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Determine

Factors to Be Considered When Determining The Contribution Rate of A Patent in China-Part 2

IPR Daily

2022-12-05 10:55:27

Case 11. Mitsubishi Electric Co., Ltd. v. Taizhou Diao Electric Appliance Co., Ltd., etc., regarding design patent infringement (2018 Hu Min Zhong No. 434)


Regarding the sued infringing products, Mitsubishi filed this design patent infringement lawsuit and another invention patent infringement lawsuit against Diao company, and claimed 1/6 and 5/6 of the illegal interest for compensation in two cases respectively. The asserted design patent and the invention patent in another case are relevant to the whole product, the first instance court decided that the contribution rate of the asserted patent and another invention patent is 100%, and respect the ratio of compensation claimed by Mitsubishi is reasonable.


Case 12. Dongguan City Xingyu Arts and Crafts Co., Ltd. v. Shenzhen City Liansheng Xingye Since and Technology Co., Ltd. regarding design patent infringement.


The first instance court decided that the contribution rate of the asserted patent is 50%, because the asserted patent is decorative strap, the contribution of this design patent to the product value is relatively high.


III. Conclusion


1. Factors Influence the Contribution Rate of Invention or Utility Model Patent

1) Whether the infringing product infringed several patents.

2) In addition to the patent infringement, whether the infringing product also infringed Plaintiff's other IP rights, e.g., trademark, copyright, trade secret, etc.

3) Whether the infringing product is a part of another product.

4) The inventiveness value of the asserted patent, whether this patent is a basic patent or core patent, whether this patent has survived several invalidation attacks.

5) The influence of the problem solved by the asserted patent to the consumer's choice when purchase products.

6) Whether the asserted patent is a standard essential patent. If it is not a SEP patent, but is widely used by the major manufacturers in the industry, the contribution value of this patent will be relatively high.

7) The price, sales number and interest of the patented product in comparison with the non-patented product.

8) Other factors, e.g, Defendant's own trademark, patent, trade name, trade secret, which also contributed to the interest of the infringement, should be deducted when deciding the contribution rate.

9) Whether the two parties reached a consensus regarding the contribution rate claimed by Plaintiff. 

10) Whether Defendant is positively submitting evidence to prove its infringing scale and interest from the infringement.

11) Whether Defendant submitted sufficient evidence proving the contribution ratio of the asserted patent is not high.


2. Factors Influence the Contribution Rate of Design Patent

1) Whether the infringing product infringed several patents.

2) In addition to the patent infringement, whether the infringing product also infringed Plaintiff's other IP rights, e.g., trademark, copyright, trade secret, etc.

3) The price, sales number and interest of the patented product in comparison with the non-patented product.

4) The type of the design patent and the degree of influence of the design to the choice of consumers when purchasing products. Generally, the design of shoes, watches, decorative stripes, furniture, lamps, mobile phone brackets, humidifier, facial cleansers have higher influence to consumers' choice of purchasing, thus the contribution rate of those design patents are relatively high. On the contrary, the design of section bars, power switches, fishline wheels, etc., has lower influence to consumers' choice of purchasing, and the contribution rates of such design patents are relatively low.

5) Whether the design patent is the design of the whole product. If the design patent is only a part of the whole product, the contribution ratio will be lower. The specific ratio should be based on whether this part is the key part or crucial part of the whole product, and whether the design plays an important role for the interest of the whole product.   

6) Other factors, e.g, Defendant's own trademark, patent, trade name, trade secret, which also contributed to the interest of the infringement, should be deducted when deciding the contribution rate.

 

Author

Nancy Qu

微信图片_20220725144054.jpg

Partner Attorney at Law Patent Attorney

Chang Tsi & Partners

Nancy Qu specializes in the prosecution and enforcement of multiple intellectual property rights, including trademarks, patents, copyrights, trade secrets and domain names. Ms. Qu has over 10 years of experience as a litigation lawyer and patent attorney. She is experienced in the development of strategy in patent and trademark lawsuits, enforcement of effective judgments, as well as in negotiation strategy. She is specifically skilled at handling complicated and difficult IP infringement cases. Ms. Qu has successfully helped to protect the IP rights of many Fortune 500 companies. Nancy Qu is fluent in English and Chinese.


Email: nancyqu@changtsi.com

Phone: +86 10 88369999


Source: Nancy Qu

Editor: IPR Daily-Selly

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