Deals & Cases

Intellectual Property 2019-04-24
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DR & AJU Successfully Denies the Infringement of a Utility Model Right Related to Medical Appliances and Dismisses a Direct Application for Ruling

Company A, a manufacturer, and seller of dental appliances, accused a competitor Company B on the grounds that the product sold by Company B infringed A’s registered utility model rights. The prosecution decided to not indict for reason of a clear lack of suspicion for Company B. However, afterwards, Company A directly applied to the court for a ruling on the grounds that the above decision of non-indictment was unjust.

DR & AJU represented Company B at the direct application phase. DR & AJU argued as follows: (i) Company A had to correct its application for the registration of its utility model by reducing the scope of claim in an effort to overcome the reasons of invalidation during the invalidation trial of the registered utility model; Company A’s current argument that the product of Company B belongs to the scope of Company A’s registered utility model right while in fact Company B’s product lies within the scope that was consciously excluded by company A in the process of correction cannot be permitted as it goes against the principle of estoppel, and; (ii) the product of Company B was produced only utilizing publicly known technology before the application for the utility model, or the product embodies the well-known and commonly used technology that could be easily implemented with publicly known technology by a person having general knowledge in the relevant technical area; therefore regardless of Company A’s registered utility model company B’s product did not infringe upon Company A’s utility model right. The court adopted such an argument and granted a judgment in favor of Company B, thereby dismissing Company A’s direct application. This case has confirmed that in case a utility model right holder consciously excluded a third party’s embodied product, compared to the registered utility model, from the scope of application, if the utility model right holder later changes his position and argues the third party’s embodied product infringes the utility model right, such an argument will be denied under the principle of estoppel. Furthermore, this case also confirmed that in case the third party’s embodied product, compared to the registered utility model, is produced only utilizing publicly known technology or the product embodies well-known and commonly used technology that could be easily implemented with publicly known technology by a person having general knowledge in the relevant technical area, the comparison with the utility model is not required and such an embodied product is not covered under the relevant utility model right, i.e. the principle of free-to-work technology.