completely different devices, it cannot be concluded that McDonald's patents are not information related to patentability. According to MPEP 200 1.06 (c) (2005), if the patent is declared invalid during the review of the re-announcement case, the re-announcement review of the patent in the previous case used to declare the patent invalid is the information related to patentability.
In this case, the federal court finally ruled that the patent was valid, that is, the McdoRald patent was not enough to invalidate the le miex patent, but it was considered as information related to the patentability of the le miex patent. From this, it can be seen that the criteria for judging whether information is substantially relevant in American patent law are relatively broad, and we cannot arbitrarily think that information is not substantially relevant just because it will not affect the patentability of patents.
2 Deliberately
Although there is no need for strict evidence to prove the subjective and intentional correlation between Qianzhai and the applicant, it is not enough to prove that the applicant's simple negligence, accidental negligence and wrong judgment make the patent unenforceable. However, how to judge whether the applicant's behavior is "intentional" or unintentional simple negligence or accidental oversight?
"Intention" is usually proved by evidential reasoning, and it is not necessary for the inventor or agent to confess. However, there must be evidence related to "intention". Although this evidence is not necessarily direct evidence, it can be inferred from the behavior of the patentee, for example, reckless negligence and obvious negligence. However, "intentional" misleading can not be identified only from the fault in the award, but the subjective honesty of the patentee can be considered. "In the Kinsdown case, the judge held that the inference of" intention "depends on the overall situation of the case, including the nature and degree of negligence, and whether there is subjective goodwill. In the Allen archery case, the inventor and his patent lawyer argued that it was entirely out of goodwill. They thought that the former case had nothing to do with the novelty and creativity of the patent involved, so it was not submitted to the Patent Office. However, to judge whether the previous case is related to the novelty or creativity of the patent involved, we should explain the claim to the maximum extent to avoid misjudgment.
"Substantial correlation" and "intention" are not completely separated: the higher the degree of correlation, the lower the degree of "intention" required to judge the violation of the principle of fairness. When the patentee is faced with a highly relevant prior case, and there is clear evidence that the patentee knows or should know the relevance of the prior case, the reason of "goodwill misjudgment" is difficult to prevent "intentional" misleading identification. Therefore, it is useless to simply deny "intentional" in this case.
Generally speaking, concealing or concealing the previous cases used to refute the corresponding foreign applications (referring to non-American applications) is an important factual factor that is considered as "intentional". Therefore, if the corresponding China patent is refuted by the previous case discovered by the Chinese Patent Office during the examination, the applicant should submit the relevant previous case to the US Patent Office in time to avoid the US patent application being judged unenforceable in the subsequent process.
In addition, if the product produced by the inventor before is sold without being disclosed to the Patent Office, although the product is not exactly the same as the patent application, it reveals the important technical characteristics that distinguish the patent from the previous case, and it will also lead to the consequences of "deliberately" misleading the Patent Office.
Of course, it is easier to be judged as "intentional" than to conceal information. When a patent applicant submits a case or document information that is not in English, it may mislead the examiner into thinking that the case is less relevant, thus leading to "hidden reasoning".
Discussion on whether to cancel the patent right and not enforce the defense.
Considering the positive significance of the system of restricting acts violating the principle of fairness in the United States, some domestic scholars also call for following the example of the United States and establishing relevant applicant disclosure and notification systems. In fact, at present, in the discussion of the reform plan of the patent law in the United States, the American patent circle is also discussing whether to abolish the defense that the patent right is unenforceable because it violates the principle of fairness. The National Academy of Sciences has also written an article for the reform proposal of American patent law, proposing to abolish the defense that the patentee violates the principle of fairness in the process of patent application, and claiming that the patent right is not enforceable.
The main reasons for the proposed abolition are: (1) there is no clear objective standard to define which behaviors violate the principle of fairness, and the judgment of behaviors that violate the principle of fairness is based on personal subjective judgment based on specific facts; (2) The court's requirement for the applicant's disclosure obligation is the highest level of good faith that is difficult to achieve; (3) There is no clear definition of "information related to patentability essence" and "intention"; (4) The United States Federal Circuit Court also pointed out that the unenforceable defense was abused like a plague, which not only increased the litigation cost, but also reduced the litigation efficiency.
Recently, however, the Intellectual Property Department of the American Bar Association still suggested in the proposal for the reform of the US patent law written to the Senate Judiciary Committee that the defense system that the patent right is unenforceable against acts that violate the principle of fairness should be further revised, improved and retained.
The American patent circle is still examining the legal significance and practical effect of establishing the obligation of notification and disclosure, and has not reached an agreement on further revising and perfecting the criteria for determining acts that violate the principle of fairness. Therefore, the author believes that we should think twice before following the call of the United States to establish our own relevant system. Moreover, there are obvious differences and gaps between China and the United States in judicial system, litigation procedure, judicial concept and the development of the rule of law. For example, there is no pre-trial investigation and evidence collection procedure in the United States in China, so it is difficult for the accused infringer to obtain evidence that the patentee in China violated the principle of fairness. In the United States, the accused infringer can use this investigation and evidence collection procedure to investigate the patentee's witnesses, physical evidence and other information. So as to know whether there is any evidence that the patentee violates the principle of fairness in the process of obtaining the patent.
The patentee in China is dealing with the United States.
Several problems that should be paid attention to in patent application
In the following, the author briefly introduces some problems that China patent operators should pay attention to in order to avoid violating the principle of fairness when dealing with American patent applications.
1 All relevant personnel have the obligation to inform.
Except the inventor, any individual who participates in the preparation, delivery and defense of American patent application documents has the above disclosure obligation. For example, the author, examiner and patent agent of an American application must inform the examiner of any relevant publications, patents, patent applications and other public use or sales activities of the invention in the United States.
Confirm that all inventors are real inventors.
The wrong identity of the inventor may lead to the patent not being implemented in the following two cases: (1) at least one inventor in the inventor list is not a real inventor, or (2) if at least one real inventor does not appear in the inventor list.
3. Pay attention to the change of enterprise status
If the enterprise status when filing a patent application with the US Patent and Trademark Office is a small enterprise, and if the enterprise later develops into a large enterprise, all kinds of fees should be paid in time according to the large enterprise, whether under review or after patent authorization.
Avoid any false statements.
In the process of examination, sometimes the inventor may show some evidence or make a sworn statement to overcome the previous case in order to overcome the rejection, but any false proof or false statement should be avoided.
Confirm to the inventor whether the best embodiment has been disclosed in the U.S. patent application.
In the U.S. patent application, deliberately hiding the best embodiment may also make the patent unenforceable.
At the same time, notify the US Patent and Trademark Office of other related applications under review.
If the applicant has other applications related to the invention in the United States at the same time, and the contents of these applications are related to the patentability of this application, the inventor is also obliged to inform the examiner of the information of these applications.
The affidavit of the inventor shall be confirmed and signed.
The inventor shall read, understand and approve the affidavit before signing it. If the inventor cannot read or understand English, he shall provide the inventor with the corresponding Chinese version to explain the contents of the English version of the affidavit.
8. Disclosure of the previous case cited by China examiner in the patent examination process.
If China examiners cite some previous cases when examining China patent applications corresponding to American applications. Then, these past cases should also be informed to American examiners. Note: No matter whether the US application claims the priority of the corresponding China application, the inventor has the above obligation to inform as long as the contents of the China application have an impact on the patentability of the US application. Similarly, if there are patent applications in other countries corresponding to those in the United States, such as Japanese patent applications and Korean patent applications, the former cases cited by examiners in other countries should also be informed to American examiners.
The former non-English case requires translation or a brief explanation of its relevance.
If American examiners are told that the previous case is not in English, for example, China examiners cited the previous case in Chinese when examining the corresponding patent application in China, they should either provide a brief explanation of the relevance of the previous case to the American patent application, or provide a Chinese-English translation of the previous case, or provide an equivalent English version of the patent application filed in other countries.
10 notification obligation runs through the whole period of American patent examination.
Before the U.S. patent application is abandoned and authorized, the person concerned with the U.S. application has always been obliged to inform the examiner of the prior cases that will affect the patentability of the U.S. application in time.
The previous case submitted by 1 1 suggested using the minimum relevance criterion instead of the substantive relevance criterion.
As long as you find or suspect that a former village is related to the US application, you should inform the US examiner in time. Try not to disclose only previous cases that you judge will have an important impact on the patentability of American applications. Some former cases that the applicant thinks have no substantial connection may be considered as having substantial connection with patentability in the course of litigation.