On The Prior Art Defense In Judgment Of Patent Infringement

The principle of the prior art defense is a new amendment to the Chinese Patent Law in 2008, and the establishment of the prior art defense principle is of great importance. Governed by the model of the separate judgment of patent confirmation and patent infringement, the accused infringer can directly put forward the prior art defense when he is initially judged to infringe the patent right. This can, on the one hand, conserve the judicial or administrative resources in the settlement of the dispute, and on the other hand, improve efficiency and cut down the parties'cost. The ultimate cause of permitting the application of the prior art defense is that the public has the right to freely apply the prior technology and the patentee has no right to interfere this freedom. One of the purposes of the patent system establishment is to increase the wealth of social and public knowledge. Therefore, the public can freely apply the patented technology when it turns to the social wealth after the period of validity. This is naturally involved in the content of the legislative purpose of the Patent Law. On the basis of clearing some rules related to the prior art defense in the interior of the Patent Law, this study mainly discusses the concrete problems in application of the prior art defense.This paper contains three parts: the fundamental questions of the prior art defense, the coordination of the prior art defense within the Patent Law and the application of the prior art defense.Part One presents the fundamental questions of the prior art defense. It first explicates the definition of the prior art defense, that is, the accused infringer who confronts the alleged infringement from the patentee can defend himself by arguing that what he uses is prior arts to counteract the alleged infringement. And the accused infringer can claim that he will not infringe the patent right of the patentee. Besides, this part discusses the appellation of the prior art defense and contends that the name of the prior art defense should be used in order to consist with the current laws. Moreover, this study analyzes the free prior art defense and the unfree prior art defense. The unfree prior art defense is under the control of a third party's valid patent excluding the patentee, and the accused infringer can defend himself with that. And then this article demonstrates that the contradicting application can defend against the alleged infringement. Finally, the paper introduces some regulations of the prior art defense in Germy, America and Japan based on the comparative law.Part Two offers the coordination of the prior art defense within the Patent Law. Firstly, it construes the defense model of the prior art defense. Article 62 of the Patent Law adopts the right barrier defense model, but it has some defects in diction. Therefore, it is suggested that Article 62 should be revised as: in the dispute of patent infringement, if the accused infringer has evidences that can prove what he uses is prior arts or prior designs, what he does is not an infringement act. Secondly, the study analyzes the relationship between the grace period of novelty and the prior art defense. Besides listing three exceptions of losing novelty, article 24 should define the three special cases as being not the prior art to the technology. Finally, this part probes into the unfair problems which are caused by the prior arts and the withdrawing an application for a patent. It is suggested that the first half of Clause 2 of Article 36 of the Rules for Implementation of the Patent Law should be deleted and be revised as: the declaration of withdrawing an application for a patent should be announced in the subsequently published Patent Gazette.Part Three demonstrates the application of the prior art defense. First, this paper claims that the prior art defense can be applied to both identical infringement and equivalent infringement. Besides, it analyzes the targets of comparison of the prior art defense. It declares that the comparison between the accused infringement arts and implicated patent technology should be first conducted, which is consistent with the logical and judgmental order, the defense requirements, and litigation status of the right holders. Lastly, the paper discusses the comparison standard of the prior art defense which should employs the equivalence standard for it has legitimate, practical and legislative basis. It also analyzes the relationship between novelty judgment and identical infringement and concludes that they have no logical consistency and that creativity is the same as equivalent infringement in subjectivity and body in rational processes. Understanding these relationships is the foundation of establishing comparison standard.