-He Peiping Vs. Wu County Institute of Economic and Technology Development
Plaintiff: He Peiping, Male, 32 years of age. Teacher, Lianshui County Administrative Station, Radio and TV University, Jiangsu Province.
Agents: Liu Peilie, Shen Bilian, Lawyer, Nanjing Maritime Law Firm, Jiangsu Province.
Defendant: Wu county Institute of Economic and Technology Development, Jiangsu Province (hereinafter referred to as the Institute).
Legal Representative: Chen Binggen, Director
Agent: Shi shiying, director, research department for building materials, the Institute.
Agent: Tang zhen, Lawyer, Nanjing First Law Firm, Jiangsu province.
The plaintiff He Peiping brought a suit before the Nanjing Municipality Intermediate People\'s Court against the defendant the Institute for infringement upon the patent rights for utility models.
The plaintiff claims: The grey tile shaped in the whole piece (hereinafter referred to as the grey tile) is the patent of the plaintiff. The new model multi-joints tile (hereinafter referred to as the multi-joints tile)
developed and produced by the defendant falls within the protected scope of the plaintiff\'s patent rights with respect to its principal shape and characteristics, thus infringing upon the plaintiff\'s patent rights. The plaintiff requests the defendant to stop the infringement and compensate for his economic losses.
The defendant states: The multi-joints tile developed and produced by the defendant is different from the grey tile of the plaintiff in such aspects as modeling, technology and the quality of the materials. There does not exist the facts of infringement for the multi-joints tile is developed and produced totally by the defendant with independent composition and application for a patent had been made before the public announcement of the plaintiff\'s patent.
The Nanjing Municipality Intermediate People\'s Court formed a collegial panel according to the law and, by conducting public hearings, ascertains:
The grey tile of the plaintiff He Peiping, a new modeled roof covering tile, was developed with success in June 1986. On July 17 of the same year, the plaintiff filed an patent application with the Patent Office of China for utility model (the patent application number is CN86203975). The scope of patent protection requested was: (1) Shaped in round curve tube; (2) A step between a certain distance of the inside and the outside of the tile; (3) Equal width with the ordinary grey tile, length 4-7 grades, grade distance about 3050cm. The patent application was announced publicly by the Patent Office of China on November 7, 1987 and He Peiping\'s grey tile was granted the patent right for utility model on February 28, 1988.
A patent application with regard to the multi-joints tile of the defendant the Institute was filed with the Patent Office of China for utility model on October 4, 1987 (the patent application number is CN87212348). The scope of patent protection requested was: (1) Shaped in round curve; (2) Front sides of the covering tile and the bottom tile shaped in multi-joints; (3) The length of each joint of the covering tile equal to its width, generally 4-7 joints, each joint about 30-60cm in length; (4) A hollow sucked trough on the back side in the front of the covering tile 0.5-1cm in width and 0.3-0.8cm in depth, a flange on the back adage of the front side of the bottom tile, and the trough is to be connected and jointed to the flange; (5) A flat surface on the bottom tile for stabilization. Public announcement was made by the Patent Office of China with respect to the the patent application.
Afterwards, the defendant transferred the multi-joints tile technology to eighteen units for use and obtained transfer fees 262,000 yuan among which pure interests 55,000 yuan are gained deducting the moulder fees, Technology training fees and the amount of taxes paid.
In July 1988, the plaintiff He Peiping got to know that the principal shape and characteristic of the multi-joints tile technology being transferred fell under the scope of patent protection for the grey tile on the advertisements on TV or newspapers, thus bringing an action before the court on the grounds that the defendant has infringed upon his patent rights.
The Intermediate Court, through conducting hearings, holds: Article 59 of the Patent Law of the People\'s Republic of China stipulates that whether there exists an infringement upon the patent right of the patentee shall be determined by the scope of patent protection claimed by the patentee. The scope of patent protection claimed by the plaintiff for the grey tile is \"shaped in round curve tube, modeled in steps\"; and the principal shape and characteristics of the multjoints tile of the defendant are \"shaped in round curve, modelled in multi-joints\". Although there is difference in termination between the two, the essentials are the same. Therefore, the principal shape and characteristics of the defendant\'s multi-joints infringe upon the patent rights claimed by the plaintiff. Although there are differences in size, quality of the material and color and etc. between the multi-joints tile and the grey tile, these are not inventions and composition in entirety and no substantial technology breakthrough are made, which, therefore, will not affect the determination of the facts of infringement.
The new technological characteristics such as \"trough and flange connection and joint\", a flat surface for stabilization and etc. with respect to the defendant\'s multi-joints tile are contents not covered by the scope of patent rights protection of the plaintiff\'s grey tile, thus belonging to an invention-creation. Therefore, these two items of technology do not constitute infringement. However, the application of these two items of new technology depends upon the exploitation of the utility model of grey tile of the plaintiff. Therefore, the infringement facts with respect to the principal shape and characteristics of the multi-joints tile of the defendant cannot be refuted.
According to the principle of the earliest application stipulated in Article 9 of the Patent Law, the defence by the defendant that, because the time for his patent application is earlier to the time for public announcement of the plaintiff\'s patent, there is no infringement, cannot be established.
Based upon the above facts and grounds and in accordance with the provisions of Article 95 of the General Principles of Civil law of the People\'s Republic of China, the patent rights obtained by the plaintiff He Peiping shall be protected by the law. In accordance with the provisions of Article 118 of the General Principles of Civil Law, the plaintiff He Peiping\'s claim for the defendant to stop infringement and compensate for the loss is justified and shall be supported. Viewing on the fact that the interests obtained by the defendant from transferring the patent technology are to some extent relevant to his two items of new technology, appropriate compensation may be considered.
Based on the above, the Nanjing Municipality Intermediate People\'s Court made the decision on April 22, 1989:
I The defendant shall immediately stop transferring the technology related to the infringing round curve shape and multi-joints model with respect to the multi-joints tile.
II The defendant shall make a compensation of 25,000 yuan to the plaintiff for losses and shall be paid in a lump sum. Within ten days after the date the decision becomes effective.
Both parties accept the judgment of the first instance after it is pronounced.
After the service is made, the plaintiff and the defendant request the court to conduct conciliation on the transfer matters related to the patent rights of the grey tile. Although the multi-joints tile technology of the defendant is really more perfect and practical than the grey tile of the plaintiff, the exploitation of this technology by the defendant must obtain the permission of the plaintiff in accordance with the law. In order to facilitate the development of science and technology and the transformation into productive force from patent technology so as to better serve the socialist construction, the plaintiff and the defendant reached on the following agreements under the conciliation of the Intermediate Court:
I The plaintiff transfer the patent rights already obtained for utility model relating to the grey tile and the grey tile molders to the defendant. The transfer fee shall be 10,000 yuan and shall be paid by the defendant in a lump sum to the plaintiff within one month after both parties completed the formalities relating to patent rights transfer with the Patent Office.
II The plaintiff shall withdraw from the Patent Office of China its opposition against the patent application of the defendant.
III The plaintiff shall give instruction with respect to the exploitation of the grey tile technology by the defendant. |
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