Recently, the Intellectual Property Division of the Supreme People’s Court selected 48 exemplary cases from the 3,460 cases concluded in 2021 to form the "Summary of the Essentials of Judgments of the Supreme People's Court Intellectual Property Division (2021)". Among these cases, the following two cases handled by Beijing Chofn Law Firm (hereinafter referred to as "Chofn Law Firm") were selected.
Determination of the Location of Patent Infringement Related to Information Network
The patent in dispute is an invention patent for method and system of a computer software, entitled "A method and system for tracking international logistics information". In this case, the appellee, a Shenzhen network technology company believed that the appellant used the method and system of the invention patent it owned, thereby infringing its invention patent right. In this case, the appellant believed that the place of infringing acts was located outside China, and therefore the Chinese patent right was not infringed.
The guiding significance of this case lies in the fact that the server used in the disputed technical solution is not located in China but is located outside China and in Hong Kong (China), thereby leading to a new point of view that the infringement is not supported when infringement acts are not conducted within China. Through this case, the Intellectual Property Division of the Supreme Court established for the first time the judgment and legal application of the location of the infringement of an information network patent, and determined that "the location of the server of the alleged infringing website is not the only factor for judging the location of the infringement. If the alleged infringer ONLY uses the argument that location of the alleged infringing website server is outside the territory of China, it is generally not supported to defend that its actions do not infringe Chinese patent rights.”
Burden of Proof on Ownership When Obtaining Patents by Improving Others' Non-Disclosed Technical Solutions
In this case, the appellant made subsequent improvements based on the patent licensed by the appellee and applied for the patent in dispute which is now granted. The appellee holds that the patent is a plagiarism of its patented technology, and hence it should be attributed to the appellee.
The focus of the dispute in this case is whether the patent in dispute is a plagiarism of the licensed patented technology and technical secrets, or whether it constitutes a new technological achievement with the features of substantial or creative technological progress for the subsequent improvement of the licensed patented technology.
Through this case, the Intellectual Property Division of the Supreme Court established for the first time the distribution of the burden of proof on ownership when obtaining a patent by improving others' non-disclosed technical solutions, and determined that "if the plaintiff claimed that the defendant applied for a patent based on the plaintiff's non-disclosed technical solution, the plaintiff shall provide evidence to prove that the patent in question originates from its previously completed non-disclosed technical solution and the defendant was able to know the technical solution before the application date of the patent involved. If the defendant claims that it has improved the technical solution of the plaintiff’s technical solution and therefore enjoys the patent right involved, at least the defendant shall prove or reasonably explain that there is a difference between the patent involved and the technical solution of the plaintiff, and that the difference constitutes the substantive features and progress of the patent involved.”
Following the “Series of Disputes over the Recognition of Patent Ownership of Service Inventions” represented by Lawyer Shanghai Hu, which was included in the Annual Report on Intellectual Property Cases of the Supreme People’s Court (2020), the cases represented by Chofn Law Firm were once again included in the exemplary case of "Summary of the Essentials of Judgments of the Supreme People's Court Intellectual Property Division (2021)". This reflects the rich experience of the Chofn Legal team in cutting-edge legal practice and unique competitiveness in the innovation of the combination of law and professional knowledge.