Introduction

A patent application should be filed by the individuals who have the right to apply. According to Article 5(2) of the Patent Act, this can be:

  • an inventor;
  • a utility model creator;
  • a designer; or
  • an assignee or successor.

If a patent application is made fraudulently by another person who pretends to be the inventor, creator or designer, the IP Court must determine the true inventor based on the facts.

In recent decisions, the court has adopted a 'substantively identical or similar' standard. In other words, the court will analyse the content of the invention as revealed in the evidence put forward by the individual claiming to be the true inventor. If the court finds it to be substantively identical or similar to the invention, then it will deem the individual presenting such evidence to be the true inventor.

2013 decision

Company A claimed that its equipment has been developed and designed by its employee. However, its original drawings were inadvertently divulged when it made price inquiries with a downstream original equipment manufacturer. As a result, B became aware of the equipment's technical content and used it to apply for the patent. A sued B and petitioned the IP Court for recognition that it was entitled to the application rights.

The court(1) invoked copyright dispute standards, including:

  • whether the alleged infringing work was substantively identical or similar to the work of authorship; and
  • whether the defendant had been in contact with the work of authorship.

When comparing the patent claims with the equipment's technical content, the court held that although there were minor differences, they could be conceived easily by persons with ordinary skill in the art. Thus, the two were held to be substantively identical or similar overall (according to the all-elements rule).

With respect to whether B had come into contact with the drawings, although A had submitted several emails as evidence, B's defence argued that such emails were not sent or received. It was therefore impossible to judge the authenticity of the emails. B also argued that the relevant evidence could not prove that B had ultimately obtained access to the equipment's technical content before using it as the basis for its patent application.

The court held that:

"the ownership of patent application right is a matter of general civil dispute. As such, the evidence needs only to possess a 'degree of preponderance of evidence'. Put another way, the matter of which of the litigant's claim is to be accepted by the court is based on which evidence is preponderant."

When it is difficult to prove the existence of contact, the courts have considered whether there was possibility of contact as a basis for determination, in keeping with the legal principle of preponderance of the evidence. In this case, if the evidence proved the likelihood of B having come into contact with the equipment's content and B was unable to prove otherwise, the court should have accepted the facts as claimed by A.

The court thus ruled that there was a significant likelihood that B had come into contact with the drawings. Since the characteristics of the patent were substantively similar to those of the equipment, the application right belonged to A.

2014 decision

Company A claimed that the patent at issue had been invented by its employee X in 2001. Company B was the patentee. Its factory manager, Y, was also an employee of A at the time and had participated in the research, development and testing of the invention. After Y resigned from A in 2004, he set up B in 2006 and applied for the patent. A claimed that Y had fraudulently applied for the patent as its inventor. A also provided test records as evidence, which had been written by X and Y when they were still working at A.

When reviewing the test records, the IP Court(2) accepted that they related to the patent. However, with regard to A's claim that the patent's technical characteristics had already been disclosed in the test records, the court ruled that:

"when judging whether claims of the patent are substantively similar to the creation disclosed in the evidence, it should still be by way of comparison of the overall technical contents of the claims, not merely by way of comparison of part of the technical characteristics."

As A had no complete test records specifying the whole formulation for the patent and the composition recorded in the test was different from that described in the patent specification, it followed that the technical contents of the two were not substantively similar. As such, the court rejected A's complaint.

The court explained its take on the determination of substantive similarity:

"Substantive similarity in relation to an invention or new utility patent refers to a situation where there is no substantive difference between the technique described in the patent claims and that revealed in the evidence. It would be sufficient as long as the technique described in the patent claims does not exceed the creative concepts, technical means and effects presented in the evidence – there is no necessity for both sets of text and drawings to be identical. Thus, to judge whether or not the said patent is owned by the appellant, the court should make a comparison between the patent claims with the contents disclosed in the appellant's test records."

Although the court did not accept that A was the true patent holder, its judgment was still unfavourable to B.

The court ruled that B had no application right because:

  • A made the alternative claim of non-existence of B's patent and patent application right;
  • B was unable to provide evidence of the invention process to prove that it was indeed the patent holder (B had argued that the relevant materials and records were no longer available as a result of their removal); and
  • there were inconsistencies between Y's testimony, that of one of the patent's inventors and the technical characteristics of the patent.

Ultimately, neither party was accepted as having the application right.

For further information on this topic please contact Hsiu-Ru Chien or Shih-I Wu at Lee and Li Attorneys at Law by telephone (+886 2 2715 3300) or email (hrchien@leeandli.com or shihiwu@leeandli.com). The Lee and Li website can be accessed at www.leeandli.com.

Endnotes

(1) 2012 Min-Zhuan-Shang-2 (April 11 2013).

(2) 2013- Min-Zhuan-Shang-9 (May 15 2014).

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