According to Article 5 of the Patent Act: "The term 'right to apply for a patent' shall mean the right to file a patent application in accordance with this Act. Subject to provisions of this Act otherwise prescribed or the covenants otherwise set forth in an agreement, the term 'the owner of the right to apply for a patent' shall mean an inventor, a utility model creator, a designer, or the assignee or successor thereof." Additionally, Article 71(1)(3) of the Patent Act states that, where the patentee is not the owner of the right to apply for a patent, the interested party may file an invalidation action against the patent.

 

Since the “right to apply for a patent” involves the authority of the patent office, disputes over patent ownership often raise questions about whether the owner of the right to apply for a patent can request the transfer of the patent right based on the principles of torts or unjust enrichment.  For instance, in its Judgment No. 109 Tai Shang Zi 2155, the Supreme Court stated that, "Even though civil courts may, pursuant to Paragraph 2, Article 2 of the Regulations on the Trial of Intellectual Property Cases, determine whether there are grounds for revoking or invalidating a patent in disputes over patent ownership or the right to apply for a patent, such determinations still remain in a supplementary position. The civil court does not have the authority to directly revoke or invalidate a patent... In addition, unjust enrichment refers to obtaining benefits without legal grounds, thereby causing harm to others, and there must be a causal relationship between the benefit received by the beneficiary and the damage suffered by the victim. Since the utility model patent acquired by the impersonated applicant was granted by the patent authority, and before the true inventor is granted the utility model patent, can it be recognized that the damage suffered pertains to the utility model patent itself, thereby allowing for a request for the return of the utility model patent? These are questions that need further exploration." The Supreme Court expressed doubts over whether the owner of the right to apply for a patent can ask for transferring the patent based on unjust enrichment.

 

However, after the Intellectual Property Office ("IPO") published the Draft Amendment to the Patent Act on March 9, 2023 ("Draft Amendment"), deleting the provision that the ownership dispute of patent rights may be a cause for filing an invalidation action, the Intellectual Property and Commercial Court ("IPCC") cited the Draft Amendment and ruled in its Judgment No. 112 Min Zhuan Shang Geng Yi Zi 4 that, "Referring to the Draft Amendment from the IPO's website, the provision allowing for filing an invalidation action based on the ownership of patent rights has been removed, and thus such disputes shall be resolved through civil proceedings."  The IPCC ruled that the true owner of the right to apply for a patent may request a transfer of the patent rights based on unjust enrichment principles. 

 

However, after the publication of the Draft Amendment on March 9, 2023, there are also judgments which still deny that a true owner of the right to apply for a patent may ask for transferring the patent right through a civil claim, such as Supreme Court Judgment No. 110 Tai Shang Zi 585 (issued on July 4, 2023), IPCC Judgment No. 111 Ming Zhuan Su 46 (issued on July 20, 2023), etc. 

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Although the Draft Amendment removed the provisions that allow an invalidation action to be filed based on an ownership dispute, before the new law is implemented and relevant supporting regulations are established, it remains uncertain whether the true owner of the right to apply for a patent is entitled to claim the return of patent rights based on unjust enrichment principles.  This is still controversial and will need to be closely monitored in the future.