Official Wechat

China IP Magaziine




◆ First Instance Docket: (2016) Su02XingChu No. 113

◆ Second Instance Docket: (2017) SuXingZhong No. 610

CASE 19 :

Jiangsu Province


Patent administrative authorities issues a decision based on effective patent. In subsequent judicial review proceedings, patent is declared invalid for which patentee seeks judicial review. The reviewing court may take into consideration patentee’s right and balance respondent’s interest, by analogizing civil infringement suit for “decision first, lawsuit later” to cancel administrative decision. If the patent is ultimately upheld, the patentee may still assert his right, seeking administrative or judicial remedies.


Appellant (Defendant below): Wuxi City Intellectual Property Office (Wuxi IP Office)

Appellee (Plaintiff below): Jiangyin ChengHua Investment & Development Corp. (ChengHua)

Third Party: Wuxi HongGuang Signs Co., Ltd. (HongGuang)

On September 4, 2014, HongGuang filed a utility model patent application with State Intellectual Property Office for “Balance block die of drum washing machine.” The patent was issued on January 7, 2015 under No. ZL201420510142.8. In April 2016, HongGuang requested handling of patent infringement with Wuxi IP Office, alleging that ChengHua, without permission, made a mode for accused infringing product and

manufactured the product in quantity. It requests against ChengHua (1) to be enjoined from infringing and from using the infringing products; (2) to destroy all infringing products; and (3) to pay damages in the amount of 5,000,000 yuan. After receiving the request, Wuxi IP Office carried out field investigation and conducted oral trial. Then, HongGuang withdrew (2) and (3) requirements. On July 29, 2016, Wuxi IP Office found in its decision that the accused mode falls within the protective range of the patent, and ordered injunction against ChengHua from infringement and use of infringing products. ChengHua, dissatisfied, filed suit in Wuxi Intermediate Court seeking cancellation of the administrative decision. During litigation, ChengHua requested with Patent Reexamination Board for invalidation of the patent. On December 27, 2016, the Board in its decision No. 30975 declared the patent invalid.

Wuxi Court found: although Wuxi IP Office made its decision on some basis of law and facts, the patent has been invalidated which is retrospective on the administrative decision, thereby sustaining ChengHua’s request. It decided: Wuxi IP Office Decision XiZhi(2016) JiuZi No. 12 for Patent Infringement was vacated.

Wuxi IP Office was dissatisfied and appealed to Jiangsu High People’s Court. The High Court found partial improper application of law in the first instance, but otherwise affirmed the decision, dismissing the appeal.

[Judge’s Comment]

In the second instance, the Jiangsu High Court found:

I. The patent right is a private right and is closely connected with the party’s interest. When in dispute, a patentee may choose between administrative or judicial remedies. These remedies, although deferring in authorities, procedures, and methods, they represent the same value orientation, i.e., to balance the protection of patent and public interest. In this case, Wuxi IP Office made its decision based on an effective patent which is proper application of law, following legitimate procedure, and nothing inappropriate.

II. What makes this case unique is that in the first instance trial, the entire patent was declared invalid by the PRB. When the patent is unstable, if the administrative decision is upheld for injunction against ChengHua, it may produce dire consequences for ChengHua, for once the patent is ultimately invalidated, it may suffer irreparable harm; if the litigation is stayed, due to the long process of judicial review of invalidity, it would made the effect of the administrative decision worse for ChengHua.

III. The first instance decision to vacate is based on equitable balancing of both patentee’s right and respondent’s interest. However, in light of the ongoing judicial review of the PRB invalidity decision, it is not final. The first instance decision reliance on Article 47 of the Patent Law is error, because it relates invalidation that becomes effective, and should be corrected.

In comprehensive balancing of both patentee’s right and respondent’s interest, Jiangsu High Court followed the spirit of “Cancellation first, litigation later,” when it considers vacating the administrative decision. The spirit, in patent infringement cases, is to dismiss the infringement after the PRB announces invalidation without waiting for the ultimate judicial review result, and allows the patentee the opportunity of judicial remedies for a separate lawsuit later. This system is an equitable balance of both parties’ interests, increasing litigation efficiency, and best alleviating the negative impact of prolong period of patent litigation upon the parties. The administrative authorities, when handling enforcement, should follow the principle of appropriate penalty for the wrong, to avoid improper injury to respondents’ legitimate rights. This case is the High Court’s trial of new type of intellectual property cases in the “three-inone” framework. It further clarified the principles and standards for enforcement, and promoted the ability of enforcement, having significant effect.