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As the Dyson’s bladeless fan, also well-known as “Jung Yong Jin Fan,” grew popular in the market, counterfeit products were spreading. Dyson, however, kept a tight rein on the market with the aid of their robust patents. There were cases where innovative products eventually failed in the market because of a failure to acquire powerful patents. Experts point out that constructing an extensive and strong patent portfolio is imperative.
According to the February 16th press release from the Korean Intellectual Property Office (KIPO), not long ago trials against the patents of Dyson were filed with the Korean Intellectual Property Tribunal to request the invalidation of the patents or to confirm their protective scope. Dyson prevailed in the trials based on the strongly set claims of the patents, recently receiving decisions holding “the patent rights are valid” and “the counterfeits fall within the scope of the patent rights.”
KIPO commented that the evidence the counter parties presented for the invalidation trials was not prior art in the field of air conditioning, such as for a fan or air conditioner, but Bernoulli's principle described in textbooks on fluid mechanics. This means that the patents relating to Dyson’s bladeless fan are innovative and have strong claims with a broad scope of protection.
Bernoulli's principle defines the relationship among fluid speed, pressure and a cross-section of a streamline, according to which the fluid speed increases as the cross-section decreases.
KIPO stated, “The patents of Dyson have been proved to be considerably strong to the point where the counterfeits currently existing in the market will not be able to easily find a way of getting around the patents without infringing them.”
The results of the Dyson cases are quite unusual, considering that more than half of the patents involved in invalidation trials have been invalidated in the trials, and the chances that patent holders prevail in the trials to confirm the scope of a patent right are not higher than 25 percent.
Before an official local distributer imported the Dyson fans into Korea, counterfeit products, made in China, had been sold through noted Internet shopping malls at a price equivalent to about 20 percent of the official price (the Dyson fans are sold at more than 400,000 won as opposed to the counterfeits at about 80,000 won).
In order to protect the market, Dyson has strategically pursued the acceleration of the prosecution of patent applications, the construction of a strong patent portfolio, and fast-tracked resolution of patent disputes. Moreover, Dyson promptly responded to infringement cases by utilizing procedures in which examinations/trials are processed in a shorter period of time, such as the Patent Prosecution Highway and the Expedited Trial system.
In Korea, we have witnessed many cases where innovative products (such as MP3 players, S-Boards, etc.) were developed, creating a new market, but struggled in the market due to the failure to obtain strong patents, and thus it has become more important than anything else to acquire robust patents.
The MP3 player, developed back in 1997 for the first time in the world, and the S-Board (in 2003), which can move forward by self-propulsion on a level surface, were well-received by consumers as innovative products, but when counterfeits appeared in the market, the companies, having no effective patent portfolio, eventually went bankrupt.
KIPO mentioned, “In order to obtain a strong patent, market-oriented strategic R & D planning will be very important from the initial stage of product development, but it is of even more importance to thoroughly verify whether their patent claims are properly drafted so as to protect the invention, during prosecution.” KIPO also mentioned, “Although it is necessary to get a patent faster, what ultimately determines the fate of a company in the market is to secure a patent with as strong and broad claims as possible, thus from now on Korean companies will need to be more proactive in setting up patent strategies, like Dyson.”
<English translation of the article of Hankyung Daily; posted on February 16, 2012>
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