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What Is the Legal Basis for a Genuine Owner of the Right to Apply for a Patent to Request Return of a Patent Right?
In disputes over ownership of the right to apply for a patent, due to the absence of explicit stipulation in the Patent Act, doubts often arise in the local practice concerning what legal basis a genuine owner of the right to apply for a patent may assert to request the non-genuine patent applicant to return the granted patent right. There have been several cases in which the genuine owners of right to apply for a patent requested their rights in claims for tort or unjust enrichment, and affirmative opinions seemed to be adopted in most court practices.
To name a few, 2014 Min Zhuan Su Zi No. 71 Civil Judgment rendered by the Taiwan Intellectual Property Court on June 3, 2015 explicitly indicated that “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, both 2018 Min Zhuan Shang Zi No. 21 Civil Judgment rendered by the Taiwan Intellectual Property Court on November 28, 2018 and 2020 Min Zhuan Shang Zi No. 18 Civil Judgment recently rendered by the Taiwan Intellectual Property Court on April 29, 2021 indicated that “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 above opinions, 2020 Tai Shang Zi No. 2155 Civil Judgment[1] rendered by the Taiwan Supreme Court on May 27, 2021 seems to take a different stance.
The appellee (the plaintiff of the first instance) of this case was a generator manufacturer A, who claimed that appellant B (the codefendant of the first instance) applied for a utility model patent based on his commodity-related technology without permission, which was granted a patent by the Intellectual Property Office through publication (hereinafter referred to as the patent in dispute). As appellant B obviously benefited without any legal ground and intentionally infringed Manufacturer A’s status as a genuine owner of the right to apply for a patent, causing his loss that he can not own the right of the patent in dispute, Manufacturer A requested the court's declaration that said right to apply for a patent belongs 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 (2018 Min Zhuan Shang Zi No. 17 Civil Judgment rendered by the Intellectual Property Court) determined that manufacturer A's statements demanding the court’s declaration that he is a genuine owner of the right to apply for a patent and demanding the return of the right of the patent in dispute are sustainable, but the Supreme Court overturned the foregoing opinion with the following rationale:
1. When a dispute occurs over the right to apply for a utility model patent, in addition to filing a request with the Specific Patent Agency for change of ownership of the right(s) involved or reaching an agreement between the parties over the assignment of the said patent right, the only other way to solve such dispute is to file 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.
2. Before granted a utility model patent right by the Specific Patent Agency through publication in accordance with law, should it be deemed that a genuine creator's utility model patent right is infringed by a non-genuine patent applicant, and that said creator is thus entitled to request reinstatement from said non-genuine patent applicant by demanding the return of said patent right in accordance with the provisions of tort? Also, 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. Since the utility model patent right obtained by said non-genuine patent applicant is granted by the Specific Patent Agency, should it be deemed that the damage suffered by said creator is the loss of the utility model patent right, and that said creator may request the return of said patent right before being granted the utility model patent right by the Specific Patent Agency through publication in accordance with law? There is room for further investigation.
On the issue of attribution of rights, however, the Specific Patent Agency has always treated it as a dispute over private right rather than the Agency's responsibility, and considers that the decision should be left to the parties concerned to resolve through judicial remedies first. Even if a genuine right owner complies with the provision of Article 35 of the Patent Act[2] cited by the Taiwan Supreme Court, Part V, Chapter 1 (Invalidation of Patent Right) of the Taiwan Patent Examination Guidelines still requires a genuine right 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 after the publication date of the patent concerned, but also requires that a new patent application should be filed within two months after the day on which the invalidation decision revoking the patent has become 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 for Article 35 of the Patent Act requires revocation of the 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. Hence, court practice has developed measures which allow a genuine owner to request the court to render a decision to return to him/her 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 preceding judgment, the Taiwan Supreme Court appears to have held different opinions against such practices, it remains to be seen whether the genuine right owners can successfully secure their rights in the future.
[1] The first instance: 2017 Min Zhuan Su Zi No. 72 Civil Judgment rendered by the Taiwan Intellectual Property Court on March 29, 2018; the second instance is the 2018 Min Zhuan Shang Zi No. 17 Civil Judgment rendered on April 11, 2019.
[2] 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.”