Previously, a company in Shenzhen as the patentee submitted the evidence for 5 design patents in a litigation dispute with the client company, and accordingly claimed a huge sum of compensation. Under the authorization by the client company, the Unitalen agency team, making breakthrough out of stability of patent rights, adopted countermeasures against the opponent by filing with the China National Intellectual Property Administration (CNIPA) a request for invalidation of 11 design patents held by the opponent, inclusive of the foregoing 5 patents.
All the patents involved are outer packaging boxes and outer packaging bags of cotton soft tissue products, with similar design elements and design styles. In this regard, 10 patents have a filing date of June 5, 2017, and 1 patent has a filing date of January 10, 2019. None of the patents protects the color of the design.
After the survey, the Unitalen agency team discovered that parts of the design patents of the patentee involve the circumstance of "use before application". Moreover, the other parts of the design patents are essentially combinations of simple design features, failing to comply with applicable provisions on granting patent rights. In order to secure that the grounds of invalidation request are recognized by the collegiate panel, the Unitalen agency team, on the basis of existing evidence, carried out an all-round, technical search on design patent invalidation targeted at the 11 design patents. The search scope included, but was not limited to, patent database, Weibo platform, TikTok short video platform, Taobao, JD.COM, SUNING.COM, maternal and child forums, other third-party websites, etc. After the search, the team obtained more favorable prior design evidence and performed preservation and fixation in a timely manner. Afterwards, with proper deliberation, the team prudently selected the optimal combination modes of invalidation evidence for the respective patents, and formulated the specific invalidation strategies for the respective cases, laying the foundation for the successful enforcement of the subsequent oral proceedings of the cases and for the overall victory in the final invalidation proceedings.
It is an alternative coping strategy to challenge the rights of rights-holders by invalidation proceedings in the case of litigation. In the present case, the Unitalen agency team closely checked the litigation evidence presented by the rights holder, and held the key clue, namely, "use before application" of sets of design features, to carry out meticulous and overall search. In addition, the agents embodied their proficiency in screening and combining evidence.
From the present case, the applicant for design patent shall note that, it is necessary to keep design solutions in proper confidentiality, thereby avoiding the circumstance of instability in the basis of rights due to prior public disclosure or use.