2021 Nian 9 Yue 28 , the Supreme Court People’s Republic of China ( 2020 Supreme row Shen 4945 No administrative ruling, rejected the retrial applicant Tupper ink Co., Ltd. Tupper (hereinafter referred to as Paramount) and the respondent State An application for retrial of the administrative dispute over the invalidity of the patent for invention by the Intellectual Property Office and the third party of the first instance, the China Pen Association.
Tupper retrial applicant refuses to accept the Beijing Higher People’s Court (2019) Beijing line termination 124 number administrative decision, apply to the High Court for retrial. Baile applied for a retrial, claiming that the second-instance judgment found that the patent-related claims involved were not creative and there was an error, and requested the High Court to revoke the invalidation decision and the first and second-instance judgments.
The High People’s Court held that Baile’s retrial application did not comply with the circumstances stipulated in Article 91 of the Administrative Procedure Law of the People’s Republic of China. In accordance with the “Supreme People’s Court on the application (People’s Republic of China Administrative Procedure Law > interpretation of” Article 116 of the second paragraph, “Supreme People’s Court on the handling of administrative cases for retrial Provisions on Several Issues” Article IV, The Higher People’s Court formed a collegiate panel according to law to conduct a review and rejected the Baile retrial application.
Review of Baile’s Patent Invalidation Work
Background and introduction
Nihon Baile has been selling a reversible thermochromic pen called ” Friction Friction ” in the Chinese market since 2008 , which has become a new hot spot in the market in recent years. After this type of pen is written, it can be heated by rubbing the surface of the paper with rubber and other materials, so that the ink will heat up and fade, achieving a similar effect to a pencil and an eraser. It is likely to become a substitute for pencils in the future.
However, Baile has already made a patent layout for reversible thermochromic pens in China. Once domestic companies get involved in related products, they are likely to face the threat of patent litigation from Baile.
To this end, in September 2013 , it was led by the China Pen Manufacturing Association, Beifa Group Co., Ltd., Guangdong Baoke Stationery Co., Ltd., Hefei Ruixue Chemical Technology Co., Ltd., Shanghai Chenguang Stationery Co., Ltd., Suzhou Xiongying Pen and Ink Technology Co., Ltd., Wenzhou Best Pen Industry Co., Ltd., Yiwu Aoxiang Stationery Co., Ltd., Zhencai Stationery Co., Ltd. (sorted by strokes)
The eight companies cooperated to file a request for invalidation of the patents granted by Baile, and on the other hand, they put forward public opinions on the patents under review by Baile.
At present, two early core patents of Baile have been declared invalid, and the most important patent barrier has been eliminated. Many domestic pen manufacturers have successively launched their own reversible thermochromic pens. In the process of implementing the invalidation request, Shanghai Patent and Trademark Office Co., Ltd. and Wenzhou University supported and helped.
2. Project progress and implementation
(1) The main process of the project
Tupper patent invalid first phase from 2013 Nian 9 for the first time to carry out the patent is invalid retrieved May 2017 Nian 4 months Beijing Higher People’s Court of Final Appeal ruled that lasted three and a half, mainly through the following projects:
| time | Mainly through | details | major outcomes |
| 2013.9 ～2013.11 | Early invalid search | To Tupper . 3 patents invention andInvalidation search for 3 invention patent applications | Found that all 6 patents can be challenged |
| 2013.12 | Retrieval result explanation meeting and invalid work kick-off meeting | The Shanghai Institute of Technology introduced invalid search results to representatives of associations and enterprises. At the meeting, all parties agreed to conduct a review3 pieces of patent request is not valid for 3 to mention public opinion filings | Decided to initiate invalidation request and public comment work |
| 2014.5.28 2014.5.29 | Invalid oral trial | Wu Yanmin, Ye Cheng, and Chen Shenjun from the Shanghai Technical Institute attended the oral trial for invalidation, and Yan Xi’an and Pan Mingchu appeared in court as technical experts | |
| 2014.8.15 | Invalid decision | Structural patent: Partially invalid Friction body patent: maintain effective Ink Patent: Maintain Effective | Structural risks have been eliminated |
| 2014.8.28 | Invalidation decision briefing | The Shanghai Institute of Technology explained the content of the three invalidation decisions and subsequent administrative litigation strategies Public comments on 4 new applications | Start administrative litigation Decided to continue public comments |
| 2014.9 | Public opinion | Prepare and submit 4 public comments |
|
| 2014.10.30 | Our side filed an administrative lawsuit | Administrative litigation against the invalidation decision of friction body patent and ink patent | |
| 2015.2 | Visit the patent examiner | Wu Shaoping and Wu Yanmin from the Shanghai Technical Institute visited the examiner of the State Intellectual Property Office | Decided to send a letter to the State Intellectual Property Office in the name of the Association |
| 2015.3.23 | Receipt of notice of Baile litigation | Baile filed a lawsuit against the invalidation decision of a structured patent | |
| 2015.6.10 | Baile litigation begins at first instance | Ye Cheng and Xing Zhi of the Shanghai Technical College attended the first-instance debate, and Pan Mingchu appeared in court as a technical expert | |
| 2016.5 | The Association sends a letter to the State Intellectual Property Office | The association sent a letter to the State Intellectual Property Office, hoping to pay attention to the impact of Baile’s patent layout on my country’s national industry | Aroused great attention from the leaders of the National Intellectual Property Bureau |
| 2016.7.12 | The first instance of our lawsuit opens | Tribological patent and ink patent administrative litigation opened in the first instance, and Ye Cheng and Chen Shenjun from the Shanghai Technical College attended the debate | |
| 2016.8.19 | Project progress report | The Shanghai Institute of Technology introduced the status of the letter to the State Intellectual Property Office and the latest development of Baile’s patents, and decided to provide public comments on the 7 newly published applications | Decided to continue public comments |
| 2016.9.12 | The verdict of our first instance of the lawsuit | Friction body patent: all invalid Ink Patent: Maintain Effective | Risk of friction body has been eliminated |
| 2016.10.17 | We filed an appeal | Appeal an ink patent | |
| 2016.12.1 | Visit the State Intellectual Property Office | Wu Shaoping, Yao Hezhong, Ye Cheng called on Minister Wang Cheng of the State Intellectual Property Office and his party | 1. Strengthen the patent examination of Baile
2. Hope to continue to submit public comments
3. Strengthen exchanges between the National Intellectual Property Bureau and the industry |
| 2016.12.19 | The second instance of our lawsuit opens | The second trial of the administrative litigation of friction body patent and ink patent opens, and Ye Cheng and Chen Shenjun from the Shanghai Technical College attended the debate | |
| 2017.1 | Public opinion | Prepare and submit 7 public comments | |
| 2017.3.14 | Project Progress | Decided to invalidate the ink and side press patents | |
| 2017.4.5 | The second instance of our litigation was pronounced | Uphold the first-instance verdict Friction body patent: all invalid Ink Patent: Maintain Effective | Re-claimed invalidation of the ink patent and increased the winning side |
3. Results
First of all, the two patents of structure and friction body have been declared invalid. These two early core patents have the largest scope of protection and the most intuitive protection objects, so they have the greatest impact on enterprises . The elimination of these two patent barriers allows domestic pen manufacturers to launch Reversible thermochromic pen.
Secondly, by successively submitting public opinions on 14 patents in application, it helped examiners to improve the quality of examination, so that the patent application of Baile was rejected or the scope of authorization was narrowed, providing a broad space for domestic pen manufacturers to independently design reversible thermochromic pens. .
Thanks to lawyers Ye Cheng and Wu Yanmin of Shanghai Patent Office for their support and help to China Pen Association.
Remarks: The High Court rejected the re-examination patent as a structural patent