Safe-Run: The legal ‘war’ with VMI has just begun

Following VMI’s statement saying it had won the latest round of legal wrangling related to a patent dispute with Safe-Run, the Chinese firm, which describes itself as “one of VMI’s biggest competitors in China” put out a counter statement questioning VMI’s perspective.

According to Safe-Run it is correct to say, “The ‘patent invalidation case’ mentioned by VMI is true.” The Patent Reexamination Board (PRB) of State Intellectual Property Office (SIPO) issued a Decision on the Request for Invalidation (Decision) to Safe-Run on 22 August 2016 announcing that Safe-Run’s utility model No. 201220228005.6 is invalid.

However, Safe-Run suggests VMI may have declared victory prematurely. According to the Chinese firm, Article 41 of Chinese patent law states that Safe-Run is entitled to appeal to the Beijing Intellectual Property Court within three months from the day when the company received the Decision, demanding negative Decision be overruled. Thus, the Decision has not come into effect till the publication of this article.

In addition, Safe-Run explains that the utility model declared invalid is currently not applied to all Safe-Run’s products, so even if this utility model is found to be invalid eventually “it will not affect the sales and intellectual property (IP) protection of the company’s products”. In addition, the purpose of this administrative Decision is to determine whether Safe-Run’s utility model No 201220228005.6 is valid, rather than if Safe-Run’s products infringe VMI’s patent rights.

Safe-Run states that whether Safe-Run’s utility model is invalid does not have any connection with whether Safe-Run’s products infringe VMI’s patent rights: “These are totally two different issues.”

In fact the company reports that it had already launched a counter offensive, with Safe-Run having already filed several lawsuits against VMI for “confirming non-infringement respectively before Shanghai Intellectual Property Court and Suzhou Intermediate People’s Court as early as in April 2016 and July 2016”. These demanded the courts confirm that Safe-Run’s products do not infringe VMI’s patents rights. VMI responded in August, 2016 and filed another three patent infringement cases against Safe-Run, accusing Safe-Run’s products of infringing VMI’s patent rights before Suzhou Intermediate People’s Court. For all three cases, Safe-Run has “actively started the preparation for the response”. Currently, these three cases have not come into substantive hearing stage.

Therefore, VMI may have won the latest legal battle, but the war has only just begun, according Chinese firm Safe-Run.