Patent case

Patent Right Enforcement in CHINA
APRIL 2013
Patent Right Enforcement in CHINA
 Increase in patent filing
 Experience in enforcing patent in CN (Actifry &
Fresh Express cases)
 Problems & difficulties in enforcing patent in CN
 The world leader of small domestic appliances.
 A mission : to improve the consumer's daily life : a "B to C"
 A strong innovation capacity : No. 20th in France with more
than 100 new inventions applications per year since 2009
 A strong trademarks portfolio : 4 major trademarks, 20 well
known trademarks in their field.
 A worldwide presence : manufacturing in Europe, Brazil, USA
and China, sales companies in any significant country.
 A stable shareholder association.
GROUPE SEB is … innovation since
the beginning
Pressure cooker Cocotte-minute®
Non stick pan TEFAL®
Smokeless fryer
Steam station and enamel sole iron …
Multi purpose food processor RONDO®, KALEO®
On the table fun cooking (raclette, grills…)
Mini vacuum cleaner DYMBO®, sucking head DELTA®
GROUPE SEB is … innovation always
Low fat fryer
Hot water on demand
Silent vacuum cleaner
Food processor with multiple colorful tools
Multi recipes yogurt maker
Round bread maker
The direct client : the distribution
Mass market
Department stores
What is Intellectual Property for SEB
Product protection under its 3 components presented to the
How to fry with little oil : direct
strong hot air flow to the bottom
of a pan where a paddle gently
turn over the food = THE
The name ACTIFRY to promote the buzz =
The Shape which attract the
attention of the consumer =
Patent Right Enforcement in CHINA
Introduction to SEB
 Quality of anti-counterfeiting measures
 Technical collaboration with Chinese company
 Conclusion
Patent Right Enforcement in CHINA
 Patents filing in China increased x5 between 2002 and 2012
 In small house appliances, numerous "Utility Patent" for details
between technical patent and esthetical patent.
 Fierce and fast competition among Chinese companies for
export orders
 Employee fast turn over raises question of weak
confidentiality and lack of exclusivity
 Government subsidize patent filing and "innovative"
 Each variant of a subject may filed independently (bread maker
"baguette" rack)
Patent Right Enforcement in CHINA
Introduction to SEB
 Increase in Patent filing
Experience in enforcing patent in CN
(Actifry & Fresh Express cases)
 Problems & difficulties in enforcing patent in CN
 Conclusion
IP Right counterfeit search : classic
 The classical manner : local commercial companies run
"store check" and send pictures and samples to IP
 Written proof are requested
 Internet watch both in English and in Chinese language
IP Right counterfeit search : fairs
 The major information source is the huge Chinese Export Fair
taking place twice a year in Guangzhou (April, October)
 A compulsory presence for Chinese small & medium size companies eager to
export without having to maintain a costly foreign network.
 Numerous arguable products are for markets "free of rights" (Iran, Irak, Afrique, etc.)
IP Right counterfeit search : classic
 Counterfeits does exists, at most 5/1000
of presented products.
 Ransom of glory : under Confucianism
the student reproduces the master.
 A Complaint Desk put early in place by
organizers and run by IPO and AIC
competent persons.
 Compulsory representation by a Chinese
lawyer so that the complaint file is perfect
(on IP rights and formal details)
 When convinced, the IPO or AIC
representative goes to the booth to have
the counterfeit removed : possible fight.
IP Right counterfeit search : classic
 YIWU City : numerous shopping center for export, one
dedicated only to Household appliances
 One visit per year necessary to watch for counterfeits
 As "quality engineer", it is normal to ask to visit the factory.
 Local AIC is willing to remove obvious counterfeit.
Patent case example : Actifry
Patent n°1 PIONNIER : during Search –june 2004
Cooking method by stirring under heat flow
Patent n°1b
Patent n°2 : During Search – June 2004 :
divisionnal during Développent -2006
Removable internal bowl
Patent N°3 during development : february 2006
Food stirring paddle
Patent N°4 during development : february 2006
Food stopping means
Hot air flow circuity
Patent Case Example: Actifry
 In October 2009 (only two years after product
launch), carbon copy of Actifry was displayed
in the Fair: Complaint filed and copy removed,
then a civil lawsuit.
 One year later, another competitor (the “2nd
competitor”) modifies the product: halogen
heating, fixed paddle for a turning bowl, but the
heating flow stays the same : still withdrawn
and a civil lawsuit is followed.
Patent Case Example: Actifry
 After the civil lawsuit, the 2nd competitor further modifies its
product to try to go around Actifry patents: closes the
airflow behind the bowl for a smaller flow just above, Court
Action on removable bowl
Patent Case Example: Actifry
 Other copies of Actifry: after the civil lawsuit, the competitor
modified the product – doubles or removed the paddle
Patent Case Example: Fresh Express
Patent No. 1 Utility model on antiwedging means
Patent No. 3 Utility model on the
transparent cover for the cutting tools
Patent No. 4 Design patent of the overall
shape of Fresh Express
Patent No. 2 Utility model on the driving
Patent Case Example- repeat
infringement: Fresh Express
 In October 2010, carbon copy of the Fresh
Express was observed during the fair:
complaint filed and removed by the IPO, then a
civil lawsuit.
 After the lawsuit, the competitor modified the
overall shape but the modified product still
infringed three um patents: two times of
customs interception and two more civil
lawsuits to finally stop the competitor from
reproducing the relative patents again.
Patent Right Enforcement in CHINA
Introduction to SEB
 Increase in Patent filing
Experience in enforcing patent in CN (Actifry &
Fresh Express cases)
 Problems & difficulties in enforcing patent
in CN
 Conclusion
Problems & difficulties in enforcing patents in CN
 Collection of infringement evidence in a patent
infringement case
• Notarized purchase – sometimes it is unfeasible to arrange the
notarized purchase when the infringer is very cautious
• Official preservation of evidence – ①some local courts do not go to
the defendants’ domicile to conduct evidence preservation because
the judges are overloaded; ② the preservation usually cannot be
arranged timely.
• Official preservation of property - ①some local courts do not seize
the infringing products as “property”; ② the preservation measure
usually cannot be arranged timely, either.
• Customs interception – high amount of customs bond
Patent case : IPO
 IPO was efficient to raid and destroy identical Design patent
counterfeit (2002 – 2003)
 Then, small modifications brought lengthy discussions between
infringer and administration. IPO requests that the cases be
transferred to Court
 Court acted as powerful mediator as long as IP owner requests were
reasonable (only destruction of product and of moulds, little monetary
damages). But the question of evidence of counterfeit solely for export
became difficult.
 The draft fourth revision of China’s Patent Law may give the IPO
more power to enforce patent.
Problems & difficulties in enforcing patent in CN
 Patent enforcement through the IPO -
• Some IPO (in Guangdong
Province) can inspect the
infringer to obtain evidence
and identify the relative
• The procedure is
comparatively more simple
than a civil lawsuit
• Some IPOs do not conduct the
• The IPO cannot force the
infringers to pay monetary
• The administrative decision
may go through the judicial
review of the court before
coming into effective
Problems & difficulties in enforcing patent in CN
 More power to be granted to local IPOs??
 If preliminary evidence is presented, can the local IPO help the patentee to
conduct official inspection timely to secure the evidence?
 After the IPO secures the evidence, the patentee can go to court with the
evidence collected by the IPO?
 Power to fine the infringer in case of repeat infringement?
Patent Right Enforcement in CHINA
 Introduction to SEB
 Increase in Patent filing
 Experience in enforcing patent in CN (Actifry & Fresh
Express cases)
 Problems & difficulties in enforcing patent in CN