What are the immediate infringement problems in patent litigation cases?

I. The meaning of direct infringement There are two different understandings about the meaning of direct infringement. One view is that immediate infringement refers to patent infringement whose consequences have not yet occurred. Another view is that immediate infringement means that the infringement has not yet occurred, but the perpetrator is preparing for infringement. If the completion process of infringement is divided into preparation stage, implementation stage and damage result occurrence stage, the main difference between the two definitions lies in the different definition of "immediate occurrence" stage. The author thinks it is necessary to trace the source and explain it from the original intention of system design. The concept of "direct infringement" comes from Article 50, paragraph 3, of the TRIPs Agreement, which stipulates that "the judicial organ has the right to require the applicant to provide any evidence that can be reasonably obtained, so that the judicial organ can have a sufficient degree of certainty that the applicant is the right holder, that the applicant's rights are being infringed or that such infringement is about to occur, and has the right to order the applicant to provide a deposit or equivalent guarantee that is sufficient to protect the defendant and prevent abuse". Therefore, "immediate infringement" means "this kind of infringement is about to happen". Among them, the word "imment" means "imminent"; The word "infringement" refers to the act of infringing the scope of intellectual property rights, which is different from "infringement" in civil tort and does not consider the so-called "liability for compensation". It can be seen that the immediate infringement should emphasize that the infringement of intellectual property rights is about to happen but has not yet happened, and should not be an act that has happened but has not caused damage. Therefore, immediate infringement should be defined as no actual patent infringement, but the actor is ready to implement patent infringement. Two. Relevant Provisions on Immediate Infringement In order to fulfill China's commitment to join the World Trade Organization and bring China's patent system into line with international standards, China revised the Patent Law for the second time in 2000, in which provisions on immediate infringement were added according to the relevant provisions of the TRIPs Agreement. Article 61 of the revised Patent Law (2000) stipulates that "if the patentee or interested party has evidence to prove that others are committing or about to commit acts infringing on his patent right, and his legitimate rights and interests will be irretrievably damaged if he fails to stop it in time, he may apply to the people's court for measures to order the relevant acts to stop and property preservation". In this article, "ordering to stop relevant acts" usually refers to a temporary injunction before litigation, and "about to infringe its patent right" is a provision on immediate infringement. On this basis, on 200 1, the Supreme People's Court formulated "Several Provisions of the Supreme People's Court on Applicable Laws for Stopping Infringement of Patent Rights before Litigation", which clearly stipulated the scope, jurisdiction, applicable conditions, court review standards, revocation conditions, etc. In 2008, China revised the patent law for the third time, and still retained the relevant provisions regulating "instant infringement". It is controversial whether the "promise to sell" clause also belongs to the relevant provisions of "immediate infringement". For example, Professor Feng Xiaoqing pointed out that Article 11 of the Patent Law stipulates that no unit or individual may engage in a series of patent exploitation behaviors such as "promise to sell" without the permission of the patentee. "Promised sale" here means "immediate infringement". The author thinks that, from the perspective of the overall rights enjoyed by the patentee, the infringement of the promised sales right should be a typical "immediate infringement" compared with the infringement of the manufacturing right, the use right, the sales right and the import right. However, from the basic principle of intellectual property legalism, once the promised sales right is stipulated as one of the rights of the patentee, its nature will change, because patent infringement is an act of encroaching on the patentee's rights. When the actor promises to sell without permission, he has committed an act that directly infringes on the legitimate rights of the patentee, which constitutes a direct infringement and should not be considered as "immediate infringement". At the same time, from the perspective of judicial needs, the discussion of "instant infringement" is to solve the difficult problems caused by unclear rules in judicial practice, and "promised sale" has a clear legal basis, so it is not necessary to include it in the discussion of "instant infringement". Third, the dilemma of immediate infringement litigation As mentioned above, China's laws clearly stipulate that judicial organs should intervene in immediate infringement before litigation and temporarily ban it. According to "Several Provisions of the Supreme People's Court on Applicable Laws for Stopping Patent Infringement before Litigation" and Paragraph 1 of Article 66 of the Patent Law, the patentee or interested party may apply to the court to order the respondent to stop patent infringement before litigation. However, when the applicant is an interested party and has submitted the evidence that the respondent is about to infringe his patent right, such as the comparative materials of the accused infringing products and the technical characteristics of the patented technology and the accused infringing products, if the applicant's legitimate rights and interests will be irretrievably damaged if it is not stopped in time, and the respondent can be ordered to stop the relevant behavior without harming the public interest, the court may order to stop the infringement of patent right before the lawsuit. As for whether it is possible to make a judgment on the "immediate act of patent infringement" in the form of litigation judgment, that is, whether the immediate act of patent infringement can be sued, there is no clear stipulation. This is a shortcoming in judicial practice, that is, on the one hand, immediate infringement needs to be regulated; On the other hand, under the framework of patent law, there is a problem of insufficient ruling basis. The question of necessity. Our country has set up temporary injunctions and other measures to regulate the problem of immediate infringement, but as the case mentioned in this paper, sometimes the obligee appeals to the court in the form of judgment, demanding that the defendant stop the immediate infringement, instead of pursuing the legal effect of temporary injunctions. According to "Several Provisions of the Supreme People's Court on Applicable Laws for Stopping Patent Infringement before Litigation", when the legal conditions are met, the court may make a temporary injunction against the respondent's imminent infringement of his patent right; After the people's court takes measures to stop the relevant acts, the patentee or interested party must bring a lawsuit within a certain period of time. If no lawsuit is filed, the court will lift the temporary injunction. The effectiveness of temporary injunctions is generally maintained until the final legal document takes effect. Therefore, after the court adopts the pre-litigation temporary injunction, the patentee or interested party shall bring a lawsuit. According to this logic, it is justified to determine that immediate infringement can be sued; On the other hand, if the actionable nature of immediate infringement is not recognized, the effect of temporary injunction before litigation will not be ideal, because once the patentee or interested party files a lawsuit, if the court simply rejects the immediate infringement as non-actionable, the temporary injunction will be lifted and the obligee will return to the infringed state at any time. Under special circumstances, even the actual infringer may be an accident. For example, in the second case mentioned above, the construction party will mix the purchased grouting agent with cement and become the infringer of manufacturing behavior. Judging from the facts ascertained before withdrawing the lawsuit, the construction party did not know that the purchased grouting agent mixed with cement would fall into the protection scope of the existing patent, but there was no room for legal defense for the manufacturing behavior. If the patentee has no right to stop the production behavior of the grouting agent manufacturer, wait for it to appear. Judgment basis under the framework of patent law. According to Article 11 of the Patent Law, without the permission of the patentee, no unit or individual may commit any act that infringes the patentee's right to manufacture, use, promise to sell, sell or import. Therefore, only when the actor infringes the above rights of the obligee can the infringement be established and the actor must stop the relevant behavior. However, for immediate infringement, the patent law only provides temporary measures, but lacks the basis for subsequent treatment, which leads to the problem of insufficient judgment basis. Four. In the development of patent infringement theory, there has been a long-term debate on the principle of imputation of civil liability for patent infringement, the core of which is whether fault constitutes infringement. With the deepening of research, the academic circles generally believe that intellectual property rights are a kind of right to the world, and the lawsuit of intellectual property infringement includes both the lawsuit of property rights and the lawsuit of creditor's rights, that is, on the one hand, the lawsuit of property claim, on the other hand, the lawsuit of damage compensation, and the principle of imputation should be different according to the specific types of infringement. As Professor Zhang Yumin pointed out, the discussion on the principle of imputation of civil liability for infringement of intellectual property rights should be aimed at specific types of infringement and forms of liability. As a form of responsibility to protect property rights, no matter what kind of infringement is caused, the fault of the infringer is not a necessary condition. As a method to protect creditor's rights, the principle of liability compensation must be determined on the basis of careful interest measurement and policy choice for specific infringement types. In fact, the "four elements-behavior, fault, damage facts and causality" required by general tort liability are aimed at the liability for damages. As Mr. Zheng has repeatedly stressed, the lawsuit of the right to claim property rights does not need "fault and damage facts" to be considered as infringement of intellectual property rights. The intellectual property laws of most countries do not stipulate that "fault" is required as an element when determining infringement and taking civil relief measures such as injunction, let alone the so-called "four elements". This is also the reason for the dilemma of immediate infringement, that is, the problem of damages belonging to the category of "creditor's rights" is overemphasized, while the problem of stopping "infringement" belonging to the category of "property rights" is neglected. According to the provisions of Article 35 of People's Republic of China (PRC) Property Law, if the property right is damaged or may be damaged, the obligee may request to remove the obstruction or danger. In my opinion, we can learn from the provisions of the Property Law to deal with the problem of immediate infringement in litigation, that is, although immediate infringement can not directly cause damage, we can order the actor to stop the relevant behavior according to the specific circumstances to eliminate obstacles or eliminate dangers. In fact, in the intellectual property laws of Germany, Japan and other countries, there are similar provisions on immediate infringement. For example, Article 100 of the Japanese Patent Law stipulates that the patentee or exclusive implementer may ask the person who infringes his patent right or exclusive use right or the person who is in danger of infringement to stop or prevent infringement, and at the same time ask him to give up the infringing results and tools, or take other necessary measures to prevent infringement; Another example is the German Copyright Law, article 97, paragraph 1, which stipulates that anyone illegally infringes on copyright or other rights protected by this law, the victim may ask him to eliminate the damage; If there is a danger of infringement again, you can ask for inaction; If there are signs of illegal behavior for the first time, you should also ask for inaction. At the same time, China's "General Principles of Civil Law", "Tort Liability Law" and the newly promulgated "General Principles of Civil Law" also stipulate the elimination of obstruction and danger in the way of civil liability. Therefore, before the direct infringement litigation regulation clause is introduced into the Patent Law, the author thinks that if it is really necessary to stop the direct infringement in litigation cases, the judgment can be made according to the above provisions. As for whether direct infringement can be ordered to pay damages, for example, in the two cases listed in this article, the plaintiff also asked for an order to stop the infringement and compensate economic losses and reasonable expenses. In this regard, the author believes that damage compensation should still adhere to the constitutive requirements of damage compensation liability, that is, damage must actually occur before it is necessary to consider compensation. In view of the fact that the upcoming infringement is in the preparatory stage of infringement and no actual infringement has occurred, and considering that stopping the upcoming infringement is a special measure to consider the interests of the patentee, the request for damages should generally not be supported. However, if there is evidence to prove that the actor has subjectively violated the patentee's malice, and there is a causal relationship between the reasonable expenses of rights protection and the behavior of the actor, the actor may be ordered to bear the expenses of the patentee's reasonable rights protection. V. Constitutive elements of judging immediate infringement China has stipulated the constitutive elements of temporary injunction before immediate infringement litigation. In my opinion, this provision can still be used for reference in litigation judgment, that is, the following conditions should be met when ordering to stop related acts in litigation: 1, the plaintiff is the patentee or interested party; 2. There is clear evidence that the defendant is about to infringe his patent right; 3. Ordering the defendant to stop the relevant behavior will not harm the public interest. At the same time, considering the difference between litigation judgment and pre-litigation ruling, that is, 1, pre-litigation cessation of infringement is only a temporary measure, and litigation judgment has res judicata, execution and formative force, not temporary; 2. Even if the above conditions are fully met, the applicant is generally required to provide a guarantee to ensure that the losses of the respondent are compensated when the application is wrong. However, the nature of the litigation judgment is unlikely to be guaranteed by the plaintiff, which may cause an imbalance in the interests of both parties. In order to ensure the balance between the patentee's interests and the public's interests and prevent the judge from abusing his discretion, the standards for ordering the defendant to stop relevant behaviors in litigation should be stricter, and the following points should be emphatically reviewed: 1. The evidence that "the defendant is about to infringe his patent" should be enough to prove that the infringement will definitely happen without judicial intervention; 2. The subjective state of the defendant. Although subjective state is not a necessary condition for ordering to stop related behaviors, it can still be taken as an important consideration. If the defendant knows or should know that his behavior will lead to infringement of the patent right of others, he should consider regulating it in the form of litigation judgment. 3. If the defendant has committed an infringement and there is evidence that he may infringe again, he can be directly ordered to do nothing. Examining the dilemma and solution of imminent infringement in patent litigation, perhaps it is more important to show us the natural relationship between intellectual property law and traditional civil law. When dealing with intellectual property cases, the basic norms and thinking mode of civil law should still be an important support for us to deal with problems. Of course, as a special law, in order to make the judgment more legal and the application of the law more unified, when amending the patent law, we might as well learn from the practices of Germany and Japan mentioned above and introduce the right of claim to prevent infringement, so as to better regulate the immediate infringement.