Background
Facts
Decision
Comment
Due to the absence of explicit provisions in the Patent Act, doubts often arise as to the legal basis a genuine owner of the right to apply for a patent may assert to request a non-genuine patent applicant to return the granted patent right. There have been several cases in which the genuine owners of the right to apply for a patent have requested their rights in claims for tort or unjust enrichment and it seems that the courts have mostly adopted affirmative opinions.
For example, the Intellectual Property Court has explicitly held as follows in a civil judgment:(1)
A patent right is an intangible property right. In the event that a beneficiary applies for and obtains a patent in his own name without any legal ground for a creation that is patentable for another person who therefore loses the property right which he or she should have owned, said beneficiary will constitute unjust enrichment, and the person who loses his/her property right will be entitled to request return of the property right from the said beneficiary in accordance with Article 179 of the Civil Code.
Moreover, two subsequent Intellectual Property Court civil judgments(2) held as follows:
Since the R&D results granted by the Specific Patent Agency may serve as an object of patent right and are endowed with an attribute of property right in private law, a genuine owner of the right to apply for a patent may choose to file litigation demanding performance in accordance with the provisions of unjust enrichment, tort or debtor's non-performance and requesting the non-genuine patent applicant to return the patent right for the purpose of safeguarding the genuine owner's right.
Nonetheless, in contrast to the aforementioned opinions, a recent Supreme Court civil judgment(3) seems to have taken a different stance.
The appellee (the plaintiff in the first-instance case) was a generator manufacturer (Manufacturer A). He claimed that the appellant (Appellant B) (the co-defendant in the first-instance case) had applied for a utility model patent based on his commodity-related technology without permission and had been granted a patent by the Intellectual Property Office through publication.
As Appellant B obviously benefitted without any legal ground and intentionally infringed Manufacturer A's status as the genuine owner of the right to apply for a patent, causing him to lose the ability to own the right of the patent in dispute, Manufacturer A:
- requested the courts' declaration that such right belonged to him; and
- demanded appellant B to return the right of the patent in dispute in accordance with article 179, article 184, paragraph 1 of the Civil Code.
The original judgment by the Intellectual Property Court determined that Manufacturer A's demands could be sustained. However, the Supreme Court overturned this opinion.
The Supreme Court held that there are three ways to solve a dispute that occurs over the right to apply for a utility model patent:
- filing a request with the specific patent agency for a change of the ownership of the right(s) involved;
- reaching an agreement between the parties over the assignment of the patent right; or
- filing a utility model patent application for the same creation by the genuine creator in accordance with article 120 applying mutatis mutandis to article 35 of the same Patent Act.
Further, the Supreme Court asked the following questions:
- Before granting a utility model patent right by the specific patent agency through publication in accordance with the law, should it be deemed that a genuine creator's utility model patent right is infringed by a non-genuine patent applicant?
- If so, is the creator thus entitled to request reinstatement from the non-genuine patent applicant by demanding the return of the patent right in accordance with the provisions of tort?
The Supreme Court held that as "unjust enrichment" refers to the circumstance where a person acquires interests without any legal ground and causes prejudice to other person(s), causation must be proven between the benefit received by the beneficiary and the damage suffered by the victim. This led the Supreme Court to the following questions:
- If a utility model patent right obtained by a non-genuine patent applicant is granted by the specific patent agency, should it be deemed that the damage suffered by the creator is the loss of the utility model patent right?
- If so, is the creator entitled to request the return of the patent right before being granted the utility model patent right by the specific patent agency through publication in accordance with the law?
The Supreme Court held that there is room for further investigation.
Specific patent agencies have always treated the issue of attribution of rights as a dispute over private rights rather than the agency's responsibility, considering that the decision should be left to the parties concerned to resolve through judicial remedies first.
Even if a genuine rights owner complies with the provision of article 35 of the Patent Act(4) cited by the Supreme Court, Part V(1) of the Taiwan Patent Examination Guidelines still requires a genuine rights owner to submit documents such as court decisions as invalidation evidence. Also, article 35 of the Patent Act not only stipulates the restriction that the invalidation should be filed within two years of the publication date of the patent concerned, but also requires a new patent application to be filed within two months of the day on which the invalidation decision revoking the patent becomes final and binding.
In practice, it is quite rare for a patent right to be successfully returned through this provision since civil litigation, invalidation proceedings and even subsequent administrative litigation proceedings generally take years. In addition, as the legal design of article 35 of the Patent Act requires revocation of a patent obtained by a non-genuine owner of the right to apply for a patent before filing a new patent, the existence of rights and changes in the scope of rights are highly uncertain. Therefore, court practice has developed measures which allow a genuine owner to request the court to render a decision to return to them the patent right obtained by a non-genuine owner of the right to apply for a patent through the provision prescribed under the Civil Code.
Given that, in the case discussed in this article, the Supreme Court appears to have held different opinions against such practices, it remains to be seen whether genuine rights owners can successfully secure their rights in the future.
For further information on this topic please contact Hsiu-Ru Chien and Elina Yu at Lee and Li Attorneys at Law by telephone (+886 2 2763 8000) or email ([email protected] or [email protected]). The Lee and Li Attorneys at Law website can be accessed at www.leeandli.com.
Endnotes
(1) 2014 Min Zhuan Su Zi No. 71 rendered on 3 June 2015.
(2) 2018 Min Zhuan Shang Zi No. 21 rendered on 28 November 2018 and 2020 Min Zhuan Shang Zi No. 18 rendered on 29 April 2021.
(3) 2020 Tai Shang Zi No. 2155 rendered on 27 May 2021. The first-instance civil judgment (2017 Min Zhuan Su Zi No. 72) was rendered by the Taiwan Intellectual Property Court on 29 March 2018; the second-instance civil judgment (2018 Min Zhuan Shang Zi No. 17) was rendered on 11 April 2019.
(4) Article 35 of the Patent Act stipulates that:
in the event that an invalidation action is filed against a granted patent by the owner of the right to apply for a patent or by the joint owner(s) of the right to apply for a patent within two (2) years after the publication date of the patent concerned in accordance with Item 3, Paragraph 1 of Article 71, and said person or joint owner(s) newly files a patent application for the same invention within two (2) months after the day on which the invalidation decision revoking the patent became final and binding, the filing date of the revoked patent shall be the filing date for the newly filed patent application. A patent application newly filed in accordance with the preceding paragraph shall not be published again.