CHANG TSI
Insights
Article 20 of the Patent Law revised in 2020 introduced the principle of good faith, that is, "the principle of good faith should be followed when filing application for a patent and enforcing the patent right, and the patent right shall not be abused to harm the public interest or the legitimate rights and interests of others". Later, Article 11 of the Implementing Regulations of the Patent Law, which came into effect in 2024, stipulated that patent applications should follow the principle of good faith, and that all kinds of patent applications should be based on real invention and creation activities and should not be falsified, and Article 69 explicitly stipulated the violation of the principle of good faith is a legal ground for patent invalidation proceeding. Section 5, Chapter 1, Part II of the Patent Examination Guideline stipulates that the Rules for Regulating Patent Application(“Rules”) issued by China National Intellectual Property Administration shall apply to the examination of whether the patent application complies with Article 11 of the Implementing Regulations of the Patent Law. In the "Rules", abnormal application is regarded as a subordinate concept that violates the principle of good faith, and various abnormal patent application behaviors are listed in detail, including: the filed patent application has fabricated, forged or altered the contents of inventions, experimental data or technical effects, or plagiarized, simply replaced, pieced together the existing technology or existing design and other similar situations. It should be understood that although the above provisions are aimed at the behavior in the patent prosecution procedure, they should also be applicable to the patent invalidation proceeding.
In the patent invalidation decision No.583749 (patent application No.201821114751.6) issued by China National Intellectual Property Administration on March 4, 2025, the collegiate bench held that the principle of good faith is a basic principle that patent applicants should follow when applying for a patent. If the contents of the patent invention-creation involved are the same or highly similar to the prior art, and there is evidence to prove that the patentee has subjective intention to apply for a patent when he knows that it is an existing technology, it can be judged that he has "copied the existing technology" when applying for a patent, which violates the principle of good faith and therefore does not meet the provisions of Article 11 of the Implementing Regulations of the Patent Law. Furthermore, the collegiate bench also pointed out that when the patent involved does not conform to the provisions of Article 11 of the Implementing Regulations of the Patent Law and Article 22, paragraph 2 of the Patent Law(lack of novelty) in the meantime, the application of Article 11 of the Implementing Regulations of the Patent Law should take precedence. Specifically, in this case, the claimant submitted evidence of public use (disassembly drawings of existing technology products, product sales contracts, and bank water list) and evidence of the patentee's subjective intention to apply for a patent when he file the patent application (labor contract between the initial shareholder of the patentee and the claimant-used to prove that the initial shareholder of the patentee was a field engineer of the claimant and had access to existing technology products and related design materials during his tenure). After carefully comparing the product and the patent, the collegiate bench held that firstly, the contents of the invention-creation of the patent involved are the same as the existing technology submitted by the claimant, that is, the technical solution of the patent involved has been disclosed by the prior art, so it lacks novelty. At the same time, the evidence on file shows that the patentee has a high possibility of knowing the existing technology before the application date, so there is a subjective intention to apply for a patent even though it is known as the prior art. When the patent in issue does not meet both the novelty provision of Article 22, paragraph 2, of the Patent Law and the principle of good faith stipulated in Article 11 of the Implementing Regulations of the Patent Law, the application of good faith will take precedence. This is because the application of Article 11 of the Implementing Regulations of the Patent Law can better reflect that the patent invention-creation involved doesn’t make improvement compared to the prior art, and there are still real cases of fraud and non-compliance with the principle of good faith, therefore the application of this provision can better guide the applicant to behave self-discipline, promote the improvement of patent quality from the source, and maintain a good innovation environment and market order.
The Invalidation Decision No.583749 is considered to be the first case successfully having the patent invalidated based on the principle of good faith, which shows China National Intellectual Property Administration's determination to crack down on fraudulent patent application and put an end to low-quality patents. It is also worth noting that the technical solution involved in the patent in this case belongs to the mechanical field, meaning that it is not difficult to make comparation between the relevant products and technical solutions of the patent through appearance photos and design drawings, and then determine whether the patent invention involved belongs to the existing technology/prior art. In the field of chemistry, more attention is paid to experimental means, experimental process and experimental results, and a large number of examples and experimental data often need to be disclosed in the specification. It is not uncommon for the applicant to record individual examples or experimental data incorrectly when writing patent documents. In this regard, in the past, the claimant usually claimed that the disclosure of the specification is insufficient and due to which the skilled people cannot implement the invention of the patent(Article 26, paragraph 3, of the Patent Law). After the new Patent Law and the Implementing Regulations of the Patent Law came into effect, the claimant may also claim that the patent involved has fabricated, forged or altered experimental data, so it should also be invalidated for the reason of in violation of the principle of good faith. However, in the judicial practice, if the experimental data or attached drawings are recorded incorrectly or contradicted, it may not necessarily be considered as fabricating experimental data and violating the principle of good faith. China National Intellectual Property Administration usually combines the overall records of patents and considers the contents recorded in all specifications to judge whether the person skilled in the art can realize the technical solution of the patent involved by reading all the contents disclosed in the specification, and then determine whether it is a violation of the principle of good faith.
For example, in the Invalidation Decision No.582876, the petitioner claimed that Figure 3 of the specification contradicted with the disclosures in Examples 1-4, so the disclosure of the specification of the patent involved was insufficient. At the same time, the petitioner also claimed that the patent was fraudulent according to the contents disclosed in Figure 3 and other evidence, which did not conform to the provisions of Article 11 of the Implementing Regulations of the Patent Law and should be invalidated. However, the collegiate panel held that according to the written disclosure of the examples, the skilled person in the art can realize that there are obvious errors in the data in Figure 3, in other hand, according to the contents of Examples 1-4 and the mechanism of droplet generation disclosed in other parts of the specification, the person skilled in the art is able to confirm that the technical solution described in Examples 1-4 can be realized, and the errors in Figure 3 do not affect the skilled people to implement the invention. The collegiate panel further held that, the error in Figure 3 does not affect the understanding of the technical solution of the patent involved by the skilled person in the art, and the evidence submitted by the claimant is not enough to prove that the patent involved is fraudulent when filing an application and violates the principle of good faith.
As it can be seen from the above two patent invalidation cases, in the patent invalidation proceeding in China, in case both violations of the principle of good faith and other invalidation grounds, such as lacking of novelty or insufficient disclosure of the specification, exist in the meantime, China National Intellectual Property Administration's practice is tending to essentially examine whether the other traditional invalidation grounds are established in the first place. If the mentioned other invalidation grounds are established, the principle of good faith is preferred to be applied. If the other invalidation grounds fail, it may be difficult for the China National Intellectual Property Administration to apply the principle of good faith alone. The reason might be that for the patent invalidation proceeding, some situations of abnormal application explicitly listed in the above Rules are essentially consistent with or similar to the requirements of invalid grounds such as lack of novelty/inventive steps and insufficient disclosure, while the remaining situations are difficult for the petitioner to prove. The application of the principle of good faith in the patent invalidation proceeding should be careful and certain, otherwise it may lead to the abuse of this provision.
Furthermore, in civil contracts, especially in technical contracts or purchasing contracts, the parties often agree that the right to apply for patents for inventions created during the performance of the contract belongs to one party, and once the patent application is granted, the patent rights belong to that party. However, in practice, it may occur that the other party files applications for a patent in its own name for the invention created during the performance of the contract. In such case, one party may claim that the other party has violated the principle of good faith and asserts that the patent in issue should be invalid. It is worth discussing that whether this argument can be supported by the China National Intellectual Property Administration (or submitted as a third-party observation during the patent examination process and be accepted by the examiner).
Firstly, from the perspective of legislative intention, the introduction of the principle of good faith in the amended Patent Law is aim to using this provision to combat abnormal patent applications or the abuse of patent rights. Abnormal applications are stumbling blocks to the development of high-quality patents and are contrary to the legislative purpose of the Patent Law, which encourages invention and creation. The Implementing Regulations of the Patent Law further require that patent applicants "all types of patent applications shall base on genuine inventive activities and are forbidden to engage in falsification." The introduction of the principle of good faith can combat and curtail the actions of some patent applicants who, through falsification and patching together patent applications, exploit loopholes in policies such as government patent application funding or tax benefits for high-tech enterprises, thereby defrauding the government of subsidies, grants, or other preferential treatments.
Additionally, in case that the technical solutions involved in the patent application itself does not involve any falsification of experimental data or technical contents, but the applicant's act of applying for the patent violates the contractual agreement, it should still be considered an act of violating the principle of good faith. In the administrative case of the patent invalidation dispute (2020) ZuiGaoFa ZhiXingZhong No.564 issued by the Supreme People's Court, the focus of the case was on determining whether the patent in issue complied with Article 26, Paragraphs 3 and 4, as well as Article 22, Paragraph 3 of the Patent Law, which are most used grounds in the invalidation proceeding. However, the Supreme People's Court specifically pointed out that the act that the petitioner (equivalent to the aforementioned "the other party of the contract") filed a patent application in China National Intellectual Property Administration by using the intellectual property that was supposed to be owned by patentee (equivalent to the aforementioned "one party of the contract") as its own, has already constituted an act of violation of the principle of good faith. Furthermore, the act that it filed the petition for the invalidation proceeding against the patent that written and filed by itself clearly violates the principle of good faith. Such behavior of illegally applying for a patent for other person's technological achievements and after the patent right of that illegal application has been legally returned to the other person, then filed a request for patent invalidation against the patent involved, obviously violates the principle of good faith. It can be seen that the act of applying for a patent in one's own name for intellectual property that (for example, according to contractual agreement) belongs to someone else is in itself a violation of the principle of good faith. During the examination process of such patent applications or after they have been granted, it may be a nice try for the interested parties to provide clues to the China National Intellectual Property Administration, or submit third-party observation or a request for patent invalidation before the China National Intellectual Property Administration, arguing that the patent application or patent in issue should be rejected or invalidated due to the violation of the principle of good faith (note: the discussion in this section does not cover issues of patent (application) right ownership or the disclosure of prior art, but only for whether the principle of good faith can be used as a ground for rejection or invalidation in this context).
In China, anyone can file a request for the declaration of invalidation of patent on the grounds of non-compliance with the relevant provisions of the Patent Law. The principle of good faith, as a general clause that plays a catch-all role, will become increasingly prominent in the patent granting and right confirmation procedures as the process of building a law-governed and integrity-based society progresses. The issuance of the invalidation decision No. 583749 indicates that the official adoption of a dual examination standard of "technology + integrity" in the patent invalidation proceeding. As a patent applicant, one should fully pay attention to the authenticity of the content of the patent application itself and ensure the legitimacy of the patent application behavior. Especially for patent applicants in the fields of chemistry, materials, and medicine, who should carefully examine the experimental data and diagrams disclosed in the patent specification and, if necessary, describe the mechanism and principles of the technical solutions in written in the specification. On the other hand, as a requestor, when preparing the grounds for the invalidation proceeding, in addition to studying the patent in issue and its related documents, one can also delve into the history of the patentee's application for related patents. By comparing the technical solutions of different patents horizontally, one may successfully find evidence applicable to Article 11 of the Implementing Regulations of the Patent Law.
