Neoplan Bus GmbH’s design patent infringement claim is not supported by the court due to invalidation of its design patent. The patent owner may draw some lessons from this case to fight against the invalidation request filed by the patent infringer during the patent infringement disputes.

On September 23, 2004, NEOPLAN filed a design patent No. ZL200430088722.4 for its “Starline” coach at the State Intellectual Property Office of China (SIPO). The design was granted on August 24, 2005.

On September 26, 2006, Neoplan lodged a civil lawsuit before the Beijing No. 1 Intermediate Court against two companies affiliated to the Zhongda Group (Zhongda), on the ground that the “A9” coach manufactured and sold by Zhongda infringed Neoplan’s design patent for the Starline coach.

In January 2009, the first instance court made a decision in favour of Neoplan, and awarded damages for an amount of 20 million RMB plus 1.16 million RMB as Neoplan’s legal costs.

Zhongda appealed to the Beijing Higher Court and in July 2009, requested the Patent Re-examination Board (the “PRB”) to invalidate Neoplan’s design patent, as it had been found that the patented design had actually been published in German magazines such as the ninth issue of “BUS Magazine” and “BUS aktuell” prior to the application date of the design patent. Pursuant to Article 23 of the Patent Law (2000 amendment) this prior publication invalidated the design on account of the lack of novelty. The design patent was invalidated in February 2010. Neoplan appealed to the Court against such invalidation but, eventually, the Beijing Higher Court confirmed the invalidation on July 11, 2012.

Since the patent at issue had been invalidated, the Beijing Higher Court rendered a final decision on August 12, 2012 to overrule the decision of Beijing No. 1 Intermediate Court and reject all the claims of Neoplan.

Comments

One may draw some lessons from this case in both prosecution and enforcement in China.

In most patent infringement disputes, the first thing the alleged infringer will do is to seek invalidation of the patent at issue. The patentee must be well-prepared for this invalidation request. Otherwise one may spend a lot of time and money but gain nothing and exposes itself to possible counter claims.

Firstly, it is necessary to pay attention to the differences between the legislations in the home country and China.

In accordance with the current China Patent Law, a design shall lose novelty if it is published or used in China or abroad, with or without the consent of the owner of the design. This standard is stricter than that of EU. The Article 6 of European Designs Directive and Article 7 of the Community Design Regulations provide that if the publication is not made with the consent of the owner, the disclosure shall not destroy the novelty of the design. This discrepancy in legislation between EU and China may create a situation where the patentee can maintain its design patent in the EU, shall lose it in China.

Secondly, the difference between the current version of China Patent Law (2008) and the former version (2000) should also be taken into consideration.

In the 2000 version, publication (no matter in China or abroad) and use (in China) may be deemed as the reason of the design’s lost of novelty. But the use of such design outside China was not taken into account in the assessment of novelty

It should be noted that the requirement of novelty in China’s patent law requires has been strengthened when the law was revised, for the third time, in 2008. Now, regardless whether a design is used or published, in China or abroad, if such disclosure to the public occurs prior to the filing date of an identical or similar patent, this is a cause for invalidation.

Although this had no effect on the NEOPLAN case, since the issue was just about a “publication”, the change above should be paid great attention to by the design owners. The applicants should take all measures to keep confidentiality of their own design (or invention) before filing the patent. The release of the design, even by a third party (the so called “spy photo” in the automobile industry), can be disastrous. Actually, this is apparently what happened in the NEOPLAN case. The publication was not made at the initiative of NEOPLAN.

Thirdly, the risk of invalidation is such that it is advisable to evaluate its stability before taking legal actions.

Because design patent applications in China do not go through substantial examination, the design patent may actually have no novelty. Before taking legal actions, the patentee should evaluate its stability carefully.

There are several methods of evaluating the novelty of a design patent. The patentee may review the history in developing the design. For example, if it is a new generation of the old product, one should consider how far the new design is different from the old one. The patentee may also conduct searches in the database of different IPOs for prior arts.

Many patentees entrust SIPO to conduct prior art searches. Currently the authority provides two kinds of searches. For a design patent filed before October 1, 2009 (when the 2008 amendment of the Patent Law became effective), the Information Center of SIPO can provide “novelty search report”, which is unofficial and only sent to the applicant for reference. For a design patent filed after the 2008 amendment, the SIPO can provide an “evaluation report”, which will be kept as official record, and can be used as evidence in infringement disputes. If the patentee is not confident in the novelty of its design patent filed after October 1, 2009, it may still apply to the Information Center for an unofficial search, and then decide whether or not go on with legal proceedings against the alleged infringer.