*AI-generated translation, for reference only.

[Keywords] Civil, ownership and infringement of patent right, infringement of invention patent, manufacturing act, using act, maintenance act, repair act

Case Facts

The plaintiff, Jiangsu Hong [REDACTED] Rotary Compensator Technology Co., Ltd. (hereinafter referred to as Hong [REDACTED] Company), is the patentee of the invention patent with patent number 20061004****.4, titled "High-pressure Resistant Rotary Compensator for Pipelines" (hereinafter referred to as the patent in question). Hong [REDACTED] Company had previously filed a request for handling a patent infringement dispute with the former Xinjiang Intellectual Property Office (hereinafter referred to as Xinjiang IPO) on the ground that the high-pressure rotary compensator products manufactured and sold by Jiangsu Guo [REDACTED] Bellows Co., Ltd. (hereinafter referred to as Guo [REDACTED] Company) infringed the patent in question. Xinjiang IPO issued a decision on handling a patent infringement dispute case Xin Zhi Fa Chu Zi [2015] No. 1 (hereinafter referred to as No. 1 Decision), ordering Guo [REDACTED] Company to cease manufacturing and selling the accused infringing products, which fact has been confirmed by an effective administrative judgment. Later, Hong [REDACTED] Company filed a lawsuit with the Intermediate People's Court of Urumqi, Xinjiang Uygur Autonomous Region, requesting an order that Guo [REDACTED] Company cease manufacturing, selling, using, and offering for sale the accused infringing products and compensate for its economic losses and reasonable expenses for rights protection totaling RMB 3,000,000 (same currency hereinafter).

The Intermediate People's Court of Urumqi, Xinjiang Uygur Autonomous Region rendered the civil judgment (2021) Xin 01 Min Chu No. 508 on March 16, 2022, ordering Guo [REDACTED] Company to immediately cease manufacturing, using, selling, and offering for sale the infringing products that infringed Hong [REDACTED] Company's patent in question and to compensate Hong [REDACTED] Company for economic losses and reasonable expenses for rights protection totaling RMB 700,000.

Both Hong [REDACTED] Company and Guo [REDACTED] Company were dissatisfied and appealed respectively. Hong [REDACTED] Company argued that Guo [REDACTED] Company's maintenance of the accused infringing products constituted a using act, which Guo [REDACTED] Company did not accept. The Supreme People's Court rendered the civil judgment (2023) SPC IP Civil Final No. 453 on October 8, 2024, upholding the first instance judgment on the amount of damages and modifying it by ordering Guo [REDACTED] Company to immediately cease manufacturing, selling, and offering for sale the infringing products that infringed Hong [REDACTED] Company's patent in question.

Judge's Opinion

One of the focuses of the dispute in this case is whether Guo [REDACTED] Company's maintenance and repair of the accused infringing products constitute use infringement within the meaning of the Patent Law. If so, Guo [REDACTED] Company may have to separately bear infringement liability for such maintenance and repair.

Article 11, Paragraph 1 of the Patent Law of the People's Republic of China provides: "After the grant of the patent right for an invention or utility model, except as otherwise provided for in this Law, no entity or individual may, without the authorization of the patentee, exploit the patent, that is, may not manufacture, use, offer to sell, sell, or import the patented product, or use the patented process, or use, offer to sell, sell, or import the product directly obtained by the patented process for production or business purposes." The term "use" in this provision refers to the act of utilizing a patented product for production or business purposes, thereby enabling its function to be applied. The manufacturer of an accused infringing product who performs maintenance and repair on the product within its normal service life, although objectively serving to ensure the use of the product, is not itself a direct act of utilization for production or business purposes, and is already absorbed by the manufacturing act; therefore, it should not be separately evaluated again as a use infringement within the meaning of the Patent Law.

In summary, the court determined according to law that Guo [REDACTED] Company's maintenance and repair of the accused infringing products does not constitute use infringement within the meaning of the Patent Law, and it is not required to separately bear infringement liability for such maintenance and repair.

Judgment Digest

The maintenance and repair of an infringing product by its manufacturer during the product's normal service life are not direct acts of utilization for production or business purposes and are already absorbed by the manufacturing act; therefore, such maintenance and repair are generally no longer independently characterized as use infringement.

Related Index

Article 11, Paragraph 1 of the Patent Law of the People's Republic of China (as amended in 2020) (The provision applicable in this case is Article 11, Paragraph 1 of the Patent Law of the People's Republic of China effective October 1, 2009)

First Instance: Civil Judgment (2021) Xin 01 Min Chu No. 508 of the Intermediate People's Court of Urumqi, Xinjiang Uygur Autonomous Region (March 16, 2022)

Second Instance: Civil Judgment (2023) SPC IP Civil Final No. 453 of the Supreme People's Court (October 8, 2024)