*AI-generated translation, for reference only.

[Keywords] Civil, ownership of patent application right, PCT application, termination of effect, interest in action

Case Facts

Hai [REDACTED] Group alleged that: Wuxi [REDACTED] Technology Co., Ltd. (hereinafter referred to as Wuxi [REDACTED] Company) filed an invention patent application with the China National Intellectual Property Administration on May 30, 2016, with the publication date of the application being August 24, 2016. In May 2018, Hai [REDACTED] Group filed a lawsuit against Wuxi [REDACTED] Company regarding the ownership of the patent application right, claiming that the aforementioned right to the invention patent application belonged to Hai [REDACTED] Group. An effective judgment has confirmed that the right to the invention patent application belongs to Hai [REDACTED] Group. Hai [REDACTED] Group now discovered that the invention patent with international application number PCT/CN2016/085430, international publication number WO/2017/206199, titled "A Measurement Device and Method for Measuring the Mass Flow of Gas, Oil and Water Phases in Wet Gas," has the exact same background art, abstract, claims, specification, and drawings as the aforementioned invention patent in the other case, constituting the same technical solution. Therefore, it requests that the PCT application for the patent in question be owned by Hai [REDACTED] Group.

Wuxi [REDACTED] Company argued in its defense: A dispute over the ownership of a patent application right is an action for confirmation. An action for confirmation must have an interest in litigation relief. At the time of this lawsuit, the effect of the PCT application for the patent in question had already terminated in all PCT member states or regions, including China. The request for confirmation in this case will no longer affect the actual or future legal status. The request of Hai [REDACTED] Group has no actual interest, and it requests the dismissal of Hai [REDACTED] Group's lawsuit.

The court ascertained through trial: Wuxi [REDACTED] Company filed an invention patent application with the China National Intellectual Property Administration on May 30, 2016, with the publication date of the application being August 24, 2016. In May 2018, Hai [REDACTED] Group filed a lawsuit against Wuxi [REDACTED] Company regarding the ownership of the patent application right, claiming that the aforementioned right to the invention patent application belonged to Hai [REDACTED] Group. The Intermediate People's Court of Suzhou, Jiangsu Province rendered the civil judgment (2018) Su 05 Min Chu No. 539, confirming that the right to the invention patent application belongs to Hai [REDACTED] Group. Dissatisfied, Wuxi [REDACTED] Company appealed. The Higher People's Court of Jiangsu Province rendered the civil judgment (2019) Su Min Zhong No. 237, dismissing the appeal and upholding the original judgment.

On May 30, 2016, Wuxi [REDACTED] Company filed the invention patent application in question with the China National Intellectual Property Administration. On June 12, 2016, based on the patent application in question as the priority right, and relying on substantially the same claims, specification, and drawings, it filed an international application with the International Bureau of the World Intellectual Property Organization (hereinafter referred to as WIPO) in accordance with the Patent Cooperation Treaty (hereinafter referred to as PCT). The WIPO International Bureau subsequently published the application. The published patent documents included a front view, cross-sectional view, side view, and longitudinal cross-sectional view of the measurement device, which were identical to the four drawings in the specification of the patent in dispute in the previous case. On July 17, 2017, the PCT application in question entered the European national phase, and on January 17, 2018, the European Patent Office published the European patent application, which was deemed withdrawn on January 11, 2019. On July 19, 2017, the PCT application in question entered the US national phase. On July 18, 2019, the United States Patent and Trademark Office published the US patent application, with the applicant and inventor being the same as those in the PCT application in question. A patent was granted on February 9, 2021. The PCT application in question did not enter the Chinese national phase.

The Intermediate People's Court of Suzhou, Jiangsu Province rendered the civil judgment (2022) Su 05 Min Chu No. 230 on September 13, 2022: The PCT application for the invention patent with international application number PCT/CN2016/085430, international publication number WO/2017/206199, and title "A Measurement Device and Method for Measuring the Mass Flow of Gas, Oil and Water Phases in Wet Gas" shall be owned by Hai [REDACTED] Group. Dissatisfied, Wuxi [REDACTED] Company appealed, arguing that the effect of the PCT application in question had terminated in all PCT member states or regions, including China, and that Hai [REDACTED] Group's request had no actual interest, and thus the claims of Hai [REDACTED] Group should be dismissed. The Supreme People's Court rendered the civil judgment (2023) SPC IP Civil Final No. 428 on June 28, 2023, dismissing the appeal and upholding the original judgment.

Judge's Opinion

The effective judgment of the court holds that Hai [REDACTED] Group has an interest in the action for confirmation of the ownership of the PCT application right in question. The dispute between the parties is an action for confirmation. The purpose of an action for confirmation is to confirm the existence or specific state of a disputed civil legal relationship or specific legal fact between the parties, so as to stabilize the legal relationship and legal status. An action for confirmation must have an interest in the action, i.e., a legal interest that requires judicial relief or protection. For the plaintiff, when their rights or legal status are in a state of actual unease, and the judicial decision is an appropriate and necessary remedy to eliminate such unease, the plaintiff has an interest in the action for confirmation.

Specifically in this case, first, there exists a state of actual unease that could harm the legitimate rights and interests of Hai [REDACTED] Group. (1) A PCT application is a patent application filed under the Patent Cooperation Treaty. The right to a PCT application can bring the applicant procedural convenience benefits. A PCT application corresponds to the possibility of patent grants by foreign or other regional patent offices. Before its effect terminates, there is a reasonable expectation of grant, and thus the right holder enjoys certain actual interests. The filing of a PCT application by another person without authorization constitutes an infringement of the rights and interests of the right holder. (2) A PCT application is divided into two independent phases: the international phase and the national phase. Article 22 of the Patent Cooperation Treaty stipulates that the applicant shall provide a copy of the international application and its translation to each designated office, and pay the national fee, no later than the expiration of 30 months from the priority date. The Treaty stipulates the applicable time limits for a PCT application to enter the national phase, and also provides that member states may excuse any delay in the time limit on the grounds permitted by their national laws. In this case, although according to the relevant provisions of China's Patent Law and its Implementing Rules, the effect of the PCT application in question in China has terminated because it failed to complete the formalities for entering the Chinese national phase within the prescribed time limit, this does not preclude the possibility of it undergoing substantive examination and obtaining a patent grant in other countries or regions. Even if the effect of the PCT application in question has terminated in all PCT member states or regions, and the reasonable expectation of grant has been definitively extinguished, the right holder may still seek relief for the resulting loss of procedural convenience benefits and related actual interest damages. (3) The documents of the PCT application in question have been recorded and publicized by WIPO and on its website. The published applicant information is Wuxi [REDACTED] Company. This application information is inconsistent with the information confirmed by the effective judgment that the right to the invention patent application belongs to Hai [REDACTED] Group. In the situation where both relate to the same invention, the inconsistency in the published information places the legal status of the owner of the invention in an uncertain state, thereby causing the relevant public to have a false understanding of the owner of the invention, and affecting the goodwill and legitimate rights of the right holder. In summary, the confirmation of the legal status of Hai [REDACTED] Group in this case is the basis for it to claim relevant actual or future legitimate rights and interests. The uncertainty regarding the ownership of the PCT application right in question causes it to be in a state of actual unease where its legitimate rights and interests are harmed.

Second, this case has the necessity and appropriateness of adjudication. Where a PCT application has been accepted, the actual right holder may request a change of applicant from the International Bureau according to WIPO rules within a certain period. However, in this case, because the PCT application in question has exceeded the time limit for completing the change formalities before the International Bureau as stipulated in Rule 92bis of the Regulations under the Patent Cooperation Treaty, it is no longer possible to change the applicant through self-application, and no other remedy channel exists. If Hai [REDACTED] Group is indeed the actual right holder of the PCT application right in question, its true legal status cannot be reflected in the applicant information published by WIPO. Furthermore, before the PCT application right in question is determined by an effective judgment, it cannot seek other remedies in its own name to protect its legitimate interests. In this context, the judicial confirmation of the ownership of the PCT application right can stabilize the true legal status of the parties and contribute to the complete resolution of current or future disputes, providing protection and relief to the actual right holder. In this case, the PCT application in question has been granted a patent in the United States, and Hai [REDACTED] Group cannot change the right holder through self-application in the US national phase. Therefore, this lawsuit is necessary and appropriate for it to seek relief regarding the ownership of the US patent right.

Judgment Digest

Even if the effect of a PCT application has terminated in all PCT members, including China, a person who claims to be the actual right holder of the patent application right still has an interest in an action for the ownership of the PCT application right against the published PCT applicant as the defendant, and the people's court may hear the case.

Related Index

Article 22 of the Patent Cooperation Treaty

First Instance: Civil Judgment (2022) Su 05 Min Chu No. 230 of the Intermediate People's Court of Suzhou, Jiangsu Province (September 13, 2022)

Second Instance: Civil Judgment (2023) SPC IP Civil Final No. 428 of the Supreme People's Court (June 28, 2023)

The text of this case was adjusted as of February 26, 2024.