On June 23, 2019, Mr. Bisheng SHI, partner of Zhong Lun Law Firm, attended the Symposium on Certain Issues in Patent Litigation and participated in the panel discussion about introducing patent invalidity as a defense to patent infringement. The symposium was strongly supported by the Intellectual Property Tribunal of the Supreme People’s Court, the Intellectual Property Court of the Supreme People’s Court, the Beijing High People’s Court and the Beijing Intellectual Property Court.
Attendees of the Symposium included Qin Yuanming, Presiding Judge of the Intellectual Property Tribunal of the Supreme People's Court, ZHOU Xiang, Vice President of the Intellectual Property Court of the Supreme People's Court, LIU Ming, Director of the Research Department of the Reexamination and Invalidation Department of the Patent Office, CNIPA, and some representatives from Intel and Midea, etc.
The topics discussed at the Symposium covered whether to introduce patent invalidity as a defense to patent infringement in the fourth revision to Patent Law, whether to grant preliminary injunction relief during the patent infringement proceeding, whether to support interlocutory judgment for a preliminary injunction and whether to award high damages in patent infringement litigations.
Mr. SHI, delivered a speech in the panel discussion focusing on whether to introduce patent invalidity as a defense to patent infringement. Mr. SHI commented that for the fourth revision to Patent Law, it is a proposal of profound significance to introduce patent invalidity defense to patent infringement litigation because of the importance of the patent validity.
Firstly, if the defendant in patent litigation could raise patent invalidity defense, the litigation expenses incurred by plaintiff or defendant would decrease. Moreover, the defendant has the option either to raise patent invalidity defense or to file an invalidity petition with CNIPA, depending on its aims and litigation strategy.
Secondly, introducing patent invalidity defense is beneficial for enhancing the effectiveness and efficiency of patent protection because it may avoid and resolve a mass of problems caused by the bifurcated system for the patent infringement and invalidation proceeding.
Thirdly, Beijing IP Court has accepted more administrative cases regarding patent invalidation in these years, resulting in the trial of civil cases being delayed. Introducing patent invalidity defense could also help reduce the number of administrative patent cases.
Finally, introducing patent invalidity defense is entirely feasible. The time for this defense would come if only this defense is legalized by amending the relevant laws. Furthermore, the IP Court of the Supreme People’s Court has centralized jurisdiction over all the civil and administrative cases on appeal concerning patent and other IP rights involving professional technologies, which will facilitate to unify the criteria of trial of patent validity issues in civil and administrative proceedings once the patent invalidity defense really comes.