Patent counterfeiting is when the impersonator applies for a patent for another person's technology in his own name, which can be divided into patent application and patent counterfeiting according to whether it is authorized or not. The usual solution of the mainland courts is to directly return the fraudulent application right or patent right to the real right holder, but there are many legal interests that are omitted to be evaluated, which will cause many problems, and the mainland lacks institutional design in this regard. European countries such as Germany and France and Japan have different laws and regulations on patent counterfeiting, and there are different preferences regarding whether the right to apply or patent can be directly returned. By refuting the arguments in favor of the return of fraudulent patents one by one, the position of non-return is clarified. Combined with the comparative method, taking the authorization of the fraudulent application as the demarcation point, the fraudulent patent application and the fraudulent patent should be dealt with from the perspective of rejection and invalidation respectively.
I. Formulation of the problem
Fraudulent patent application is an academic term first proposed by Japan scholar Yoshiyuki Tamura, which refers to the act of filing a patent application without authorization by a non-inventor, but with the gradual evolution of practice, this definition can hardly cover all situations. In short, a fraudulent patent application may be manifested in the fact that the actor submits the fraudulent application without authorization, or it may be manifested in the fact that after the inventor or the applicant (hereinafter collectively referred to as the "real right holder") submits the application in person, the actor changes the registered applicant to himself by forging materials, and further transfers the application right to a third party, or directly withdraws the application after the publication date, resulting in the application becoming prior art. In addition, there are also patents of fraudulent recognition, which refer to the results of the authorization obtained from the act of fraudulent application, and also refer to the patents obtained after the registered patentee is changed to himself by forging materials. For the above different directions, this article will only discuss one of them due to space limitations, that is, the impersonation caused by the submission of the application by a fraudulent person.
The two acts of fraudulent application and patent counterfeiting are hereinafter collectively referred to as patent counterfeiting, and patent counterfeiting causes ownership disputes, which can be specifically divided into two types of statutory causes of action: patent application dispute cases and patent right dispute cases. When dealing with a dispute over the right to apply, the court's usual logic is to determine the identity of the inventor based on the evidence presented by both parties, conduct a negative evaluation of the fraudulent application, and finally award the right to apply for a patent to the real right holder by way of confirmation. For example, in the case of a dispute over the ownership of the right to apply for a patent by a Fujian Food Co., Ltd. and Chen Moujia, the defendant Chen Moujia mastered 19 of the plaintiff's technical achievements during his tenure as a senior executive of the plaintiff company, and applied for patents for the relevant technologies after leaving the company.
When handling a patent dispute case, the court will first determine whether there is any counterfeiting of the patent in question based on the evidence presented by both parties, and then order the impostor to return the patent and assist the real right holder to go through the relevant procedures, or directly make a judgment to confirm the identity of the inventor of the real right holder. For example, in the case of a dispute over the ownership of patent rights between a chemical company limited by shares in Zhejiang and a certain Meng, the defendant A Moumou opened a company on his own after leaving the plaintiff company, and successively applied for a series of patents in the name of the company and his wife Meng to obtain authorization.
Although the above-mentioned straightforward judgment seems to uphold fairness and justice and make up for the plaintiff's losses, it does not take into account the many legal interests closely related to the technology in question. If the patent right during the period of impersonation is not exercised by the real right holder, the direct transfer of the patent will unduly shorten the actual term of use. If there is a third party applying for the same technology between the date of the application for fraudulent recognition and the date of the original planned application of the real right holder, if there is no fraudulent application, the application of the third party shall constitute a conflicting application against the application of the real right holder, and the patent right in question should not have been granted from the beginning, but the court judgment of direct assignment obviously ignores this possibility. Therefore, if the impostor applies for the patent without authorization and withdraws the application after the publication date, if the right holder sues beyond the six-month time limit, it seems that the court should theoretically not support the real right holder to accept the patent right, and can only allow corresponding compensation, but the judgment in practice is contrary to this.
Based on the above analysis, it can be seen that there are many shortcomings in the handling of patent counterfeiting by mainland courts, which reflects the lack of institutional design. In view of this, it is the core of this paper to analyze the above problems one by one, and to draw appropriate and reasonable solutions in combination with comparative law research.
2. Scheme analysis and position judgment for dealing with patent fraud
(1) The legal interest of the omission of the assessment when the judgment is directly returned
When one's property is taken possession by others without authorization, the best way to restore it to its original state is to directly retrieve it, and the mainland court's judgment on the issue of patent counterfeiting is consistent, which reflects this simple concept of fairness and justice. However, legal issues are often dealt with in a way that is unique, especially in the field of intellectual property. How to deal with patent counterfeiting, it is not only necessary to seek to deprive the offender of the unjust benefits obtained and remedy the losses of the real right holder, but also to uphold the basic legal principles and logic to avoid the imbalance of interests between different subjects. In these cases, the court's judgment can be described as simple and straightforward, but the price is the omission of the evaluation of many legal interests, which will inevitably lead to the actual protection of rights that is inconsistent with the proper state. The following is explained according to the perspectives of different subjects in patent counterfeiting.
1. The real right holder
The term of protection of a patent right is calculated from the filing date. If the application or authorization obtained by the impostor is directly transferred to the real right holder, the term of protection of the relevant patent will remain the same as the date of the application for impersonation. For the real right holder, what the impostor obtains from the impostor is a right with an incomplete term of protection, and the period for the right holder to use and authorize others to use the relevant technology to obtain R&D returns is shortened. For example, in the case of Gao XX v. Guangzhou Sixth Sense Sanitary Products Co., Ltd. et al., a patent ownership dispute, the original defendant was the two parties to the contract of entrusted design, and the contract stated that the ownership and intellectual property rights of the relevant design belonged to the plaintiff, but the defendant submitted an application for the design without authorization and obtained the design authorization, and the courts of both instances found that the defendant's act was illegal and directly ruled that the plaintiff enjoyed the patent in question, but did not consider the fact that there was an interval of four years between the date of the application for fraudulent recognition and the date of the final judgment. This represents a large percentage of the term of any one patent. The indirect losses caused by such a judgment do not conform to the principle of filling in, that is, restoring the relevant rights and obligations to the original state before the illegal act occurred.
2. Theoretical third person
The patent application date is the time node to determine whether the applied technical solution is novel. For applications filed by counterfeiters, the novelty examination should be combined with the prior art before the application date of the fraudulent recognition and the conflicting application; For applications filed by real right holders, the novelty examination should be based on the prior art and conflicting applications before the actual filing date. Logically, it cannot be concluded that as long as the application for fraudulent recognition can be granted a patent, the application of the real right holder will definitely be granted without the conflict of the fraudulent application. Such a judgment omits to examine the legal fact that occurs between the two filing dates, i.e., if there is a third party who also files an application for the same technology during this period, it will further constitute a conflict with the application of the real right holder, or if a third party directly discloses the technology and has entered the public domain, it should also cause novelty damage to the subsequent patent application.
In the former case, if there is no application for counterfeiting and an effective judgment of the court, the "theoretical third party" here should be the patentee of the relevant technology, and the real right holder can still file an application, but it must not be able to obtain authorization through examination. At this time, the court's judgment not only omitted the interests of the third party, but also created a new situation of impersonation, which was obviously improper. In the latter case, the technology should go directly into the public domain for free public use, and the court's decision to transfer the patent right effectively upholds a right that should not exist.
3. Impostors
Preparing a patent application requires a lot of experience, especially the description and claims, which are very difficult for the writer to use in terms of skill and ability. If the slightest carelessness makes it impossible to obtain the grant of a patent, or if the scope of protection after grant lacks market value, so that the right holder cannot obtain a return equal to that of intellectual labor, the contribution of the impostor to the application documents should be taken into account. On the positive side, if the impostor works hard to write the documents so that the relevant technology successfully passes the examination and is granted a patent, it can be said that they have made a certain contribution. This is because if the document is written by the real right holder, there is no guarantee that the same result of authorization and scope of protection will be obtained. Then, when the court directly awards the patent right to the real right holder, it should require the latter to give appropriate compensation for the contribution of the impostor, and the assignor helps the right holder to carry out the patent agency act in disguise. On the negative side, if the impostor maliciously narrows the scope of the claim and "donates" the remaining technology through the specification when drafting the claims, it is of no value to award the relevant application or patent rights to the real right holder. Because the right holder is simply unable to pursue a return commensurate with its R&D costs through such a mutilated scope of protection, it can even be said that such a judgment helps the impostor achieve his malicious purpose of impersonation.
4. The public
When a technology is disclosed by others without authorization, if the conditions for constituting a trade secret are met, the protection will not be continued due to the loss of confidentiality, and the infringer will have to claim compensation; From the perspective of patent law, there is a statutory exception to the "no loss of novelty", and there is a "protection period" of six months for the real right holder. Since the current law already provides a remedy for the illegal disclosure of technology, it is worth considering whether the court should support the time point when the real right holder's claim for relief exceeds the scope of protection.
First of all, it is clarified that the act of submitting an application without authorization by the impostor will not only make it unduly benefit from the patent value of the technical solution, but also make the disclosure of the technology earlier than the plan of the real right holder, and in many cases, the latter is also the main purpose of malicious impersonation. However, disclosure here is different from the statutory exception of "the contents of the information disclosed by others without the consent of the applicant", because in this case, the disclosure of the technology is carried out through the patent examination procedure of the administrative agency, and as long as the technology is still under the framework of the patent system, there is no problem of loss of novelty based on the procedural logic of the final grant, and there is no need to consider the exception system of "no loss of novelty". The second is the special circumstance, where the counterfeiter maliciously withdraws the application after the publication date. In this case, due to the termination of the patent system, the technology becomes prior art intact and without protection, and the term of protection of six months can be applied to remedy the real right holder.
In both cases, the former was novel and did not require protection, while the latter had a clear boundary of protection. If, after the impostor maliciously withdraws the application, the real right holder files a lawsuit with the court more than six months after the publication date, based on the above-mentioned time limit, the court should not protect his rights in the patent field in any way, and can only discuss the issue of liability for damages under the trade secret system, but in practice, the court's judgment is different. In two cases in which the fraudulent applicant submitted the application without authorization and maliciously withdrew it after the publication date, the court confirmed that the real right holder still had the right to apply for the technology involved in the case, in accordance with the provisions of the Patent Examination Guidelines on "malicious withdrawal of the patent application by the person whose application right is not the real owner", in fact, confirming that the novelty was not lost, but the time between the technical publication and the prosecution in this case had been nearly two years. Another court invoked the provision of two years in the Detailed Rules for the Implementation of the Patent Law that the time limit for restoration of rights was two years, and rejected the plaintiff's claim for the right to apply for the right based on the consideration of protecting the interests of public trust and the public interest, but the two-year time limit invoked in this case was too much compared to six months.
5. Miscellaneous
If the real right holder originally protected the relevant invention as a technical secret and did not intend to apply for a patent, and the impostor applied for a patent after obtaining the technology, resulting in the illegal disclosure of the technical secret, this is an infringement of the trade secret and the right to apply for the real right holder, and only the trade secret claim should be sought, and the statutory six-month time limit for not losing novelty should be considered. If the existing patent is awarded directly to the plaintiff, it is not only unfounded in law, but also leads to excessive protection, since the right holder has never made any procedural contribution to the licensing of the technology. For example, in the case of a pharmaceutical company in Hunan and a bureau of the state, the impostor submitted an application for the plaintiff's trade secrets without authorization, and did not follow up the review procedure after the publication date, resulting in the application being deemed to be withdrawn and the technology involved in the case entered the public domain. In its reasoning, the court held that "if the trade secret involved in the case is stolen by another person and a patent is applied, if the application is ...... If a patent has been granted and is in force, Dehai Pharma can file a ...... or a dispute over the ownership of a patent right to obtain the relevant rights. Although this is only an assumption of the judgment, it is not difficult to see that the court has upheld an overly protective attitude towards the real right holder when hearing such cases.
(2) Research on the comparative system of patent counterfeiting
1. Japan
The Japan Patent Law clearly stipulates that if the patent applicant does not have the right to obtain a license for the relevant invention, the examiner must reject the patent application. Therefore, as long as the real right holder raises an objection to the examination department and proves the existence of a fraudulent application, the former can avoid the former from contradicting its own patent application. If the technology of the fraudulent application has been disclosed based on the procedure, the real right holder must file the application within six months from the date of publication in order to apply the exception of non-loss of novelty under the Japan Patent Law.
Japan has a lack of clear provisions on fraudulent patents that have been applied for and granted without authorization, which has caused disagreements in the judgments of Japan courts. The two most representative cases are the "Powder Rationing Machine" case in Showa 38 and the "Garbage Disposal Device" case in Heisei 13. The former takes the basic position that the right to apply for a patent and the patent right cannot be treated as the same, emphasizes the difference between the two rights in nature and value, and does not support the right to claim the return of the fraudulent patent. The latter supported the return of the counterfeit patent on the premise that the application was filed by the real right holder, but because the facts of the case were different from the common cases of counterfeiting by impersonators, the scope of the judgment was generally considered to be limited by Japan scholars.
Prior to the emergence of this case, the court's attitude in dealing with fraudulent patents was basically inclined to deny the return, and the real right holder could only claim the invalidity of the fraudulent patent from the patent administration department and claim damages from the impersonator. It is worth noting that at that time, the Japan Patent Law did not directly write the fraudulent patent as a regulated mode of conduct into the cause of invalidation, but by denying the procedural validity of the granted patent, it fell within the scope of the invalidation cause that violated the "earlier application", and then achieved the purpose of invalidation.
However, Japan's latest legislative orientation has changed. The Licensing Law adds a direct provision to the grounds for invalidity, whereby a person who does not have the right to receive a license for an invention may be sued for invalidation. At the same time, the bona fide right holder may directly claim the transfer of the patent to the fraudulent patentee pursuant to an order from the Ministry of Economy, Trade and Industry (METI). Some scholars have pointed out that this does not recognize that the right to claim the return of a fraudulent patent can be established, but should be understood as "a request for registration of the transfer of patent rights can be requested". In any case, this is at odds with the prevailing view in discussions in Japan's past long history of unclear legislation, and it is worth pondering, and the relevant theory will be elaborated later.
2. European countries
Article 8 of the current Patent Law of Germany stipulates: "...... patent application is filed by a person who is not entitled to a patent, the applicant may be required to assign the right to obtain a patent." If the application has been granted a patent, the patentee may be required to assign the patent right. The "right to obtain a patent" in the above is the right to apply for a patent under civil law, and there are differences in legislative language. It can be seen that in the Germany patent system, the real right holder can directly request the impersonator to return the relevant rights, whether facing patent counterfeiting at the application or grant stage.
Article 611-8 of the France Intellectual Property Code, in force in France, provides: "If the invention for which an industrial property certificate is applied is an accident for which the inventor or his successor is violated, or is in breach of a statutory or contractual obligation, the injured party may request the recovery of ownership of the application or the issuance of the certificate." "It can be seen that if patent counterfeiting occurs in France, the treatment will be similar to that of Germany.
According to the provisions of the European Patent Convention (hereinafter referred to as the EPC), if the impostor applies for an EU patent without authorization, the real right holder needs to file a lawsuit before the application is granted, and prove that the party recorded in the accused application is not the right applicant. When the court determines that it is not the actual applicant who is eligible for the grant of an EU patent, but "someone else", the real right holder has three options for the application. (1) request a court judgment to replace the impostor's application with its own patent application; (2) re-file a new application for the same technology by yourself; and (3) only require the EU Patent Examination Division to reject the fraudulent application. If the real right holder chooses to re-submit a new application, the original fraudulent application will be deemed to be withdrawn on the new filing date. However, there is no provision in the EPC for the granted fraudulent patents.
3. China
There is a lack of institutional design in the Continental Patent Law to regulate patent counterfeiting.
In the case of an impersonation application. According to the Guidelines for Patent Examination, "Examiners generally do not examine the qualifications of applicants filled in the application form. …… Unless the applicant's qualifications are clearly doubtful based on the content of the patent application, the applicant needs to be notified to provide a certificate of non-service invention issued by the employer. …… A notice of correction is required to inform the applicant to provide supporting documents that can show the applicant's qualifications. It can be seen that at least from the interpretation of this article, the Patent Office recognizes that the applicant's qualifications have a certain need for examination, but unfortunately the subsequent provisions do not clarify the treatment plan for those who are not qualified. In 2020, the new revision of the Patent Law introduced a good faith clause, and in the announcement of the National Intellectual Property Administration of the following year, the application for "forgery" and breach of good faith was included in the abnormal patent application behavior, which seems to mean that there is a law to regulate fraudulent applications in mainland China, but there has not yet been a relevant judgment directly invoked by the court. At the same time, the "forgery" provided in this article should only be for the substance of the invention-creation of the application, and it seems that it is difficult for the forgery of the application documents to fall under this rule.
As far as counterfeiting patents is concerned, the current Patent Law does not explicitly include counterfeiting directly as a cause for invalidation of patents, nor does it stipulate that the real right holder can claim the return of counterfeiting patents from the counterfeiters. However, in the Guidelines for the Acceptance and Examination of Patent Applications, there is a provision that seems to provide a basis for the return of fraudulent patents: "The content of the request for correction of errors shall be ...... The following conditions are met: ...... 2. The content of the request for correction is an error in the patent gazette or a single copy. An error is when the content of the request for correction does not conform to the objective reality. If the fact that the impersonator has applied for another person's technology without authorization and obtained the patent authorization is deemed to be inconsistent with the "objective reality" herein, then the real right holder will have a basis for claiming the return of the fraudulent patent. However, the application of this rule is premised on the premise that "the applicant is the applicant (or patentee) or the patent agency entrusted by it", which procedurally prevents the real right holder from making a claim.
In addition, in many of the cases mentioned above, when the court ruled that the defendant transferred the fraudulent patent to the plaintiff, the legal basis was often only the provisions on ownership in the patent-related laws, or the relevant provisions of the Civil Code on infringement and restitution, which also shows that there are no clear provisions to deal with such issues in mainland China at this stage. Combined with the relevant legislation of Japan and European countries on patent fraud, we will draw on and adjust it later, and propose a system design applicable to China.
(3) Rebuttal in support of the return of the fraudulent patent
In the face of fraudulent applications, the handling methods of various countries basically revolve around rejection, and the handling measures and results are clearer. As for patent fraud, there was a period of lack of legislation and unclear rules in Japan, which caused heated discussions among scholars. Whether the real right holder has the right to claim the return of the fraudulent patent can be divided into two factions: support and opposition. Based on Germany legislation, representative scholars of the supporting theory analyzed the exclusive effect of the patent application right, the unjust enrichment of the impostor, and the application of the non-cause management by analogy, and finally put forward the view of applying the possession return system by analogy.
The argument in support of the argument actually acknowledges a kind of excessive protection for the real right holder, arguing that even if the right holder has never applied for the technology, it can directly transfer the granted fraudulent patent based on the illegal acts of the impersonator, which seems to be convenient and efficient, but it cannot be established at the level of right composition. Some scholars in China have summarized many views of this school, and classified them into the theory of unjust enrichment, the theory of management without cause, the theory of quasi-management without cause, the theory of possession of invention and the theory of agreement according to the basis of the right to claim restitution. Among them, the agreement theory is based on the settlement between the real right holder and the impersonator, and obtains the fraudulent patent by way of transfer agreement. Although this theory belongs to the school of support, it is based on private agreements, and there is no need for legal intervention, so there is no need to comment on it. The first four theories will be analyzed and refuted below.
1. The theory of unjust enrichment
The so-called unjust enrichment means that the actor's enrichment has no legal basis and causes losses to others, and the injured person may claim the return of the unjust enrichment. Misappropriation of patents is consistent with a pattern of unjust enrichment. If the impostor applies for a patent on another person's technology in his own name and obtains authorization, there is no legal basis for profit, causing losses to the real right holder, and the right holder naturally has the right to claim the return of unjust enrichment against the impersonator. However, this is not sufficient as a basis for the right to return the fraudulent patent. The scope of the return of unjust enrichment "shall also be established within the scope of the loss suffered by the loser." …… Therefore, when the profit exceeds the loss, the gainer is only liable to return the loss within the limit of the loss. …… In the absence of such facts, it can usually be considered that the due property has increased, or it can be a loss. "There are two points worth paying attention to in terms of the scope of the return of the patent of the cover.
The first point is the direct loss suffered by the real right holder due to the false admission. The way in which the impersonator causes damage is to use the first-to-file principle to contradict and destroy the novelty of the application of the later real right holder through the application of prior impersonation. In this case, the damage caused by unjust enrichment is only in the novelty and is within the scope of the application right, and does not touch the patent right. Even if the real right holder is granted the right to claim the return of unjust enrichment at this time, it is limited to the right to apply.
The second point is indirect loss, that is, there is no misrepresentation of facts, and the property of the real right holder should have increased. As mentioned above, drafting patent application documents requires a high level of skill and experience, and the examination methods of the patent department are also relatively strict. In the event that the right holder is unaware of the occurrence of impersonation at the time of filing its own application, there must be a difference in the content of the two documents, and after removing the obstacle to novelty, it is unreasonable to believe that the same examination result will be reached in terms of inventiveness and practicality. Logically, due to the intervention of the huge uncertainty factor of patent examination, the grant of a patent does not belong to the property that the real right holder should have increased, let alone the scope of the return of unjust enrichment.
Scholars representing the theory of the negation of the right to claim for return believe that when a fraudulent patent application is granted, the right to apply for a patent originally enjoyed by the real right holder is not equivalent to the patent right, and the value of the latter is much higher than that of the former, so it is not possible to directly request the return of the patent. Other scholars believe that if the real right holder is recognized as having the right to claim the return of the counterfeit patent, it is a higher right on the basis of the value that it could not have obtained, which will not only reduce the enthusiasm of the real right holder to apply for the patent, but also undermine the patent system itself. This school of thought recognizes that the only situation in which the right to restitution is established is that there is evidence that the real right holder has submitted the application and that the impostor has not made any contribution, which is indeed in line with the "due property increase", but it is not within the scope of this article.
Based on the above analysis, the theory of unjust enrichment cannot provide sufficient theoretical support for the claim for the return of the fraudulent patent.
2. Theory of causal management
The so-called management without cause means that the actor has no statutory or contractual obligations and manages the affairs of others without authorization in order to avoid damage to the interests of others, and the administrator may request the beneficiary to reimburse the necessary expenses for management expenses, and may request the beneficiary to compensate for the losses. The purpose of this system is to discourage the illegality of the acts of the administrator and to compensate those who have provided assistance in good faith. When the management act is completed, the administrator shall transfer to the beneficiary the property acquired, including the money, goods and fruits obtained by the management office, and the rights obtained in the name of the administrator for himself. From this point of view, if the system of no-cause management can be applied to the fraudulent patent, it can indeed provide support for the right to claim for restitution.
In patent counterfeiting, although the dispute between the impostor and the real right holder is a potential premise for discussion, it does not mean that there is no management without cause. For example, in order to prevent the loss of novelty of the invention and creation from being affected by the outside world, the impostor has submitted a patent application in his own name in advance and is ready to transfer the patent right to the real right holder after being granted, but due to his lack of skills in drafting the application documents, the application is ultimately not granted, resulting in a dispute with the real right holder. It should be noted that the value of discussion in this case lies in whether the right to apply for the application can be returned due to fraudulent recognition, not whether the granted patent can be returned, so it cannot be argued that the right to claim the return of the fraudulent patent is established.
For fraudulent patents that have already been granted, there is logically no possibility of causeless management. If the impostor is considering the interests of the right holder, then the two parties can handle the transfer on their own after negotiation, and there is no dispute. If the impostor refuses to transfer for his own benefit, then management without cause is not established and does not fall within the scope of the theory of management without cause. Based on the above analysis, the theory of causal management cannot provide sufficient support for the right to claim the return of fraudulent patents due to the inapplicability of the system.
3. Quasi-causal management theory
The so-called quasi-no-cause management, that is, the actor actually manages the affairs of others, but does not do it for the benefit of others, or lacks the intention to manage the affairs of others, can be divided into illegal management and mistrust management. In unlawful management, if the management benefits obtained based on the management act are automatically enjoyed by the person unless the management is completed, the manager needs to transfer the benefits to the person, and the person has an independent right to request the transfer. The benefits transferred are not limited to the market discount of the managed business and include all the benefits received by the management. Therefore, if the system of illegal management can be applied to patent fraud, it can be explored whether the patent grant can be regarded as a management interest, and the real right holder can enjoy an independent right to request the transfer, and then judge whether it can provide a sufficient basis for the return of the counterfeit patent.
In patent counterfeiting, the impostor applies for patent authorization without authorization for his own interests, rather than managing his affairs for the benefit of the real right holder, which is in line with the behavior pattern of illegal management. In the past, when the general principles of the civil law of the mainland did not provide for illegal management, some scholars used this as a refutation of the theory of causal management, but with the promulgation of the Civil Code, illegal management was stipulated under Article 979, paragraph 2 and Article 980, and the basis for such a refutation was eliminated, and another way was needed.
Illegal management gives me an independent right to claim the return of management benefits, but how the management interests are interpreted has a greater impact on whether the fraudulent patent can be returned. In practice, the return of profits is a method of calculating damages, which was originally used to overcome the difficulty of calculating the amount of compensation in copyright infringement cases, that is, when the copyright owner cannot prove the specific amount of its property loss, it can require the infringer to use the illegal gains for compensation based on the profit repayment. In theoretical research, the substantive connotation of management interests is often discussed around terms such as "value increment", "profit" or "market price", but as to whether the increase of specific rights is an extension of management interests, there is no further explanation of whether the increase of specific rights is an extension of management interests, except for some scholars who have proposed that "there is a profit return system in the field of personality rights and property rights". Although the above cannot directly argue that the acquisition of rights should be excluded from the management interest, at least it reflects that the management interest is usually based on the calculation of the value of the property, and it is not denied that the return of the benefit obtained by the right can be carried out by discount. In order to fully support the establishment of the claim for the return of the fraudulent patent, it should at least be explained that the remedy path of the former is established, which needs to return to the legitimacy of the patent system.
The purpose of the patent system is to "oil the fire of genius", to promote the practical application of inventions and creations, and to disclose technical solutions, by granting exclusive rights to inventors to obtain economic returns commensurate with or higher than the cost of R&D. However, how to protect this right must be guided by the law with great caution. If the rights are too restricted, the public interest will be excessively eroded by exclusive rights, which is fundamentally contrary to the original intent of the Patent Law; If the protection of rights is too weak, it will cause the system to be unpopular, which is not conducive to the realization of the legislative purpose. The direct return of a fraudulent patent will omit the evaluation of many legal interests, and the unavoidable problem is the contradiction between the public interest and the private interests of the right holder.
If a third party completes the same invention through its own independent research and development and discloses it directly between the filing date of the fraudulent application and the filing date of the real right holder, the right that should not exist will be maintained by directly returning the fraudulent recognition. This is because if there is no counterfeiting, the art is prior art and loses its novelty, and therefore cannot be authorized. The imbalance of interests for the public is clearly exposed by the direct return of fraudulent patents.
Although the fraudulent person applies for it without authorization and discloses it in accordance with the procedure, although it does not deprive the technology of novelty, it is based on procedural protection. This disclosure has the same origin as the disclosure of others without authorization, and both are contrary to the intention of the real right holder and infringe on his rights. The latter is limited by law to a six-month period for the non-loss of novelty, in order to prevent the right holder from abusing the right to apply, resulting in the unstable trust interests of the public. The same is true for counterfeit patents, and if the real right holder is allowed to obtain the remedy of returning the patent within any time after knowing or ought to have known the fact of counterfeiting, the following consequences will be achieved. First, it will affect the market transactions related to the counterfeit patent, so that the trading counterparty will suffer losses due to the sudden change of ownership, which is not conducive to maintaining the trust interests of market entities and the stability of transactions. Second, the protection obtained by the right holder when infringed by others will be excessively inflated, and it will no longer be limited to the six-month period for damages and novelty of trade secrets, which is set for the public interest, and the recognition of the direct return of counterfeit patents is equivalent to creating a privilege that transcends the entire public. Third, if the claims of the real right holder are supported at any time after publication and the patent is returned, the possibility of missing the opportunity to grant a patent due to their own inaction will be significantly reduced for the inventors of other technologies in the future. Even with the help of others' impersonation, the right holder can directly avoid drafting complex application documents, do not need to diligently follow up the whole process of the examination procedure, and can directly request the return of the patent after learning of the grant, which will weaken the enthusiasm of the inventor to file a patent application and is not conducive to the realization of the purpose of the patent system.
In common illegal management, the infringement of the person is often manifested in the fact that the property is disposed of without authority, or the usufruct is exercised without authorization, and the management interest is only discussed within the scope of the private rights of the private subject, so it will not cause serious problems to repay all the illegal management income to the person. Counterfeiting of patents places the weight of the public interest on the other side of the balance of interests, and although it cannot hinder the repayment of management interests, it must first exclude remedies that are detrimental to the public interest. It can be seen that although counterfeiting of patents is illegal management, there are differences in the factors that need to be considered in the return of management benefits between it and general illegal management. Since the former has legal resistance in terms of benefit measurement and protection, the latter should be adopted, not to return the fraudulent patent right, but to return the management benefits through equal repayment at a discount.
In summary, compared with the previous theories, the quasi-causal management theory has indeed made a significant breakthrough, which provides a full explanation for the value of the interest returned by the impostor to exceed the value of the infringed application right. However, under the premise that it is impossible to break through the obstacle of infringement of public interest, since there is a choice of remedies, what the law should support is not the direct return of rights, but the equal repayment after value assessment. From this point of view, the quasi-causal management theory still cannot be used as a strong support for the right to claim the return of the fraudulent patent.
4. Invention Possession Theory
It is generally believed that people need to have de facto control or dominance over the object in order to achieve possession, while the object of intellectual property is immaterial, and technology itself cannot be dominated by reality, so it is impossible to talk about its possession. Based on this understanding, the theory of possession of invention proposes to distinguish the inventor's right to technology into personality rights and property rights, and interprets property rights as the right to possess technology-related documents, icons and other materials. However, there are many confusions about this theory.
First, even if the possession of technology-related materials can be linked to the application for rights, it cannot explain how the documents forged by the impostor and the claims written by the impostor without authorization can be the basis for the real right holder to claim the return of possession. After all, even if the impostor's own creation and the inventor's documents are highly similar, it is impossible to claim possession of each other. Second, even if the real right holder has to break through the shackles of the above theory and claim the return of possession from the impostor, such return is limited to the original state of perfection, and it is impossible for the right holder to obtain benefits beyond the value of the property, and it is impossible to explain why the patent right that exceeds the value of the applied right becomes the object of the claim for possession and restitution.
Therefore, the theory of possession of invention itself has many flaws and incompatibilities with the current law, and it cannot explain the relationship between possession itself and the return of excess value of the counterfeit patent, which cannot be used as a sufficient argument.
Based on all the above analyses, the arguments in favor of the right to claim the return of patents are all untenable, and cannot provide strong support for the return of patents from the level of the basic theory of rights under civil law. In the following, we will take the basic position of denying the right to claim restitution, and put forward ideas for dealing with patent fraud.
3. The design of the system proposed for patent fraud
Patent counterfeiting is to maliciously seize the interests of the real right holder, so a law-based system design can be established in accordance with the principle of good faith stipulated in Article 20 of the current Patent Law. The following will take the patent grant as the demarcation, and put forward different suggestions for dealing with the situation of counterfeiting before and after the grant.
(1) It is normal to reject the application for impersonation before authorization
Before an application for forgery is granted, the practice of the EPC of Japan and the European Union in comparative law can be learned, and when an application for forgery in the examination procedure is challenged, the grant procedure for the application is suspended, and if the opposing party adduces evidence, the application is dismissed, and the procedure continues.
Under the current law, between the date of publication of the application and the date of grant, any person can file an opposition to the rejection of the application on the grounds that the application "does not comply with the provisions of the Patent Law". However, comparing the invalidation system of the exclusive right to use a trademark, especially the connection between the cause of invalidation and the subject of opposition, combined with the pattern of fraudulent application, it will be found that it is unreasonable. In the Trademark Law, the absolute and relative grounds for the invalidation of a registered trademark are respectively provided for two types of objections, namely "other entities or individuals" and "prior right holders or interested parties". The reason for this distinction is that the two types of grounds for invalidity are inherently different in terms of legislative purpose.
The absolute cause covers the situation that the part of the logo contained in the registered trademark does not meet the conditions for licensing, and if the status of registration and approval of use is maintained, it will inevitably have a continuous adverse impact on the public and market transactions, and it needs to be invalidated as soon as possible. Therefore, any subject who notices the existence of an absolute cause can directly file an opposition request to invalidate the registered trademark.
The circumstances covered by the relative cause are mainly manifested in the infringement of prior rights or conflicts with the rights of others, and do not belong to the situation where the maintenance will have a negative social effect, and the urgency of invalidity is not as good as the absolute cause. At the same time, it is also necessary to consider another issue comprehensively, that is, an overly broad scope of the subject of opposition will leave room for the abuse of opposition and thus affect the use of the trademark. This problem is not prominent under the absolute cause, because the absolute cause involves a clear and direct factual judgment, and there will be no complex issues such as ownership disputes, while the relative cause often involves the infringement of prior rights, and the judgment can only be made through procedures such as the production of evidence. For the above considerations, the law limits the scope of subjects that can be objected to on the relative grounds of invalidity.
Returning to the patent issue, the reason why the application for fraudulent recognition should be rejected is not because the content of the application does not meet the substantive authorization requirements stipulated in the Patent Law, so the urgency of rejection has not yet reached the level of "existence is infringement of the public". The impersonation itself only infringes on the application rights of the real right holder. At the same time, it is also necessary to consider the issue of opposition abuse, when the application for impersonation is written into the law as a clear reason for rejection, it is necessary to prevent interested parties from raising objections to the application without factual basis for the purpose of hindering the grant of patents, resulting in the undue extension of the grant period and the damage to the interests of inventors. Therefore, it is necessary to refer to the provisions of the trademark system and limit the scope of the subject of the challenge to the prior right holder or interested party. In the case of post-grant counterfeit patents, the subject of the relevant procedure should also be limited to the prior right holder and interested parties, and will not be repeated below.
The patent administration department uses the above scheme to deal with counterfeiting, but there is a special circumstance. If the real right holder raises an objection more than six months after the publication date of the application, the application for fraudulent recognition can be rejected, but if the right holder's own application is also filed after the six months, the novelty will be deemed to be lost, and neither application will be granted in the end. This approach is the same as the practical attitude of the Japan system, and the specific reasons behind it have been discussed above.
(2) After authorization, it is normal to declare the patent invalid
With regard to post-grant fraudulent patents, the mainland should not learn from the current legislation of Japan, Germany and France, allowing the real right holder to request a direct return of the patent right, and the rebuttal of the basis of the claim has been discussed in detail above. Japan's previous treatment plan may be a reference, and the right holder may request the administrative department or the court for invalidation, and if there is room for the application of the trade secret system, the right holder can also file a claim based on the illegal disclosure of the technical secret.
The legal effect of patent invalidation is that the patent right is deemed to have existed ab initio. Although the patent right disappears retroactively, the legal status of the subject matter of the right itself as a prior art will continue irreversibly as a result of the application for disclosure during the grant process. In this case, there is no statutory exception to the non-loss of novelty, so it will be difficult for an invention-creation that has been declared invalid to pass the novelty examination again. It is easy to question why such a system, which seems to be completely unfavorable to real rights holders, should be taken seriously and effective.
First of all, the real right holder is not completely out of the possibility of recovering the patent right. It is true that the invalidation of a fraudulent patent will make it impossible for the invention in question to pass the novelty examination again, but for the right holder, if the patent application is filed six months before the date of publication of the fraudulent application (hereinafter referred to as the "reasonable period"), then the application may be granted. It is worth clarifying that in the design of the system proposed in this article, what the law should deny is the application filed by the real right holder after six months from the date of publication of the fraudulent application, rather than the right to obtain the grant of a patent after filing the application within the limitation period that should be protected. The former undoubtedly constitutes an abuse of rights, and the law should not protect those who sleep on rights, while the latter is the state of protection that is in accordance with legal principles and does not violate the balance of interests.
Second, before the date of publication of the application for counterfeiting, the real right holder has no way of knowing the fact of the fraudulent application, and most of the right holders will file an application according to the original plan, except for the protection of the technology as a trade secret. Therefore, after a reasonable period of time, the application filed by the real right holder will lose its novelty, and it will not unduly damage the application interest of the right holder as imagined. At the same time, for the right holder who chooses trade secret protection and fails to file an application within a reasonable time limit, this loss of novelty can also adjust the balance between the choice between the trade secret system and the patent system. The effectiveness of the patent system would be enhanced by preventing the former from being overly favoured and the latter not always being an alternative to technological protection.
Finally, the six-month reasonable period applied by the system is a reasonable time limit for filing an application, not a statute of limitations for genuine rights holders. In fact, of course, there will be a situation that after the application for counterfeiting is published, the real right holder does not realize that his invention and creation has been applied for by the counterfeiter without authorization, but subconsciously believes that the fraudulent applicant has completed the research and development independently and submitted the application earlier than himself. Therefore, when the right holder learns of the existence of the fact of counterfeiting through various channels, it may be a long time before the publication of the application for counterfeiting, and the right holder can of course still obtain the above-mentioned relief by requesting invalidation. It should be clarified that this kind of relief is fundamentally different from the relief provided by the court in current practice, the former only declares the fraudulent patent invalid and opens the way to re-authorization, while the latter directly returns the fraudulent patent to the plaintiff, so the previous article argues that such a judgment is unreasonable.
In addition, if the real right holder files an application within a reasonable period of time, it is not necessarily granted. In this case, the protection granted to the real right holder is not to directly grant a patent, but to reconfirm that the application has the qualification to be examined, and the patent administration department will re-examine the content of the original application. With regard to novelty, it is still necessary to examine whether there is prior art or conflicting applications before the actual filing date of the real right holder, so as to take into account the "theoretical third party" situation mentioned above.
In the above-mentioned treatment plan, in addition to declaring the fraudulent patent invalid, the remaining scope of relief that the right holder can obtain at this time is worth clarifying. If the right holder protects and uses the relevant technology as a trade secret from the beginning, it goes without saying that the right holder can claim compensation for the infringement of the trade secret when the impostor infringes. If the right holder first protects and uses the technology in the form of a trade secret, and then files a patent application but is obstructed by the fraudulent patent, and then finally obtains the qualification for re-examination through the above-mentioned institutional arrangements, it seems doubtful whether the trade secret claim can be supported by the court. The root of the problem lies in the fact that the concern of whether the economic benefits of the invention and creation are being repeatedly evaluated and remedied, and in fact this concern is unnecessary. First of all, the re-granting of examination qualifications is based on the remedy of the right to apply, rather than the recognition of the economic value of the technology itself. If an application is filed by the right holder for an invention-creation, and the technology is fraudulently identified and disclosed through procedures before the publication date of the planned arrangement, the act not only infringes on the interests above the application, but also infringes on the trade secrets that are still in a non-public state, and the distinction between the two different legal interests should be strengthened. Second, although the fact that the technology can be re-examined does not necessarily mean that the invention is necessarily authorized, the fact that it was previously protected as a trade secret will not change regardless of the outcome of the final patent part. If it is ultimately unable to obtain authorization and cannot claim compensation based on the trade secret, then the right holder will not have any economic remedy. This is more likely to lead to a priori misjudgment that the value of a prior trade secret can be negated by not being granted a patent, which is obviously wrong. At the same time, since the subject matter of the claim is the infringement of a trade secret in a non-public state, this claim does not overlap with the subsequent provisional protection of the patent.
Therefore, in the system proposed in this paper, any real right holder who first protects and uses the invention or creation as a trade secret, and later suffers from fraudulent recognition, can claim damages for trade secret damages at the same time as requesting the invalidation of the fraudulent patent. If there is no evidence to prove that the use of the invention-creation before the application is filed meets the conditions for trade secret protection, the court should not support the claim for trade secret claim, and can only provide relief within the scope of patent invalidation. This remedy boundary should be clearly defined to prevent the right remedies from leading to injustice.
epilogue
Patent counterfeiting is a relatively common infringement act, which has the characteristics of strong concealment, large profits from infringement, and bad impact. Although the methods used to deal with fraudulent patents in current practice are economical, convenient, direct and efficient, they do not conform to the basic principles of patent law, run counter to the public interest, and are prone to cause many potential problems. This article has discussed in detail the issue and the denial of the direct return of fraudulent patents. The design of the system proposed in this paper aims to put forward suggestions for better handling the case of patent counterfeiting applied by impersonators. In addition, there are other cases of patent fraud, but they are less general, less controversial, and limited in space, so they are not covered in the discussion in this article.