In the e-commerce field, “hot-selling” products, with their huge sales volumes and substantial profits, have always been the objects of fierce competition among e-commerce practitioners. However, precisely because the sales of “bestsellers” are relatively guaranteed, once a new product shows signs of becoming “hot” in the consumer market, various “competitors” will use every means to imitate or copy it, causing many “bestsellers” to soon be淹没 among a flood of similar or even identical products shortly after their success. The average profit of the original creators is rapidly driven down, and the so-called “bestseller” soon becomes a tasteless chicken—difficult to enjoy but hard to abandon—doomed to be a flash in the pan.

To extend the红利 period of “bestseller” products, many e-commerce sellers also try to apply for patents for their products and file patent infringement complaints through e-commerce platforms to curb competitors’ copycat behavior. However, the results are often unsatisfactory. What causes this phenomenon? In handling related cases, the author has found that many parties have certain misconceptions regarding the patent protection of e-commerce “bestsellers,” which are summarized as follows.

Three Major Patent Protection Traps for E-commerce “Bestsellers”

01

Applying for a Patent Only After a Product Becomes a Bestseller

This issue is relatively easy to understand. Creating a “bestseller” is somewhat like venture capital—it requires not only effort but also a bit of luck. Since every product’s conception, design, development, and mold-making involve investment costs, and it is unclear which product will become the next “bestseller,” most original creators are reluctant to invest too much upfront. They believe that whether or not a patent is applied for does not affect the product’s market launch or its potential to become a “bestseller.” Therefore, from a cost-control perspective, investment in patent applications should naturally be minimized before the product becomes a bestseller.

However, once a product becomes a bestseller, the interests involved expand instantly, and copycats enter the market rapidly. Only then do the original creators wake up and hastily begin building a moat for defense. Given the time pressure, considering the timeliness and difficulty of patent grant, design patents are undoubtedly the first choice, followed by utility model patents. Invention patents, which require substantive examination and have both longer grant times and a certain probability of failing to be granted, are often not considered in this race against time.

Thus, an interesting phenomenon emerges: after a “bestseller” appears, the original creator hurriedly applies for a design patent for the product, and in rare cases, may also apply for a utility model patent for the product’s structure. A few months later, once the patent certificate is obtained, they begin批量 filing infringement complaints or lawsuits.

However, the accused infringers soon discover the issue of prior public use of the patent and attempt to assert prior art defenses, or even File a patent invalidation declaration simultaneously. In the end, the original creator not only fails to stop competitors’ copycat behavior but also wastes a significant amount of time, energy, and money on this already-lost patent offense-defense game.

02

Filing Only One Patent for a Single Product

We all know there are three types of patents, but a single product usually consists of more than one component. Therefore, a single product can accommodate multiple patents. For instance, a common mobile phone has上千 components, but the number of patents is much larger than the number of its components. However, in reality, most original creators of e-commerce “bestseller” products do not apply for multiple patents for their products. Common reasons include:

First, applying for an additional patent means additional investment. As mentioned above, before confirming that a product can become a bestseller, the original creator is unwilling to invest too much from a business cost perspective.

Second, the technological improvement of the “bestseller” product itself is not substantial, leaving limited space for patent protection.

Third, although the product itself has certain technical content, the developers do not know how to identify patentable points.

As mentioned above, during the infringement complaints or litigation process, the accused infringer often counters by filing a patent invalidation challenge. Since design and utility model patents in China do not undergo substantive examination, they have a higher probability of being successfully invalidated compared with invention patents. Moreover, current law imposes no limit on the number of invalidation challenges that can be filed.

Consider this: how can such fragile design and utility model patents withstand wave after wave of invalidation attacks from大批 copycats? Even if the patent is not invalidated, the scope of protection of a single patent is very limited, and most technical features are not irreplaceable. Therefore, copycats can achieve non-infringement effects with slight modifications, rendering the original creator’s patent a “useless skill.”

Thus, another interesting phenomenon appears in e-commerce patent enforcement:

When the original creator of a “bestseller” initiates enforcement proceedings, they often hold only one patent that could be invalidated at any time. Once that patent is invalidated, the original creator immediately falls into the awkward position of having no rights to enforce. The path of patent enforcement becomes treacherous, often hitting a dead end halfway.

03

Assuming a Patent Certificate Guarantees Smooth Enforcement

The prerequisite for enforcement is having rights. To have rights, one must first obtain a patent certificate. However, obtaining a patent certificate does not guarantee smooth enforcement.

As mentioned above, if the technology was publicly used before the patent application, the technical solution itself has already lost novelty. Even if a design or utility model patent certificate is侥幸 obtained due to the lack of substantive examination, such a right is as fragile as a paper tiger. It may either be found non-infringing due to a successful prior art defense or be declared invalid for lack of novelty.

The above situations are relatively obvious and can be easily avoided with due care. However, there is another situation that is more subtle and often不易 detected by right holders in the early stages.

Some original creators finally obtain a patent certificate, and the patent right is relatively stable. The counterfeit products on the market are almost identical to the original product. They eagerly initiate enforcement proceedings, only to find, to their surprise, that the accused infringing product does not fall within the scope of patent protection.

The basic principle for determining patent infringement in China is the “all-elements rule.”

Article 7 of the Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Disputes provides: “When determining whether the alleged infringing technical solution falls within the scope of patent protection, the people’s court shall examine all technical features recorded in the claim asserted by the right holder. If the alleged infringing technical solution contains technical features identical or equivalent to all the technical features recorded in the claim, the people’s court shall determine that it falls within the scope of patent protection. If the alleged infringing technical solution, compared with all the technical features recorded in the claim, lacks one or more technical features recorded in the claim, or has one or more technical features that are neither identical nor equivalent, the people’s court shall determine that it does not fall within the scope of patent protection.”

Some patent agencies deliberately draft claims narrowly to ensure a high grant rate for patents. This may not seem problematic during the grant and confirmation stage, and may even earn praise from clients due to the high grant rate. However, during the enforcement stage, overly narrow or overly broad patent claims can both lead to serious consequences.

How Original Creators of “Bestsellers” Can Avoid Cognitive Traps

First, cultivate a legal awareness of advance布局.

“Preparing provisions before mobilizing troops” has always been an iron rule for intellectual property protection. From patent application to grant, there is a certain period, and patent grant requires novelty. Therefore, the correct sequence must always be to apply for a patent first and launch the product later.

For a self-developed product, the前期 patent储备 expenditure should be included in the basic R&D budget and should not be compromised for short-term gains. Although this may increase upfront R&D costs to some extent, compared with helplessly watching rampant copycat behavior after a “bestseller” emerges, this前期 investment is truly insignificant.

Second, build a combined patent portfolio.

“Patent储备” obviously does not mean simply one patent per product. Instead, it involves configuring a reasonable patent portfolio based on the product’s degree of improvement over prior art and its patentability.

For copycats, the cheapest approach is to directly copy existing technical solutions. Of course, this type of imitation is usually the most susceptible to legal sanctions. Some clever copycats hire professional lawyers or patent agencies to pre-evaluate infringement risks before producing同类 products and develop circumvention strategies针对 the original creator’s patents.

In a sense, the more patents the original creator has, the more points the copycat needs to circumvent, and the higher the cost. When this cost is high enough to cover the expected benefits of copycat behavior, imitation becomes an uneconomical business, and the copycat’s motivation is greatly reduced. In practice, if an infringing product simultaneously infringes multiple patent rights, the liability is heavier, and the damages awarded are higher. The original creator’s前期 investment can also be补偿 through subsequent enforcement proceedings.

Third, focus on patent drafting quality. The importance of patent drafting quality only becomes apparent during invalidation and infringement proceedings. One of the most important characteristics of a high-quality patent is that the scope of the claims is appropriate, especially the scope of the independent claim.

How then should the reasonable scope of protection of an independent claim be determined?

First,

based on thorough search and research, determine the technical problem that this patent aims to solve relative to the closest prior art, so as to incorporate the necessary technical features for solving this problem into the independent claim. If the patented technology is far removed from the closest prior art, the scope of protection sought should be as broad as possible. Conversely, the scope should be narrowed so that it still possesses novelty and inventiveness relative to the closest prior art.

Second,

based on the closest prior art, determine the technical problem to be solved, list all necessary technical features, and尽可能 use superordinate concepts or parallel概括 to概括 them, thereby achieving a broader scope of protection.

Finally,

incorporate the necessary technical features common to the closest prior art into the preamble of the independent claim, and incorporate the necessary technical features distinguishing the invention from the closest prior art into the characterizing portion. The combination forms a complete independent claim.

For example, if the closest prior art includes technical features A, B, and C, and the technical solution of this patent includes technical features A, B, C, D, and E, where D is the essential technical feature for solving the technical problem, then the independent claim should be: A technology, comprising A, B, C, characterized by D. Technical feature E can then be included in a dependent claim.

Conclusion

On September 22, 2021, the State Council issued the “Outline for Building a Strong Intellectual Property Country (2021-2035).” The guiding ideology of the outline is “to promote high-quality development as the theme, to deepen supply-side structural reform as the main line, to take reform and innovation as the fundamental driving force, and to satisfy the people’s growing needs for a better life as the fundamental purpose.” The term “high-quality” appears 11 times throughout the document.

It is evident that China’s intellectual property protection environment has shifted from单纯 pursuing quantity to emphasizing both quantity and quality. While focusing on creating “bestsellers,” e-commerce practitioners should align with national strategic requirements, establish correct patent protection concepts,重视 reasonable patent布局 and investment during product R&D, and use patent infringement determination standards to检验 patent drafting quality, thereby avoiding the above patent protection traps.