Comments on the two latest Guiding Cases for Patent Adjudication
Cui Guobin is a professor at Tsinghua University Law School.
[Guiding Case No. 217].
According to the current Civil Code, the E-Commerce Law and other laws, when a rights holder sends an infringement notice to an online platform alleging that an operator (or user) on the platform has infringed intellectual property rights, the online platform should usually take measures such as deleting, blocking, or disconnecting the link to stop the alleged infringement, and then forward the infringement notice. The on-platform operator may send a counter-notice in response to the infringement notice. If the right holder fails to file a lawsuit or protect its rights through administrative procedures in a timely manner, the Platform will cancel the above-mentioned measures;If the rights holder files a lawsuit in a timely manner or protects its rights through administrative procedures, the platform will continue to maintain the measures it has taken. In this way, if there is an error in the infringement notice of the right holder, it may cause losses to the operators on the platform. Theoretically, online platforms may, at the request of operators on the platform, re-examine their own decisions and promptly cancel the measures they have taken. However, if the judgment is wrong, the platform may bear the legal risk of helping the operators on the platform to infringe. As a result, many times platforms do not have the incentive to cancel the measures that have been taken in a timely manner. As a result, erroneous infringement notices may cause irreparable damage to operators on the platform, such as missing the ** sales season as described in Guiding Case No. 217.
In the face of the above-mentioned impasse, Guiding Case No. 217 provides a solution: when a platform's measures will cause irreparable harm to the on-platform operator, the on-platform operator may request the people's court to take act preservation measures and order the online platform to cancel the measures it has already taken in a timely manner. The Guiding Case clarifies the various factors that the court will comprehensively consider in this act preservation procedure, including the possibility of infringement by the operator on the platform, the possibility of irreparable damage, the weighing of the impact of the platform's measures on both parties, and the impact on the public interest, which is in line with social expectations. According to the current law, when applying for act preservation, the actor shall also provide a guarantee. Therefore, the Guiding Case further analyzes the factors to be considered when determining the amount of guarantee, emphasizing the need to ensure that the amount of guarantee is both reasonable and effective, and finally determines the dynamic guarantee amount as 50% of the sales amount as appropriate.
Under the framework of existing laws, the above-mentioned Guiding Cases are of great significance in guiding parties to make up for the deficiencies of the "notice to takedown" procedure of online platforms through judicial procedures, and to effectively balance the interests of online platforms, rights holders and operators on the platform. Of course, the act preservation procedure in civil litigation is, after all, a formal judicial procedure, and initiating such a procedure will undoubtedly consume substantial social resources. There is reason to believe that only when the measures taken by the platform materially threaten the business interests of the operators on the platform, the operator may challenge the platform's decision through this procedure. In the future, policymakers may consider further improving the "notice-takedown" rule under the framework of online platforms, giving platforms more discretion and encouraging platforms to directly evaluate counter-notices submitted by operators to decide whether to cancel the measures already taken, or replace them with alternative security measures. In this way, it can reduce the pressure of the judicial process of act preservation procedures and reduce the cost of handling intellectual property infringement disputes.
[Guiding Case No. 222].
In disputes over the ownership of patents or disputes over rewards and remuneration for service inventions, it is common for patentees to maliciously abandon their patent rights and harm the interests of the other party. In patent ownership disputes, the reason why the patentee chooses this way is often because the disputed patent may change hands, which in turn will restrict the patentee's freedom of action in the futureOr, the patentee is no longer willing to make a wedding dress for another person and pay for the maintenance of the patent in vain. In a dispute over remuneration for service inventions, the patentee may not be willing to pay the reward or remuneration to the inventor, so he may choose to give up the patent right.
Guiding Case No. 222 focuses on the termination of a patent right due to the patentee's deliberate failure to pay patent annuities in the course of a patent ownership dispute. The court made it clear that this should be a general infringement, not a patent infringement in the sense of patent law, and the cause of action could be determined as a dispute over compensation for property damage. After the dispute arises, the patentee violates the principle of good faith and fails to fulfill its responsibilities as a good manager, and shall be liable for damages. This judgment clarifies the norms of conduct of patentees during the period of patent ownership disputes, and has an important guiding role for the public. For future decision-makers, this case also has important implications, such as whether reasonable preservation or restoration procedures can be set up in the patent law after a dispute over patent ownership, so as to ensure that the opposing party can avoid malicious abandonment of the patent right during the dispute period. After all, it is not easy for a court to determine the amount of damages for a waiver of a particular patent;At the same time, a bad faith waiver may not always be able to pay such damages.
*: Information Bureau of the Supreme People's Court.