Recouping losses of over 20M yuan per year by one design patent seems incredible to many companies, in Luo Ning's heart, the general manager of the Ningbo Saijia Electrical Limited Company, though, the important design patent is surely a treasure."I spend one year to defend the lawsuit, and we can't save the sales of over 20M yuan per year in Japan without the patent," Luo told a journalist in CIP News.
Saijia wins lawsuit in Japan
Saijia started protecting IPRs in 2010. At that time, Luo Ning found that office ladies used to carry a toothbrush in the bag in some developed countries and regions like Europe, the U.S. and Japan. In a bid to seize the business opportunities, the Saijia's technical team worked hard and finally developed a lipstick-shaped portable sound wave electric toothbrush, and filed a design patent application which was granted in April, 2011 (CN201030631894).
With the rapid development of Saijia, Luo Ning suddenly was filed complaints by dozen Japanese retailers at the end of June 2011. They said that they all received a letter from the same Japanese company and were required to stop distributing such toothbrush as the products infringed its rights.
"I counldn't help but wondered, how could our self-developed products infringe their IPRs?"said Luo. He then commissioned a full investigation which was led by Japanese customers that Saijia worked with.
After careful preparation, Saijia decided to lay formal charges against Marutaka Company in October 2011. On February 28, Luo Ning received a written judgment by the Japanese court. According to the verdict, after Marutaka received a sample of SG-923 produced by Saijia, it filed a design patent in its own name according to the related pictures of the sample, which violated the relevant provisions of the patent law.
Patent is necessary in going-out
Saijia is not the first company infringed by Marutaka. Previously, there have been three companies going through that experience. With the rapid growth of China's international trade, the patent dispute cases are also on the rise. "Facing the differentiated trade barriers and rising IPR obstacles, withdrawal means losing market and admitting defeat," said relevant experts.
"It is not difficult to steal design patents in technology means, while the patent case exists difference in the hearing process. Take the patent battle between Apple and Samsung, the verdicts are different in the U.S., South Korea and Japan," said Tao Fengbo, partner of Liu, Shen & Associates.
"For many Chinese companies, submitting design patent applications in overseas market is a good measure to protect their right. The protection of patent right is all territorial, and companies should analyze the IPR risks of target market so that they wouldn't be unprepared when meeting the dispute. The patent search could help them understand basic design information of the existing products, and dispute would also be avoided in patent examination phase if issues occur," said Tao Fengbo.
"Even recouping the losses is in fact another loss," said Zhang Yurui, the researcher of IPR department of Chinese Academy of Social Sciences. This event shows the importance of the strategy of filing patent applications before the products enter into the market. When Chinese companies invest overseas, they should attach great importance to IPRs, and safeguard their own IPRs with legal arms.