The Supreme Administrative Court rendered the 109-Pan-325 Decision of June 11, 2020 (hereinafter, the “Decision”), holding the “interested parties” who may file an invalidation on the ground that the patentee of a utility model patent is not the person entitled to file the application include the actual inventors, creators or whose assignees or successors or parties with a relationship of employment or commissioned research and development.
According to the facts underlying this Decision, Appellant Company A applied to the Intellectual Property Office (hereinafter, the “IPO”) for a utility model patent, and the IPO granted and published the patent and issued a patent certificate (hereinafter, the “Patent-at-issue”) after its formality examination. Appellee Company B subsequently filed an invalidation on the ground that the Patent-at-issue violated Article 107, Paragraph 1, Subparagraph 3 of the Patent Law amended and promulgated on February 6, 2003 and going into effect on July 1, 2004 (hereinafter, the “Effective Patent Law when the patent was granted”) (namely, the patentee of the utility model patent at issue is not the person entitled to file the application.) The IPO rendered a disposition that “rejected the invalidation against Claims 1 through 5” as a result of its examination. Dissatisfied, Company B brought an administrative litigation with the original trial court to seek a decision that sets aside both the decision on the petition and the Original Disposition and orders the IPO to render a disposition that “establishes the invalidation against Claims 1 through 5” of the Patent-at-issue. The original trial court approved Company A’s independent participation in this IPO lawsuit upon its motion and rendered a decision sought by Company B. Dissatisfied, Company A appealed.
According to the Decision, Article 107 Paragraph 1, Subparagraphs 3 and Paragraph 2 of the Patent Law provide that the parties that may file an invalidation on the ground that the patentee of the utility patent is not the person entitled to file the application shall be limited to interested parties. The so-called “interested parties” shall refer to the persons entitled to file the application, including the actual inventors, creators or whose assignees or successors or parties with a relationship of employment or commissioned research and development.
In addition, according to the Decision, Company B asserted that the evidence was created by its employee and presented an employment agreement to support the assertion. And also, the design drawings of the evidence all indicate Company B’s English name. This further shows that it was a creation completed by Company’ B’s employee during the performance of his job duty. Therefore, Company B’s assertion that it was an interested party to the right to apply for the Patent-at-issue is legally grounded.