To obtain rights of exclusive use of a patent, it is necessary to file a patent application with the Specific Patent Agency and complete the examination and registration process. In this regard, Article 5 of the Patent Act prescribes that “the term ‘right to apply for a patent’ shall mean the right to file a patent application in accordance with this Act. Subject to provisions of this Act otherwise prescribed or the covenants otherwise set forth in an agreement, the term ‘the owner of the right to apply for a patent’ shall mean an inventor, a utility model creator, a designer, or the assignee or successor thereof.” Hence, it can be understood that the right to apply for a patent and the patent right are conferred in respect of the same creation, and the inventor, the utility model creator, the designer, or his/her assignee or successor is entitled to the right to apply for a patent before the patent right is granted by the Specific Patent Agency. Further, in accordance with Paragraph 1 of Article 6 of the same Act, both the right to apply for a patent and the patent right are assignable or inheritable. Therefore, the right to apply for a patent should also be considered to be a private right.
In the 2000 Pan Zi No. 1752 judgment of June 1, 2000, the Supreme Administrative Court held that the Specific Patent Agency should confirm whether a patent applicant is the owner of the right to apply for a patent based on the relevant provisions of Articles 5, 7 and 8 of the Patent Act. However, determination of private rights relating to ownership disputes is not within the authority of the Specific Patent Agency. Hence, if there is a dispute over the ownership of right to apply for patent, the parties concerned may file a civil action, after which, when the civil court determines the ownership of right to apply for patent, the true right owner can file a request along with relevant documents of proof with the Specific Patent Agency for amending ownership of the right involved.
With regard to the question whether a true owner of the right to apply for a patent can request for return of a patent right under a claim for unjust enrichment, please refer to the following civil cases:
A true owner is allowed to request the Intellectual Property Court (IPC) to render a judgment under a claim for unjust enrichment where the patent right obtained by a person who unjustly usurped the right to apply for the patent should be returned to the true owner. For example, in the civil judgment[1]rendered on February 16, 2017, the civil judgment[2] rendered on November 9, 2017, the civil judgment[3] rendered on March 5, 2018, and the civil judgment[4] rendered on April 11, 2019, such claim was affirmed by the IPC, which held that a patent right is an intangible property right. If a person A acquires a patent in his/her own name for a person B’s patentable creation without any legal ground, thereby causing loss of the property right and infringing the person B’s right to apply for the patent, the person B may request for return of the property right under a claim for unjust enrichment set forth in Article 179 of the Civil Code.
However, the Supreme Court held a different opinion in its 2020 Tai Shang Zi No. 2155 civil judgment rendered on May 27, 2021. In this case, the Supreme Court questioned whether a true owner of the right to apply for a patent can request return of a utility model patent right under a claim for unjust enrichment. In the judgment[5], the Supreme Court held:
In the event of a dispute over the ownership of a utility model patent between the true creator and the utility model patentee, except for the situation in which Article 10 of the Patent Act allows an employer and its employee to file a request along with relevant documents of proof with the Specific Patent Agency for amending ownership of the patent right or the parties involved reach an assignment agreement for the utility model patent, in accordance with Article 35 of the Patent Act, which according to Article 120 of the Patent Act applies mutatis mutandis to utility model patent, the true creator is only allowed to file an invalidation action against a granted patent based on the ground that the utility model patentee is not the true owner of the right to apply for an utility model patent within two years after the publication date of the patent concerned. Subsequently, if the true creator newly files a patent application for the same invention within two months after the day on which the invalidation decision revoking the patent has become final and binding, the filing date of the revoked utility model patent should be the filing date for the newly filed patent application. The following questions remain: Before being lawfully granted the utility model patent right by the Specific Patent Agency, can the true creator directly argue that his/her patent right has been infringed upon by a patent applicant who unjustly usurped the right? Can he/she further claim damages in the form of the loss of the utility model patent and then request the unjustly enriched applicant to return the patent right? Moreover, unjust enrichment indicates acquiring interests without any legal ground and prejudice to another person. Hence, there should be causation between the interests acquired by the unjustly enriched applicant and the damages suffered by the true creator. Since the utility model patent acquired by the unjustly enriched applicant was granted by the Specific Patent Agency, before being granted by the Specific Patent Agency, can it be deemed that the damages suffered by the true creator are the loss of the utility model patent, and thus return of the utility model patent can be requested? Accordingly, there is still need for further discussion on this matter.
Based on the foregoing, the Supreme Court reversed the relevant portion of the IPC’s judgment. In the judgement, on the one hand, the Supreme Court held that a civil court deciding cases concerning intellectual property should only be responsible for supervision of the legal issues in view of facts and evidence instead of performing administrative acts on its own. On the other hand, the Supreme Court considered that since the patent right acquired by the unjustly enriched applicant was granted by the Specific Patent Agency, before being lawfully granted the patent by the Specific Patent Agency, it cannot be directly considered that the damages suffered by the true owner of the right to apply for a patent are the loss of the patent, and accordingly allows the request for return of the patent.
The Supreme Court seems to take a conservative position on the claim for unjust enrichment in this case. The author agrees with the Supreme Court’s opinion and considers that since the appellee had not filed a patent application and then was granted a patent in respect of the creation, the original interest was only the “right to file a patent application”[6] when the creation was completed, but not the “right to apply for a patent” possessed by the appellant after filing the utility model patent application and the “patent right” obtained thereafter. Among the three rights, the connotation and value of the “right to apply for a patent” and “patent right” should be greater than that of the “right to file a patent application.” Hence, the interests of the appellant (i.e., the recipient unjustly enriched) are greater than the damages suffered by the appellee. According to the current practices[7], if the interests acquired by a recipient unjustly enriched are greater than the damages suffered by an injured party, the recipient should be bound to make restitution to the extent of the damages suffered by the injured party. As a result, a true owner of the right to apply for a patent can only request for return of the “right to file a patent application” under a claim for unjust enrichment, but not the “right to apply for a patent” and the “patent right.”
Moreover, it is worthwhile mentioning that, after the Supreme Court’s judgment, the Intellectual Property and Commercial Court (the IPC was renamed “Intellectual Property and Commercial Court” on July 1, 2021) rendered the 2020 Min Zhuan Shang Zi No. 40 civil judgment on September 30, 2021 to support the true owner to request for return of the patent at issue under a claim for unjust enrichment. In the judgment[8], the Court held:
A patent right is an intangible property right. If a person acquires a patent in his/her own name for another person’s patentable creation without any legal ground, causing loss of the property right which the person should have owned, and infringing the person’s right to apply for the patent, the person may request for return of the property right under a claim for unjust enrichment set forth in Article 179 of the Civil Code. Both the right to apply for a patent and the patent right in dispute belong to the appellant. The appellee had no right to apply for the patent in dispute in his name. However, the appellee still applied for and was granted the patent in dispute in his name. Accordingly, it is reasonable for the appellant to request for amending the ownership of the patent in dispute based on Article 179 of the Civil Code.
Because neither the appellant nor the appellee filed an appeal to the Supreme Court, we cannot ascertain the Supreme Court’s opinion about the 2020 Min Zhuan Shang Zi No. 40 civil judgment. It is worthwhile to monitor the Supreme Court’s opinion about cases in which a true owner of the right to apply for a patent requests for return of a patent right under a claim for unjust enrichment.
[1] “The 2015 Min Zhuan Shang Zi No. 26 civil judgment,” page 21.
[2] “The 2017 Min Zhuan Shang Zi No. 14 civil judgment,” pages 7-8.
[3] “The 2017 Min Zhuan Shang Zi No. 9 civil judgment,” pages 70-71.
[4] “The 2018 Min Zhuan Shang Zi No. 17 civil judgment,” page 74.
[5] “The 2020 Tai Shang Zi No. 2155 civil judgment,” page 6.
[6] According to page 6 of the “Interpretations of the Patent Act” published by the TIPO in 2021, the right to file a patent application, broadly speaking, includes two aspects, namely the “right to file a patent application” and the “right to apply for a patent.” The “right to file a patent application” refers to who has the right to decide whether to apply for the creation, what kind of patent to apply for, and in which countries the patent should be applied for after the creation is completed and before the patent application is filed. The “right to apply for a patent” refers to the applicant’s right to continue applying or assigning the patent application. After the person who has the right to file a patent application files the application, his/her right to file a patent application is transformed into the right to apply for a patent.
[7] “The 1972 Tai Shang Zi No. 1695 civil judgment;” and “the 2010 Tai Shang Zi No. 2255 civil judgment.”
[8] “The 2020 Min Zhuan Shang Zi No. 40 civil judgment,” page 11.
*Patent Attorney, Section Chief of International Patent Division at Tai E International Patent & Law Office
