Patent Infringement to Massage Machine

Release Time:2009/5/8 17:24:23            【Font-size:Big Middle Small】

 

【Case Briefing】

The plaintiff, a Japanese family company incorporated in August 2000, applied for a PCT invention patent of some Massage Machine. The International Bureau of World Intellectual Property Right Organization (WIPO) put it to publication in Japanese in March 2001. In April 2001, the invention was under the application process inside China to the State Intellectual Property Office (SIPO). It was put to publication by SIPO in September of the same year and was granted invention patent in August 2004. One month later, the plaintiff bought a Kaier branded massage machine made by Taizhou Zhongcheng Company in Shanghai New Hualian Shopping Mall for RMB 18,000. The certificate of conformity with the machine showed it was tested on June 26, 2004. By comparison, the plaintiff found that the marketed massage machine used some of its patented technologies. The plaintiff thus filed a lawsuit against the defendants for offending its patent.

【Result of Trial】

It was decided by Shanghai No.1 Intermediate People’s Court that the provisions of section 13 of PRC Patent Law dictates the temporary protection of invention patents. Pursuant to the Patent Cooperation Treaty (PCT)to which China is a party, the publication made by the International Bureau of WIPO shall have the same effect as the publication made by any particular country, but limited to the official language of that country. If the international publication dictated no language of a particular country, it is then provided for by PTC that the domestic legislation of any particular country may dictate the aforesaid effect using any applicable laws.  Pursuant to the second clause under section 111 of the By-rules of PRC Patent Law, any international application for invention patent, when publicized by the International Bureau of WIPO in the language of Chinese, shall take effect since the international publication day and apply to the provisions of section 13 under Patent Law. Any international application announced by the International Bureau in other languages than Chinese shall take force subject to the announcement by the patent administrative department under the state council and apply temporary protection. Therefore the invention patent of the plaintiff to the trial shall be under temporary protection since September 2001. Taizhou Zhongcheng Company shall be held guilty for unauthorized use of the patent right of the plaintiff after the effective date and shall pay reasonable royalties. New Hualian Shopping Mall shall also be held responsible for infringement to the patent as it failed to certify the source of products and distributed such products after the plaintiff was conferred due patent right. The court thus decided that: i. New Hualian Shopping Mall shall stop the infringement and indemnify the plaintiff an economic compensation of RMB 15,000; ii. Taizhou Zhongcheng Company shall pay the plaintiff the patent royalties of RMB 100,000.

【Case Analysis】

It is the first trial against the infringement to PCT patent in accordance with Patent Corporation Treaty. It set a precedent of how to decide the commencement of temporary protection to PCT patent and was able to provide legal protection to PCT patents. What’s learned from this trial is helpful to both the international applicant for PCT patent and domestic competitors in understanding the rules of international competition and maintaining self interests with resort to legal actions.

 

                                                                          (source: Shanghai IP Administration)

 

Release Time：2009/5/8 17:24:23[ Print ]