Our Firm's Case Selected into the 2025 Excellent Foreign-Related Legal Service Cases in Zhejiang Province
Recently, the selection results of the 2025 Excellent Foreign-Related Legal Service Cases in Zhejiang Province were officially announced. Relying on its profound expertise and professional breakthroughs in the field of foreign-related law, our firm has one foreign-related intellectual property legal service case selected into the Excellent Foreign-Related Legal Service Cases in Zhejiang Province.
Bridging Cross-Border Cooperation Through Patents, Creating a New Paradigm for Dual Circulation via Mediation —— Dispute Over Infringement of Utility Model Patent Between a Hangzhou Plastic Products Company and a US Company
I. Case Brief
A Hangzhou Plastic Products Company (hereinafter referred to as "Hangzhou Company") holds a Chinese utility model patent for a locking silicone product. In 2024, the company discovered that similar products, which were produced by a Ningbo Science and Technology Company in China (hereinafter referred to as "Ningbo Company") on commission from a US company and sold globally, might infringe its patent right.
Hangzhou Company immediately issued an infringement warning, but the US side firmly denied the infringement on the grounds of holding a US patent, resulting in a deadlock between the two parties. To avoid prolonged and costly litigation, the US company and Ningbo Company jointly entrusted the Ningbo Oriental Commercial Mediation Center to apply for mediation, seeking to resolve the dispute through this approach.
After accepting the entrustment, considering that this case involves a cross-border patent dispute requiring a high level of professionalism, the Ningbo Oriental Commercial Mediation Center designated Zhejiang Suhao Law Firm to handle the mediation. Subsequently, the law firm promptly established a professional team led by senior intellectual property lawyers Shen Lihua and Long Liji.
In the initial stage of mediation, the two parties had a fierce dispute over whether there was infringement and were both prepared to initiate legal proceedings. After in-depth analysis, the lawyer team creatively proposed the core solution of "cross-border transfer of patent rights".
To clarify technical disputes, the team engaged a neutral evaluation panel consisting of technical and legal experts, which issued a "Patent Freedom-to-Operate Analysis Report". This report objectively indicated that the US company's products faced a high risk of being deemed to constitute equivalent infringement, serving as the key to breaking the deadlock.
Ultimately, the two parties reached a settlement: Hangzhou Company transferred the entire patent right in question to the US company. The lawyer team provided full-process support, completing a series of procedures including transfer negotiations, contract drafting, registration of the technology export contract, and registration of the patent right transfer. The dispute was successfully resolved within two months.
II. Legal Analysis
The core dispute in this case centered on whether the US company's products fell within the protection scope of Hangzhou Company's Chinese patent. The lawyer team conducted an in-depth analysis based on the accurate application of Chinese law:
Firstly, it clearly pointed out that the US side's defense of "no infringement due to holding a US patent" was untenable. Patent rights are strictly territorial; a US patent is only valid within the territory of the United States and cannot override a patent valid in China.
Secondly, through a detailed comparison of the technical solutions of both parties, the lawyer team concluded that although some features were not identical, the US company's products adopted essentially the same means to achieve essentially the same functions and achieve essentially the same effects. Moreover, such substitutions would be obvious to a person skilled in the relevant art. Therefore, the products in question were highly likely to be determined by a court to constitute "equivalent infringement".
Furthermore, the US side's attempt to assert a defense based on its US patent as "prior art" was also unlikely to succeed, as the filing date of its US patent was later than that of Hangzhou Company's Chinese patent.
Based on the above clear legal risk analysis and combined with the professional conclusions of the neutral evaluation report, the lawyer team clarified the potential adverse consequences of litigation to both parties, laying a solid legal foundation for transitioning to the win-win solution of "patent transfer".
III. Elaboration on Case Representativeness
This case serves as a model for successfully resolving complex foreign-related intellectual property disputes through international commercial mediation, with its innovative model and remarkable outcomes holding significant demonstration value.
1. Outstanding Model Innovation: This case explores and successfully practices the full-chain dispute resolution model of "neutral evaluation + professional mediation + extended services". When a deadlock arose in technical identification, a neutral expert evaluation was introduced to clarify the facts through an authoritative report. Subsequently, the lawyers took the lead in the mediation and innovatively proposed the "cross-border patent transfer" plan, transforming confrontation into a win-win situation. Finally, one-stop implementation services covering contract execution, government approval, and ownership change were provided to ensure the effective realization of the settlement.
2. Remarkable Resolution Effect: This model efficiently resolved the dispute in just two months at a cost significantly lower than litigation, while preserving the business relationship between the parties. The transfer of patent rights not only ensured the global supply chain security and market access of the US company but also helped the local innovative enterprise achieve the maximum monetization of its intellectual property value, facilitating the cross-border flow of technical factors.
3. Profound Leading Value: This case vividly demonstrates the professionalism and efficiency of China's law-based business environment, boosting the confidence of foreign-invested enterprises in developing their businesses in China. It provides a replicable new paradigm for addressing similar highly technical and foreign-related intellectual property disputes, highlighting the unique advantages and strong vitality of diversified dispute resolution mechanisms such as mediation in supporting high-level opening-up and fostering a new development pattern of dual circulation.