*AI-generated translation, for reference only.

Recently, the Intellectual Property Court of the Supreme People's Court concluded an appeal case involving a dispute over ownership of the right to apply for a patent. The Court made clear that where an invention-creation lacks a basis in genuine inventive activities, and the filing of the patent application violates the principle of good faith, the patent application and the patent right obtained on that basis lack a lawful foundation. In such circumstances, there is no need to determine the ownership of the patent application or patent right. At the same time, the Supreme People's Court transferred the clues of suspected violations of law in this case to the relevant administrative authorities for handling.

The patent application in dispute was an invention patent application titled "A Process for Preparing Artificial Bear Bile Powder." The applicant was Ji [REDACTED] Company. The inventors recorded in the patent application documents and acknowledged by all parties were Zhao [REDACTED]Bin, Wang [REDACTED] Dan, Qin [REDACTED] Bo, Cheng [REDACTED], and Ding [REDACTED]. The five inventors had originally all worked at Bang [REDACTED] Company, and were later assigned 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. Within one year after the five inventors resigned from Bang [REDACTED] Company, Ji [REDACTED] Company filed the patent application in dispute. Bang [REDACTED] Company requested confirmation that the right to apply for the patent application in dispute belonged to it.

The Court of First Instance held that the patent application in dispute combined two novel enzymes owned by Ji [REDACTED] Company with cell lysate or bacterial cell resuspension owned by Bang [REDACTED] Company for bioconversion technology. Therefore, both Bang [REDACTED] Company and Ji [REDACTED] Company had made creative contributions to the patent application in dispute, and the right to apply for the patent application in dispute should be jointly owned by Bang [REDACTED] Company and Ji [REDACTED] Company, both of which had made creative contributions thereto.

During the second instance proceedings, according to the specific circumstances of the case and the parties' claims, and pursuant to 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 Several 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 and separately accept inquiries concerning the relevant facts of the case. All five inventors guaranteed that they would make truthful statements and signed written guarantees. The parties had no objection to the facts that, from the establishment of Ji [REDACTED] Company to the filing date of the patent application in dispute, Ji [REDACTED] Company had no experimental conditions, and that neither Bang [REDACTED] Company nor Ji [REDACTED] Company had conducted experiments using the two novel enzymes before the filing date of the patent application in dispute.

The Supreme People's Court held in the second instance that where the relevant patent application or patent right whose ownership is requested to be confirmed is not based on genuine inventive activities, but instead involves fabricated or fictitious experimental data and violates the principle of good faith, the so-called rights and interests in the invention-creation involved in the patent application or patent right have no lawful foundation whatsoever, and no one may benefit therefrom. Naturally, there is no need to determine the ownership of such patent application or patent right. In such circumstances, the people's court may, on the basis of the facts ascertained, refuse to support a party's claim for confirmation of ownership of the right to apply for a patent or of the patent right. Although the Patent Law as amended in 2008, which applied at the time of the filing of the patent application in dispute, did not provide that "filing a patent application shall follow the principle of good faith," this did not affect the trial of this case under the principle of good faith prescribed in Article 7 of the General Provisions of the Civil Law, which was applicable at that time.

In this case, the evidence on record showed that the patent application in dispute was not based on genuine inventive activities. First, after the five inventors appeared in court and separately accepted inquiries concerning the relevant facts of the case, their statements corroborated each other and were sufficient to show that Ji [REDACTED] Company had not actually completed the experiments recorded in the specific embodiments section of the patent application in dispute, and that the relevant experimental data had been fabricated by Ji [REDACTED] Company. The parties had no objection to the facts that, from the establishment of Ji [REDACTED] Company to the filing date of the patent application in dispute, Ji [REDACTED] Company had no experimental conditions, and that neither Bang [REDACTED] Company nor Ji [REDACTED] Company had conducted experiments using the two novel enzymes before the filing date of the patent application in dispute. Therefore, it could be confirmed that the experimental process and data recorded in the specific embodiments section of the patent application in dispute were fabricated. Second, all contents recorded in the specific embodiments section of the description of the patent application in dispute were based on the two novel enzymes, and the protection scope of all its claims also included technical solutions using the two novel enzymes. However, neither Bang [REDACTED] Company nor Ji [REDACTED] Company had actually conducted experiments using the two novel enzymes before the filing date of the patent application in dispute. Since the technical solutions claimed shall be based on the description, and since the patent application in dispute involved the field of biopharmaceuticals, where verification of technical effects depends on experimental data, all contents sought to be protected by the patent application in dispute lacked a lawful foundation where none of its specific embodiments had been experimentally verified. Moreover, because experimental data cannot be amended during the patent application process, nor can supplementary experimental data be submitted for the purpose of overcoming inherent defects in the original application documents, the patent application in dispute had no possibility of becoming a lawful right or interest. Therefore, ownership of the patent application in dispute should not be determined, the claims of Bang [REDACTED] Company and others should be dismissed, and Ji [REDACTED] Company should not enjoy any rights or interests in the patent application in dispute.

In conclusion, the Supreme People's Court rendered a second-instance judgment dismissing 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 of rights based on the parties' claims. However, where an invention-creation lacks a basis in genuine inventive activities, the rights and interests in the invention-creation involved have no lawful foundation whatsoever, and therefore ownership thereof should not be confirmed. This case ascertained the fact that the party fabricated experimental data, advocated that inventive activities should always be based on the principle of good faith, and has positive significance for regulating the order of patent applications and curbing improper applications.