The spirit of good faith, introduced with the new Patent Law of 2020, serves as a cornerstone of the patent regime. Known as an emperor’s clause for patent practice, it now permeates through the entire patent regime. In a recent case, the bad faith is a core issue and the CNIPA explained the clause in detail.

 

  The new Implementation Regulations for the Patent Law has become effective since January 20, 2024. Echoing the Article 20 of the new Patent Law 2020, the new Article 11 of the Implementation Regulations requires that applicants for patents shall adhere to the principle of honesty and good faith. Besides, all patent applications must be based on genuine inventive activities, and no fraudulent or deceptive practices shall be tolerated. Following on, in August 2024, the CNIPA decided an invalidity case where Article 11 of the Implementation Regulations was one of the reviewed grounds. Prospectively, this is the first case where the bad faith clause was one of the core issues in dispute.

 

  Case Overview

 

  Shenzhen Chuangzhi Semi-link Technology Co. owns the invention patent ZL202211472899.8 entitled "A sodium gold sulfite cyanide-free gold electroplating solution and its electroplating process." An individual Mr. Song filed for invalidation on January 20 of 2024, the very same day on which the new Implementation Regulations becomes effective. A decision was made in about seven months later. On August 28, 2024, the CNIPA decided to reject the request because the invalidating party failed to fulfill the burden to prove. Hence, the patent remains valid.

 

  The CNIPA elaborated the meaning of Article 11 of the Implementation Regulations. The doctrine of good faith set forth a basic requirement for maintaining normal social order and embodies the value of pursuing fairness and justice. The introduction of good faith clause in both Article 20 of the Patent Law and Article 11 of the Implementing Regulations of the Patent Law purported to police the improper activities in patent applications and enforcement. It aims to tackle the patent applications that are not intended to protect innovation, and hence to stimulate the of patent quality improvement from the source.

 

  When asserting legal grounds in an invalidity action, the petitioner should carefully understand the difference between the bad faith rejections and the unpatentability rejections such as lack of inventiveness or insufficient disclosure, the CNIPA emphasized. Under Article 11 of the Implementation Regulations, the petitioner shall bear the burden of proof by submitting specific statements in conjunction with adequate reasoning and the supportive evidence in order to demonstrate that the invalidation was aimed at prevention of right abuse, reduction of unfounded disputes, and assurance of the fairness and efficiency of the patent system.

 

  To meet the preceding purpose, the CNIPA elaborated the requirements. First, the petitioner should indicate in detail the suspected fraudulent activities ever engaged during the course of patent application and prosecution, in accordance with Article 3 of the Provisions on Patent Application Behavior Regulations.[1] The invalidity request shall accompany a detail fact statement specifying in what perspective the application activities is bad faith with support of the submitted evidence. In the absence of complying with the above requirements, the invalidity will not be considered. Secondly, the petitioner shall prove to the extent where the challenged patent is made not based on real inventive events or there were fraudulent acts involved in the course of prosecution. Otherwise, the invalidity will not be established.

 

  In the present case, the petitioner accused that there were fraudulent activities in the patent owner’s three applications including the present one, that the inventions were against the technical common sense in the art, and that the patent claims were unnecessarily narrowed. CNIPA examiners reviewed the petitioner’s arguments and evidence to realize that the scientific conditions in the prior art evidence are different from the invention. That is, the chemical agent, conductive electrolyte, their concentrations, the electro-current density, the functional additives, etc. disclosed in the prior art are different so that they failed to show that the invented additives cannot be used in gold electroplating liquids. The petitioner’s arguments and evidence failed to successfully support his accusation of fraudulent activities, common sense conflict, and unnecessary narrowing. Therefore, the petitioner did not establish that the claimed invention violates Article 11 of the Implementation Regulations.

 

  In addition, the petitioner did not either succeed in establishing the challenges of enablement, sufficient disclosure and technical feature requirements. To short conclude, the invalidation grounds were not sustainable and the patent remains valid.

 

  Implications

 

  Good faith is an emperor’s clause in the entire patent regime. Some doubt that it would be too powerful to cause too much casualty in the patent system. However, at least from the present case, the CNIPA reviewed this ground with caution and reasons. The party who raises the ground has to fulfill the burden of producing sufficient corresponding evidence to support the accusation. The CNIPA would adhere to the rules of logics and the empirical rules making a decision.

 

  Abnormal Patent Application Behaviors

 

  As a side note, the Article 3 of the Provisions on Patent Application Behavior Regulations set forth the abnormal patent application activities including the following eight case scenarios.

 

  (1) The inventions embodied in multiple patent applications are obviously the same, or are formed by a simple combination of different inventive features and elements;

 

  (2) The patent application contains fabrication, forgery, alteration of the invented products, experimental data or technical effects, or plagiarism, simple replacement, patch-up of existing technologies or existing designs and other similar situations;

 

  (3) The invention in the patent application is mainly randomly generated by computer technology;

 

  (4) The invention in the patent application is obviously inconsistent with the common sense of technical improvement or design, or is with degraded, piled up, or unnecessarily narrowed scope of protection;

 

  (5) The applicant submits multiple patent applications without actual research and development activities and cannot provide a reasonable explanation;

 

  (6) Multiple patent applications that are essentially related to a specific entity, individual or address are filed dispersedly, with malicious intent, one after another or from different places;

 

  (7) Transferring or accepting ownerships of patent applications for improper purposes, or falsely changing identities of inventors or designers; and

 

  (8) Other abnormal patent application behaviors that violate the principle of good faith and disrupt the normal order of patent work.