*AI-generated translation, for reference only.

Recently, the Intellectual Property Court of the Supreme People's Court concluded an appeal case regarding a dispute over the ownership of patent application rights. It clarified that where an invention-creation lacks a basis in genuine inventive activity, and the patent application violates the principle of good faith, the patent application and any patent right granted on that basis lack a legitimate foundation. In such circumstances, it is unnecessary to confirm the ownership of the patent application or patent right. Concurrently, the Supreme People's Court transferred the suspected illegal leads in this case to the relevant administrative authority for handling.

The disputed patent application was an invention patent application titled "A Process for Preparing Artificial Bear Bile Powder," with the applicant being Ji [REDACTED] Company. The inventors recorded on the patent application documents, and acknowledged by all parties, were Zhao [REDACTED] bin, Wang [REDACTED] dan, Qin [REDACTED] bai, Cheng [REDACTED], and Ding [REDACTED]. The five inventors originally worked at Bang [REDACTED] Company, but were later dispatched by Bang [REDACTED] Company to participate in the establishment of Ji [REDACTED] Company. Due to an equity dispute, Bang [REDACTED] Company and Ji [REDACTED] Company ceased cooperation. The five inventors then resigned from Bang [REDACTED] Company and joined Ji [REDACTED] Company. Ji [REDACTED] Company filed the disputed patent application within one year after the five inventors resigned from Bang [REDACTED] Company. Bang [REDACTED] Company requested that the ownership of the disputed patent application be confirmed as belonging to it.

The first-instance court held that the disputed patent application combined two new enzymes owned by Ji [REDACTED] Company with the biotransformation technology using cell lysate or bacterial resuspension liquid owned by Bang [REDACTED] Company. Therefore, both Bang [REDACTED] Company and Ji [REDACTED] Company had made inventive contributions to the disputed patent application. The ownership of the disputed patent application should be jointly held by Bang [REDACTED] Company and Ji [REDACTED] Company, which had made the inventive contributions.

During the second instance, based on the specific circumstances of the case and the parties' claims, and in accordance with Article 110, Paragraph 1 of the Interpretation of the Supreme People's Court on the Application of the Civil Procedure Law of the People's Republic of China and Article 64, Paragraph 1 of the Provisions of the Supreme People's Court on Evidence in Civil Procedures, the Supreme People's Court required the five inventors to appear in person to be questioned separately regarding the relevant facts of the case. All five inventors assured that they would make truthful statements and signed affidavits. All parties had no objection to the facts that Ji [REDACTED] Company did not have experimental conditions from its establishment until the filing date of the disputed patent application, and that neither Bang [REDACTED] Company nor Ji [REDACTED] Company had ever conducted experiments using the two new enzymes before the filing date of the disputed patent application.

The Supreme People's Court held in the second instance that: If the relevant patent application or patent right for which ownership confirmation is sought is not based on genuine inventive activity, but rather involves fabricated or fictitious experimental data, violating the principle of good faith, then the purported rights and interests in the invention-creation related to the patent application or patent right lack any legitimate foundation. No one should benefit from such actions, and naturally, there is no need to confirm the ownership of such patent application or patent right. Under these circumstances, the people's court may, based on the established facts, decline to support the party's claim for confirmation of ownership of the patent application right or patent right. Although the Patent Law amended in 2008, applicable at the time of the disputed patent application, did not stipulate that "patent applications shall comply with the principle of good faith," this does not affect the adjudication of this case based on the principle of good faith stipulated in Article 7 of the General Principles of the Civil Law applicable at that time.

In this case, the evidence presented indicated that the disputed patent application was not based on genuine inventive activity. First, after the five inventors appeared in court and were questioned separately regarding the relevant facts of this case, their statements corroborated each other, sufficiently demonstrating that Ji [REDACTED] Company had not actually completed the experiments described in the detailed embodiments section of the disputed patent application, and the relevant experimental data were fabricated by Ji [REDACTED] Company. All parties had no objection to the facts that Ji [REDACTED] Company did not have experimental conditions from its establishment until the filing date of the disputed patent application, and that neither Bang [REDACTED] Company nor Ji [REDACTED] Company had ever conducted experiments using the two new enzymes before the filing date of the disputed patent application. Therefore, it could be confirmed that the experimental process and data described in the detailed embodiments section of the disputed patent application were fabricated. Second, all content recorded in the detailed embodiments section of the specification of the disputed patent application was based on the two new enzymes, and the scope of protection of all its claims also included technical solutions using the two new enzymes. However, neither Bang [REDACTED] Company nor Ji [REDACTED] Company had actually conducted experiments using the two new enzymes before the filing date of the disputed patent application. Since the technical solutions claimed must be supported by the description, and the disputed patent application pertains to the field of biopharmaceuticals where verification of technical effects relies on experimental data, given that none of the detailed embodiments of the disputed patent application had been experimentally verified, all content for which protection was sought in the disputed patent application lacked a legitimate foundation. Furthermore, as experimental data cannot be modified during the patent application process, nor can supplemental experimental data be added to overcome inherent defects in the original application documents, the disputed patent application lacked the possibility of becoming a legitimate right. Therefore, ownership of the disputed patent application should not be confirmed, the claims of Bang [REDACTED] Company and others should be rejected, and Ji [REDACTED] Company should also not enjoy any rights in the disputed patent application.

In conclusion, the Supreme People's Court rendered a second-instance judgment: Rejecting the claims of Bang [REDACTED] Company.

Under normal circumstances, the validity of a patent application or patent right does not affect the people's court's confirmation of ownership based on the parties' claims. However, when an invention-creation lacks a basis in genuine inventive activity, the rights and interests involved in that invention-creation lack any legitimate foundation, and therefore, ownership should not be confirmed. This case established the fact that the parties fabricated experimental data, advocating that inventive activities should always be based on the principle of good faith. This has positive significance for regulating the order of patent applications and curbing improper filings.