The defense of unenforceability of patent right is not based on American written 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 has violated the principle of equity in the process of patent application.
Relevant provisions on acts violating the principle of equity
Because the patent examination in the US Patent and Trademark Office is a unilateral procedure, usually, the examiner only determines the patentability of the patent application through the information obtained by his own case search within a limited time. In most cases, the inventor or applicant actually knows the relevant information of the patent application best. Therefore, in order to protect the public interests, the United States Patent and Trademark Office has written the corresponding provisions of the applicant's obligation to disclose and inform, as well as the ethical standards of frankness and honesty into the compilation of federal administrative regulations and the 6 th and 2 th chapters 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 involved 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 related to the patentability essence"; "Information that meets the following conditions will be considered to be related to patentability in essence: a) The information itself or combined with other information can preliminarily 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 engages in the patent application; C) Everyone else who is substantially involved in the preparation of the patent application, and anyone related to the inventor or assignee, or anyone who is obligated to assign the patent application ".
Therefore, if the applicant fails to fulfill the obligation of disclosure and disclosure mentioned above and violates the moral standards of frankness and honesty in the examination of patent applications, it may be regarded as an act that violates the principle of equity. There are usually two factors to be considered when judging whether the act violates the principle of equity: whether the missing information is related to the patentability essence and whether the applicant's behavior is "intentionally" misleading the Patent Office.
1 information related to the patentability essence
Information related to the patentability essence refers to the features that may affect the patentability or expose the examiner's focus when examining the patent. Among them, the patent examination process includes the examination process of new application, the re-examination process of patent and the re-announcement examination process. The disclosure obligation of the patent applicant is not limited to the previous cases known to the applicant, but also includes all other information related to the patentability of the patent, including litigation information. According to the U.S. Patent Examination Guidelines, the lawsuits include the lawsuit that the patent involved is invalid and the lawsuit that accuses the patent applicant of cheating or violating the principle of equity.
for example, in the case of Critikon vs.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 concerning its patent in the process of 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 equity in the patent examination process. The violation of the principle of equity is that Critikon Company did not disclose the invalid lawsuit related to Lemiuex patent in the process of re-announcement and examination of Lemiuex patent. The patent involved in the invalid lawsuit (Mcdonald 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 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 the examiner focused on when examining the patent. Although these two features were applied to two completely different devices, it could not be concluded that the Mcdonald's patent was not information related to patentability. According to MPEP 21.6 (c) (25), if the patent is filed for invalidation in the review process of Reissue case, the re-announcement review of the patent in the previous case used to invalidate the patent in the invalid case is the information related to the patentability essence.
in this case, the federal court finally ruled that the patent was valid, that is, the McdoRald patent was not enough to invalidate the Lemiuex patent, but it was considered as information related to the patentability of the Lemiuex patent. From this, it can be seen that the criteria for judging whether the information is substantially relevant in American patent law are relatively broad, and it cannot be arbitrarily considered that the information is not substantially relevant simply because it will not affect the patentability of the patent.
2 Intention
Although it is not like fraud that strict evidence is required to prove the relevance of Qianzhai and the applicant's subjective intention, it is not enough to prove the applicant's simple negligence, accidental oversight and wrong judgment. However, whether the applicant's behavior is "intentional" or unintentional simple negligence or accidental oversight, how to judge the standard?
"Intention" is usually proved by evidence reasoning, and there is no need for the confession of the inventor or attorney. But there must be evidence related to "intention", although this evidence need not be direct evidence, it can be inferred from the behavior of the patentee, for example, reckless neglect and obvious negligence. However, "intentional" misleading can not be determined only from negligence in adjudication, and the subjective honesty of the patentee is a factor that 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, and 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, the claim should be interpreted to the greatest extent to avoid misjudgment.
"substantial correlation" and "intention" are not completely separated: the higher the correlation, the lower the degree of "intention" required to judge the violation of the principle of equity. When the patentee is faced with a highly relevant previous case and there is clear evidence that the patentee knows or should know the relevance of this previous case, the reason of "goodwill misjudgment" is difficult to prevent the "intentional" misleading identification. Therefore, it is useless to simply deny "intentional" in this case.
generally speaking, withholding or hiding the previous case used to refute the corresponding foreign application (referring to the non-American application) is an important factual factor to be identified as "intentional". Therefore, if the corresponding China patent is refuted by the previous case found by the Chinese Patent Office during the examination, the applicant shall 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 revealing the product to the Patent Office truthfully, although the product is not exactly the same as the patent application, it reveals the important technical characteristics of the patent that are different from the previous case, and it will also lead to the consequences of "intentionally" misleading the Patent Office.
of course, it is easier to judge "intentional" behavior than to hide information. When a patent applicant submits a non-English case or document information, it may mislead the examiner into thinking that the case is less relevant, which will lead to "inference hiding".
Discussion on whether or not to abolish the defense that the patent right cannot be enforced
Considering the positive significance of the United States system of restraining behaviors that violate the principle of equity, some scholars in China have also called 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 proposal of American patent law, the American patent industry is also having a heated discussion on whether to abolish the defense that the patent right is not enforceable because of the violation of the principle of equity. The National Academy of Sciences has also written an article for the reform proposal of the patent law in the United States, proposing to abolish the defense that the patent right is unenforceable because the patentee has violated the principle of equity in the process of patent application.
The main reasons for proposing to abolish it are as follows: (1) There is no clear objective standard to define which behaviors violate the principle of equity, and the judgment of behaviors that violate the principle of equity is based on personal subjective judgment based on specific facts; (2) The court's requirement for the applicant's disclosure obligation is the highest degree of honesty that is difficult to achieve; (3) There is no clear definition of the two elements "information related to patentability essence" and "intention"; (4) The U.S. Federal Circuit Court also pointed out that the unenforceable plea has been excessively abused like a plague, which not only increases the cost of litigation but also reduces the efficiency of litigation.
However, recently, the Intellectual Property Department of the American Bar Association still suggested in its proposal for the reform of the US patent law written to the Senate Judiciary Committee that the defense system of claiming that the patent right is unenforceable for acts that violate the principle of equity should be further revised, improved and preserved.
The patent industry in the United States is still reviewing the legal significance and practical effect of establishing the obligation of disclosure and disclosure, and there is no agreement on further revising and perfecting the criteria for identifying acts that violate the principle of equity. Therefore, the author thinks 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 the judicial system, litigation procedures, judicial ideas 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, and it is difficult for the accused infringer to obtain evidence of the patentee's violation of the principle of equity in China. In the United States, the accused infringer can use this investigation and evidence collection procedure to investigate the witnesses, physical evidence and other information of the patentee. So as to know whether the patentee has any evidence of violation of the principle of equity in the process of obtaining the patent.
some problems that China's patentees should pay attention to when dealing with American
patent applications
The author briefly introduces some problems that China's patentees should pay attention to when dealing with American patent applications in order to avoid violating the principle of equity.
1 All relevant personnel have the obligation to disclose and inform
Except the inventor, any individual who participates in the preparation, submission and defense process of American patent application documents has the above disclosure obligation. For example, the author, reviewer and patent agent of the 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.
2. Confirm that all inventors are real inventors
In the following two cases, an error in the identity of the inventor may result in the patent not being implemented: (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, if the enterprise has developed into a large enterprise, whether under review or after patent authorization, it shall pay various fees according to the large enterprise in time.
4 avoid any false statements
in the process of examination, sometimes the inventor may show some evidence or make an oath to overcome the previous case in order to overcome the rejection, but avoid any false certificates or false statements.
5 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 lead to the patent not being implemented.
6. Inform the United States Patent and Trademark Office of other related applications that are under examination at the same time
If the applicant has other applications related to the present invention in the United States, and the contents of these applications are related to the patentability of this application, then the inventor is also obliged to inform the examiner of the information of these applications.
7 The inventor's affidavit should be signed after confirmation
The inventor should read, understand and approve the affidavit before signing. If the inventor can't read or understand English, he should provide the inventor with the corresponding Chinese version to explain the contents of the English version of the affidavit.
8 disclosure of previous cases cited by China examiners in the process of patent examination
If China examiners cited some previous cases when examining China patent applications corresponding to American applications. Then, these former cases should also be informed to American examiners. Note: No matter whether the American application claims the priority of the corresponding Chinese application, as long as the contents of the China application have an impact on the patentability of the American application, the inventor has the above-mentioned obligation to inform. Similarly, if there are patent applications from other countries corresponding to American applications, such as Japanese patent applications and Korean patent applications, the former cases cited by examiners from other countries in the examination should also be informed to American examiners.
9 Non-English antecedents need to be translated or a brief explanation of their relevance
If the antecedents notified to American examiners are in non-English, for example, China examiners cited Chinese antecedents when examining the corresponding patent applications in China, then they should either provide a brief explanation of the relevance of the antecedents to American patent applications, or provide an English translation of the Chinese antecedents or an equivalent English version of patent applications filed in other countries.
1 The obligation of informing runs through the entire period of patent examination in the United States
During the period before the American patent application is abandoned and granted, people related to the American application have always been obliged to inform the examiner of the previous cases that will affect the patentability of the American application in time.
11 It is suggested to use the minimum relevance standard instead of the substantive relevance standard for the submitted cases.
As long as a certain village is found or suspected to be relevant to the US application, it should be informed to the US examiner in time. Try not to disclose only the previous cases that you judge will have an important impact on the patentability of American applications. Some applicants from