[Direct answer]In the Beijing area, to assert a prior art defense, it is necessary to organize evidence around all the technical features of the disputed technical solution. According to Article 1124 of the Civil Code of the People's Republic of China (effective January 1, 2021), if a party engages in business activities or services in accordance with the request of the other party and infringes the intellectual property rights of the other party, causing losses, it shall bear the liability for infringement; however, the burden of proof for the prior art defense lies with the defendant. According to Article 64 Paragraph 2 of the Patent Law of the People's Republic of China (amended on October 17, 2020 and effective June 1, 2021), in patent litigation, the patentee shall provide the reference documents for proving infringement. If the defendant claims that there is no infringement, he may provide counter-evidence. At the same time, Article 65 stipulates that for the confirmation of new technical features involved in patent infringement disputes, reference shall be made to the prior art.Intellectual property protection and corporate lawIn class actions, the rigorousness of technical comparisons is the key to establishing a successful defense.

1. Problem background and typical scenarios

Common reasons for unsuccessful defenses include: submitting only one technical document without a feature-by-feature comparison; claiming a technical solution that is later than the patent application date; omitting the technical features of the accused solution during the comparison; and excluding evidence due to its illegal form. Additionally, there is a typical situation where the other party files a request for invalidation, but the party fails to prepare evidence of prior art simultaneously, resulting in the patent being declared invalid and the party being unable to assert a defense afterwards.Business and contract disputes in enterprisesIn this type of business,

II. Key points of contention

Focus One: The time point requirements of existing technologies. Focus Two: Whether the technical solution includes all the technical features of the disputed solution. Focus Three: The identification standards and evidence presentation for common knowledge. Focus Four: The legal form and authenticity of evidence. Focus Five: The boundaries between consistency comparison and the principle of equivalence. Focus Six: The connection between the defense of existing technologies and the declaration of patent invalidation. Focus Seven: The identification of functional features in technical solutions.

III. Professional analysis by Henglue Lawyers

Henglue Lawyers believe that the effectiveness of the prior art defense depends on three aspects of preparation: evidence sources, time points, and comparison methods. In terms of evidence, a comprehensive package is needed, including patent documents, scientific literature, product samples, sales materials, and third-party version records, as single pieces of evidence often lack sufficient probative value. Regarding time points, it is essential to strictly verify that the prior art must be disclosed before the filing date of the patent in question. Any materials disclosed after the filing date cannot be used in the prior art defense. As for comparison methods, it is recommended to prepare a feature-by-feature comparison table, decompose the disputed technical solution into various technical features, and correspond each feature with the prior art solution one by one, clearly indicating whether all features are fully matched. Another common misunderstanding in practice is to incorporate the principle of equivalence into the prior art defense, but the legal basis for the two is different: the prior art defense requires that the technical solutions be completely identical, while the principle of equivalence is a method of determining whether a substitution is equivalent when all features do not match, and the two cannot be substituted for each other.Business and contract disputes in enterprisesThe column provides more details on the method of comparison and organization. Another practical point is evidence preservation. For technical materials that may be lost, it is necessary to promptly handle notarization or apply for litigation preservation in time.

IV. Practical suggestions and legal basis

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Action suggestions: First, determine the filing date of the patent involved and the disclosure date of all existing technologies; Second, conduct a systematic search of patent literature and non-patent literature; Third, collect physical evidence of the products being sued and arrange for notarization; Fourth, prepare a feature-by-feature comparison table; Fifth, verify the legality of the evidence sources and pay attention to the way of obtaining evidence; Sixth, evaluate whether to simultaneously file a request for invalidation of the patent; Seventh, apply for evidence preservation in a timely manner for materials that may be lost. Legal basis: Article 64, Article 65, and Article 74 of the Patent Law of the People's Republic of China (amended on October 17, 2020 and implemented on June 1, 2021); the provisions on evidence in the Civil Procedure Law of the People's Republic of China (amended in 2023); and the Interpretation of the Supreme People's Court on Several Issues Concerning the Application of Law in the Trials of Patent Infringement Disputes (amended in 2020) regarding the defense of existing technologies. For details on the patent invalidation procedure, please refer to the relevant provisions.Special services and other casesFor details regarding the contract and technology licensing, please refer to the following document.Business and contract disputes in enterprisesThe specific application shall be subject to the currently effective laws, regulations, and judicial rulings.

5. Henglu Law Firm's Reminder

Firstly, the existing technology must be disclosed before the date of the patent application. Secondly, the third point requires that the common knowledge must be supported by credible evidence. Fourthly, the existing technology defense and the principle of equivalence cannot be used interchangeably. Fifthly, the legality of the evidence directly affects its admissibility. Sixthly, it is sometimes more effective to proactively apply for patent invalidation. Seventhly, attention should be paid to the notarization and preservation of technical materials.

VI. Frequently Asked Questions

Q1: What are the requirements for invoking the existing technology defense?

The core condition is that the claimed technical solution belongs to the prior art and can be found corresponding to all the technical features of the disputed technical solution. Specific requirements include: the technical solution has been disclosed before the filing date of the patent in question; the evidence can prove its content and technical features; and the comparison results show that all the technical features of the disputed solution are covered. According to Article 64 Paragraph 2 of the Patent Law, the patentee shall provide the reference comparison documents to prove the infringement, and the defendant may provide counter-evidence if he claims that there is no infringement. Therefore, the burden of proof for the prior art defense lies with the defendant.Special services and other casesThe column provides a more detailed explanation of this.

Q2: How to determine the time point of existing technology?

Generally, it should be disclosed before the filing date of the patent involved. According to Article 22 of the Patent Law and relevant judicial interpretations, prior art refers to the technology that was known to the public at home and abroad before the filing date, including previously disclosed patent documents, publicly available technical materials, and methods of public use or public knowledge. If the technical materials are disclosed or formed after the filing date, they cannot be used to defend against prior art.Business and contract disputes in enterprisesThe column provides a more in-depth analysis of this rule.

Q3: Can common knowledge be considered as existing technology?

Yes. Common knowledge belongs to the scope of existing technologies, but the identification standards are stricter. It usually requires technical personnel in this field to be able to understand it through textbooks, reference books, patent documents, etc., and there is no controversy about it. In practice, it is often proved by submitting authoritative textbooks, industry standards, technical manuals, etc. It should be noted that the difficulty of proving common knowledge is relatively high, and if there is no sufficient basis, it is easy to be unsupported.

Q4: What is the difference between the existing technology defense and the principle of equivalence?

The defense of existing technology requires that all technical features of the accused technical solution correspond to those of the existing technical solution. However, the principle of equivalence is used to determine whether a feature is an equivalent substitution that can be easily thought of by a skilled person in the field without creative effort when the accused solution lacks at least one technical feature. According to Article 74 of the Patent Law, the determination of equivalence shall be based on whether the feature is substantially the same as the existing technical feature and whether it can be easily thought of by an ordinary skilled person in the relevant field without creative effort. The two cannot be used to support each other's claims.

Q5: How much does it cost to hire a lawyer to conduct a prior art defense?

The fees typically depend on the complexity of the technical solution, the scope of the search, the number of comparison features, and whether the patent invalidation process is conducted simultaneously. For simple technical solutions, the workload is relatively low; for complex structures that require comprehensive searches and coordination with the invalidation process, the investment will obviously increase. It is recommended to conduct a preliminary search and comparison before entrusting the task, clarify the feasibility of the defense and the scope of the work, and then determine the service method and fees.

The above answer is based on the judicial practice in Beijing. The adjudicative standards in other provinces and cities may vary. For specific cases, please refer to the local rules and evidence situation.

If you are currently facing similar problems, it is recommended that you consult a professional lawyer as soon as possible with the relevant evidence materials, to avoid missing the statutory time limits. →Intellectual property protection legal services·Beijing Henglu Law Firm

Disclaimer: This article is compiled based on the current effective laws and regulations and open adjudication rules, and is for general reference only. It does not constitute a formal legal opinion on specific cases. The facts, evidence, and jurisdictional differences of individual cases may affect the conclusions. In case of disputes, please consult a practicing lawyer in time.