Research On The Application Of Prior Art Defence

Under the Patent Law of PRC, patent infringement lawsuits are separate from patent invalidation proceedings. Therefore, if the accused infringing party regards that the involved patent is lack of novelty or creativity and should not be granted by SIPO, it have no choice but request the Patent Reexamination Board to declare the invalidation of the involved patent right. However, such proceeding may cost the parties a very long period of time to get the final decision so that it may take a very long time for courts to hear a patent infringement case. As we all know, most technologies may be valuable for only a few years and would be replace other more advanced technology soon. Thus it is vital for the implementer of prior art to get rid of the litigation as soon as possible.To solve this problem, the prior art defense system was introduce into Patent Law in 2008.Since then, in patent infringement case, the accused party may try to prove that the technical solution implemented has already been known to relevant public.in order to prove that his exploitation does not constitute infringement. However, even if the current patent law has regulated the prior art defence, it has not been same in many aspects during the application of such defence, for instance, whether the court can hear the defence first and make a non-infringement judgement directly, etc..With respect to these issue, many scholars and judges has given their own answers. Unfortunately, most answers are different from each other, even if the Supreme People’s Court has issued several judicial interpretation.Part I provides an overview on the prior art defense, to introduce some basic theory of prior art. Subsection I analyze the history, the theoretical fundament, the legislative intent and the role of the prior art defence. Subsection II presents the current situation on the prior art defense in China. Finally, the subsection III introduce the current disputes on prior art defense in the precedents in China. This subsection also introduces and connects the discussion on the application sequence, the standards for making prior art defence.Part II is the vital parts of this article, which discuss the nature of the prior art defence, which may decide whether the court can examine the prior art defence made by defendant first and directly make a non-infringement judgement: the current patent law has not ruled that if the defendant make a prior art defence, whether the court should compare the involved patent and the accused infringing technical solution before examining the prior art defence. Therefore, it would not violate any rule to examine such defence at first. Then, the writer found that prior art defence should be a defence that the technical solution implemented doesn’t fall into the protection scope of plaintiff’s patent so that the plaintiff can never make a claim of infringement. So the application of prior art is not based on the result of technical feature comparison between the accused infringing technical solution and the claimed patent. Compared with applying the defence after the patent infringement verdict, it is more efficient to examine the prior art defence directly with less procedures so that it can relief the implementer of the prior art in time.The subsection II focus on and analyzes the standard of application of prior art. Pursuant to the patent law and relevant regulations, to prove the accuse infringing technical solution is part of prior art, the defendant should provide the a document, a product or any other kind of evidence to prove that the essential content of accused infringing technical solution had been known by the skilled technician of involved field before the application date of the involved patent right. If the accused infringing technical solution is not novel or creative enough, the prior art defence should be adopted. The last subsection discuss the whether a conflicting application can be used as the defence of non-infringement and under what circumstance such defence should be adopted.Part III make some applicable advice on how to apply the prior art defence based on the above analysis. Starting with comments on the latest draft of judicial interpretation on the trial of patent infringement dispute, the part conclude the reason why the latest draft of judicial interpretation adopted such standard of application of prior art defence and then make a suggestion that it should be ruled in new judicial interpretation that the prior art defence made by defence should be examine first and the conflicting application can also be adopted as the evidence of non-infringement.