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Who Is the "True Inventor"?
An application for patent should be undertaken by the individuals with the right to apply. According to Article 5, Paragraph 2 of the Patent Act, the term "the owner of the right to apply for a patent" means an inventor, a utility model creator, a designer, or the assignee or successor thereof. As invention, creation and design are factual behavior, when an application for a patent is fraudulently made by another person who pretends to be the inventor, creator or designer (for the sake of simplicity, hereinafter collectively referred to as "inventor"), determination of the true inventor by the court must be based on the facts.
In recent judgments by the Intellectual Property Court (the "IP Court"), one can see that the court has been adopting a standard of "substantively identical or similar." In other words, the court would compare the contents of the invention revealed in evidence furnished by the individual claiming to be the true inventor with the claim of patent application, and if it finds that the former is "substantively identical or similar" to the latter, it would deem the individual who furnishes such evidence to be the true inventor:
l Judgment No. 2012 -Min-Zhuan-Shang-2 (dated April 11, 2013)
Company A claims that its equipment was developed and designed by its employee. However, its original drawings were inadvertently divulged when it made price inquiries with its downstream OEM. As a result, B became aware of its technical contents and used them to apply for the patent at issue. Company A sued B and petitioned the IP Court for recognition that it was the party entitled to patent application rights.
The IP Court invoked copyright dispute standards, including: (1) Whether or not the alleged infringing work is "substantively identical or similar" to the work of authorship, and (2) whether the defendant had been "in contact" with the work of authorship. It arrived at this conclusion:
First, upon comparison of the patent's claims with the technical contents of the equipment, the IP Court thought that although there were minor differences between them, such differences could be easily conceived by persons with ordinary skill in the art. Thus, the two were substantively identical or similar overall (on the basis of the All-Elements Rule).
Second, with respect to whether B had come into contact with the drawings, although Company A had submitted several e-mails as evidence, they were met with B's defense that such e-mails were not sent or received by B and hence it was impossible to adjudge their authenticity. In addition, B argued that the relevant evidence was unable to truly prove that B had ultimately obtained the technical contents of the equipment before using them as the basis for its application for patent.
In this regard, the IP 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." Thus, when it is difficult to prove the existence of the fact of "contact," the court has adopted "whether or not there was possibility of contact" as its basis for determination in keeping with the legal principle of preponderance evidence. If the evidence is objectively capable of proving a "likelihood" of B having come into contact, and B is unable to prove otherwise, the court should accept the facts as claimed by Company A.
The IP Court thus ruled that there was high likelihood of B having come into contact with the drawings, and since the characteristics of the patent at issue were substantively similar to those of the equipment concerned, the patent right should belong to Company A.
l Judgment No. 2013- Min-Zhuan-Shang-9 (dated May 15, 2014)
Company A as plaintiff claimed that the patent at issue was invented by its employee X in 2001. Company B was the patentee of the patent at issue, and its factory manager Y was also an employee of Company A at the material time and had in fact participated in the research, development and testing of the invention at issue. After Y resigned from Company A in 2004, he set up Company B in 2006 and applied for a patent for the said invention. Company A claimed that Y fraudulently applied for the patent as its inventor. It also provided, as evidence, test records written by X and Y when they were still working at Company A.
When reviewing the abovementioned test records, the IP Court accepted that they were related to the said patent. However, with regard to Company A's claim that the patent's technical characteristics were already disclosed in the said 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 Company A did not have complete test records specifying the whole formulation for the said patent, and the composition recorded in the test records was different from that described in the patent specification, it follows that the technical contents of the two were not substantively similar. As such, the court rejected Company A's complaint.
In this judgment, the IP Court specifically explained its stand on the determination of "substantive similarity" as such: "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 IP Court did not accept that Company A should be the true holder of the patent, its judgment was still unfavorable to Company B. As Company A made the alternative claim of non-existence of Company B's patent and patent application right, and as Company B was unable to show the invention process to prove that it was indeed the patent holder (Company B had argued that the relevant materials and records were no longer available as a result of their removal and that of its patent firm), along with the fact that there were inconsistencies between the testimony of Y, one of the inventors for the said patent, and the technical characteristics of the said patent, the IP Court ruled that Company B's patent right and patent application right did not exist.
Ultimately, neither party was accepted as having the patent application right.