What to do about infringement, and how to defend the defendant in a patent infringement lawsuit

Defendants in patent infringement lawsuits often make the following defenses in patent infringement lawsuits: the defendant argues that the technology it implements was lawfully obtained from a third party through a technology transfer contract. This defense is not a ground against patent infringement, but only a defense against liability for infringement.

If the transferee of the technology transfer contract implements the transferred technology in accordance with the contract and infringes the patent rights of others, the transferor and the transferee of the contract constitute joint infringement. When the parties to the contract are co-defendants in a patent infringement lawsuit, unless otherwise agreed in the contract, when determining liability, the assignor shall first bear the infringement liability, and the transferee shall bear the general joint and several liability. If the defendant in a patent infringement lawsuit requests the assignor of the contract to be added as a co-defendant while defending the contract, if the plaintiff agrees to do so, the assignor of the contract shall be added as a co-defendant; If the plaintiff insists on not agreeing to the addition, the contract dispute can be resolved through contract litigation or arbitration after the transferee of the contract bears the tort liability.

What should we do when a company is accused of patent infringement? First of all, it is necessary to entrust a professional intellectual property lawyer to determine whether your product falls within the scope of patent protection. Secondly, if the product does fall within the scope of patent protection, the next step should be to determine whether the patent is stable, and if it is found that the patent does not meet the conditions for granting the patent right after search and analysis, it can be invalidated with the patent office.

Finally, if the patent right is stable, and the product falls within the scope of protection, and the defendant has no subjective intent for infringement, it should provide evidence that can prove that it does not have subjective intent, such as legality and prior use. Legal basis: Article 70 of the Patent Law shall not be liable for compensation if the use, offering to sell or sale of a patent-infringing product manufactured and sold without the permission of the patentee is made for the purpose of production and business operation, and the product can be proved to be legal.

If the patent is infringed without knowledge, it can be defended; There are normal purchase channels, which can prove its legitimacy** and do not need to bear civil liability. There are many types of infringement defences, and invalidity was initially used as a defence. Now invalidation is not considered a defence, but it is a common way, that is, the other party's patent is invalid.

However, in the case of the present invention, based on experience, in the absence of an existing technical defense or other defense, invalidation proceedings should be initiated, of course, not casually.

1. What does patent license filing mean?

The meaning of patent license filing refers to the filing of patent exploitation license contract. When the parties have a dispute over the patent exploitation license contract, many people claim that the patent exploitation license contract signed by both parties has not been filed with the patent administration department as a defense ground.

The patent administration department or the department entrusted by it retains the patent exploitation license contract that has been concluded and taken effect by the parties and publicizes it to the public. The details are as follows:

1. A patent exploitation license contract is essentially a civil contract. As long as the statutory requirements are met and there is no invalidity, it is legal and valid;

2. After the patent exploitation license contract is signed, it shall be recorded;

3. If there is no vertical pulsation record, it will have a certain impact on the rights of the person who has obtained the license;

4. The law clearly stipulates that the signing of a patent exploitation license contract shall be filed with the patent administration department within 3 months from the effective date of the contract.

Patent exploitation license, also known as patent license, refers to the patent technology owner or its licensor licensing others to exploit the patent it owns for a certain period of time, in a certain region, and in a certain way, and charging others a fee for its use.

In a patent license, the patentee is the licensor, and the person who allows exploitation is the licensee, and a patent exploitation license contract shall be signed between the licensor and the licensee. The patent exploitation license contract only authorizes the licensee to exploit the patented technology, and does not transfer the ownership of the patent, that is, the licensee has no right to allow any unit or individual other than the contract to exploit the patent.

The patent exploitation license only transfers the right to use the patented technology, and the licensor still has the ownership of the patented patent, and the licensee only obtains the right to implement the patented technology, but does not have the ownership of the patent. A patent exploitation license is a type of license that allows the licensee to use the patent within a certain scope by entering into a patent exploitation license contract and pays royalties**.

After discovering that the infringer has infringed its patent right, the patentee may also file a civil lawsuit directly with the relevant people's court at the place where the infringement occurred, the place where the defendant is located, and request the infringement to be stopped, compensation for economic losses, etc. At the same time, it has the right to apply for litigation preservation of the infringer's infringement facts and evidence, and apply for a court injunction to prohibit the infringer from continuing the infringement. In order to ensure the effective enforcement of economic compensation, the patentee may apply to the accepting court for litigation preservation of the infringer's property of the same amount at the same time as filing a lawsuit.

When filing a lawsuit in court, the court that chooses to sue may have:

1) The place where the manufacture, use, offer to sell, sale, import, etc. of the product accused of infringing the patent right of invention or utility model are carried out.

2) the place where the use of the patented process is carried out, and the place where the use, offer to sell, sale, import and other acts of the products directly obtained in accordance with the patented process are implemented;

3) the place where the manufacturing, sales, importation and other acts of the patented design product are carried out;

4) the place where the act of counterfeiting another person's patent is committed;

5) The place where the infringement result of the above-mentioned infringement occurs.

2. The plaintiff only files a lawsuit against the manufacturer of the infringing product, but does not sue the seller, and if the place of manufacture of the infringing product is inconsistent with the place of sale, the people's court at the place of manufacture has jurisdiction; If the manufacturer and the seller are joint defendants, the people's court at the place of sale has jurisdiction; If the seller is a branch of the manufacturer, and the plaintiff sues the manufacturer of the infringing product for manufacturing or selling at the place of sale, the people's court at the place of sale has jurisdiction.

3. Patent ownership disputes shall be under the jurisdiction of the people's court at the place where the defendant is domiciled.

4. In the case of patent contract disputes, the people's court at the place where the defendant is domiciled or where the contract is performed shall have jurisdiction. The parties to a contract may agree in a written contract to choose the jurisdiction of the people's court at the place where the defendant is domiciled, the place where the contract is performed, the place where the contract is signed, the place where the plaintiff is domiciled, and the place where the subject matter is located, provided that the provisions on hierarchical jurisdiction and exclusive jurisdiction are not violated.

Article 65 of the Patent Law of the People's Republic of China provides that if the patentee exploits his patent without the permission of the patentee, that is, infringes his patent right, and a dispute arises, the parties shall settle it through negotiation; If the patentee is unwilling to negotiate or fails to reach an agreement, the patentee or interested party may file a lawsuit with the people's court, or may request the department in charge of patent work to handle the matter. If the department in charge of patent affairs finds that the infringement is established, it may order the infringer to immediately stop the infringement, and if the party concerned is not satisfied, it may file a lawsuit with the people's court in accordance with the Administrative Litigation Law of the People's Republic of China within 15 days from the date of receipt of the notice of disposition; If the infringer does not sue and does not stop the infringement after the expiration of the time limit, the department in charge of patent affairs may apply to the people's court for compulsory enforcement. At the request of the parties, the department responsible for the administration of patent work may mediate the amount of compensation for patent infringement; If mediation fails, the parties may file a lawsuit with the people's court in accordance with the Civil Procedure Law of the People's Republic of China.