Chief Lawyer Xu Xinming successfully wins the patent invalidation case relating to the patent for “a long-acting wear drill collar”

Summary

Chief Lawyer Xu Xinming representing Claimant of Beijing Heng Dongxing Technology Co., Ltd won the invalidation case involving the utility model patent named as “a long-acting wear drill collar”. The Patent Reexamination Board made decision No.20126 on request for an invalidation review which declared all the above-mentioned patent rights invalid.

 

Beijing Heng Dongxing Technology Co., Ltd (hereafter referred to as Heng Dongxing Company) is an oil equipment company which mainly manufactures drill collars and occupies a considerable share of the market. Sichuan World Rise Petroleum Equipment Co., Ltd (hereafter referred to as World Rise Company) is a company which also manufactures oil-related equipments. World Rise Company applied for the utility model patent named as “a long-acting wear drill collar” (application number 201120189178.7) on 7th June 2011, which was approved by the China Patent Office on 14th December 2011. The patent had 6 claims which lead to a broad scope of protection. Heng Dongxing Company faced the risk of infringement of the patent rights because Heng Dongxing Company’s products were likely fall into the scope of the patent protection. Even if World Rise Company wouldn't actively pursue the infringement liability of Heng Dongxing Company, the patent still gave World Rise Company a competitive advantage in relation to its drill collars.

 

In order to avoid the possible risk of patent infringement and promote the competitiveness of its products, Heng Dongxing Company approached the Chief Lawyer of China Intellectual Property Lawyers Network for assistance. After conducting their research, Mr. Xu and his working team found that the patent should be invalid because the protected technology program of the patent claims either lacked novelty or inventiveness.

 

On 10th September 2012, Mr. Xu on behalf of Heng Dongxing Company made a request for invalidation of the patent with the Patent Re-examination Board, which subsequently accepted the request. Mr. Xu, supported by his assistant solicitor, conducted the case hearing and detailed the reasons for the request for invalidation of the patent, which were all adopted by the Patent Reexamination Board. On 26th February 2013, the Patent Re-examination Board made a decision which declared all the 6 claims of the patent of World Rise Company invalid.

 

Conclusions from the above-mentioned case:

Because utility model patents haven't been substantively examined, some utility model patents are not novel or inventive. If competitors apply for patents for existing technologies and obtain unfair competitive advantage in order to ensure fair competition it is necessary to request the Patent Re-examination Board to declare invalid improperly granted patents.