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Speaking of a Change Involving Bankruptcy Liquidation

15

DEC

2020

As the protection of intellectual property, an intangible right, has been paid more and more attention to in various countries around the world, patent rights are the most closely related to the development of science and technology in intellectual property rights, and the rules related to the transfer of rights have become increasingly important. The registration procedures for patent changes corresponding to the transfer of patent rights involve the provisions of the patent law and related regulations on Changes in Bibliographic Data.

The bibliographic data of a patent refer to items that CNIPA classifies and records its formal characteristics in order to facilitate the management of patents. Some of the bibliographic data are personnel matters that have nothing to do with the substance of the patent, including matters such as applicants or patentees, inventors, patent agents, contact persons, and representatives. In actual practice, once these data are changed after the application is submitted, or the bibliographic data at the time of submission are wrong, you need to go through the procedures for changing bibliographic items as required.

For patent applications filed in China, CNIPA does not impose restrictions on the timing of allowing changes. During the patent application process and at any time after granted, changes to the bibliographic data can be made, however, we usually recommend that once the fact of the change occurs, the parties should go through the change registration procedures as soon as possible, especially it is best to complete the change procedures at the stage that the patent application has not been granted. Under this situation, when the patent application is granted, the changed data can be recorded in the patent certificate.

The author takes a case involving the transfer of application rights for designing bankruptcy liquidation procedures including two patent applications as an introduction, and talks about the practical operation of handling changes in bibliographic data.

When handling the transfer of two Chinese patent applications in this case, it was discovered that the transferor had already gone through bankruptcy liquidation and had ceased business. In addition, there is only one record of winning bids issued by the auction company for the auction of the applicant’s company property. The record contains the application numbers and relevant information of the two Chinese patent applications, as well as the personal signature of the winning bidder.

Generally, when the application right is transferred, the transfer certificate signed by the transferor and the transferee and the power of attorney of the transferee must be submitted to CNIPA. However, unlike the ordinary transfer of application rights, this case occurred when the company's bankruptcy liquidation procedures were completed and the application rights were transferred. At this time, the officially registered patentee or applicant has lost the qualification to sign the agreement, and its rights must be exercised by the liquidator. Therefore, the transferor’s signature will not appear in the certification documents of this type of change. It was replaced by the liquidator. It is worth noting that, since this type of change is not common, there are no specific provisions in the Guideline of Examination, and it only requires the provision of "legally valid documents." Therefore, how to prepare the certification documents that can meet the requirements is the key to this case.

So what kind of "legally valid document" can prove this process? After analysis, the author believes that three legal facts need to be proved for the transfer of the application right in the bankruptcy liquidation procedure: a. The applicant’s company has indeed undergone bankruptcy liquidation; b. The liquidator has the right to dispose of the company’s patent including the involved patent property; c. The transferee can prove that it has indeed purchased the liquidation property in the auction.

Based on this consideration, the author found that the above-mentioned auction winning record of the applicant’s company’s property issued by the auction company was neither issued by the court nor by the liquidator. It was only the auction winning record issued by an auction company, and was included in the record. There is only one handwritten signature on the signature page, and no information about the transferee company is listed. Therefore, the document does not prove the fact that the property was legally transferred from the current applicant to the transferee. In view of this, the author confirmed that, for item a, a letter from the local court appointing the liquidator to liquidate the applicant company was prepared again; for item b, the liquidator entrusted the auction company to liquidate and auction the property catalog of the bankrupt enterprise; and for item c, the payment certificate of the party serves as the supporting document of this case.

After reviewing these new evidences again, the author noticed that since the transferee’s payment certificate did not mention the patent information involved, it was impossible to prove the relationship between the payment certificate and the two patents. At the same time, there is no evidence to prove that the signatory of the winning bid is related to the transferee company, so it is still impossible to prove the fact that the patent right was legally transferred to the transferee. In order to prove these two facts, it is still necessary to provide the signatory’s right to participate in the auction on behalf of the company and to purchase the auction property on behalf of the company, such as the appointment resolution issued by the transferee’s board of directors on the signing of the winning bid record. At this point, the evidence chain is complete, and the application for the change of bibliographic data, the original and Chinese translations of all the supporting documents, and the power of attorney of the transferee are attached to CNIPA. Finally, the change request is completed.

The topic returns to the practice of changing bibliographic data. It can be seen from the above case that whether a change can pass the examination and obtain the formality compliance notice, the most important key is whether the reasons for the change are complete or not. The more detailed for common changes are present in the Guideline of Examination. In most cases, supporting documents can be provided in accordance with the requirements of the Guideline of Examination. Here, the author would like to make some explanations regarding the changes of inventors' changes:

There are several types of changes in inventors. At present, the focus of the examination by CNIPA is on the omission and misstatement of the inventors. Since the end of 2018, CNIPA has strict examination standards. In the case of repeated changes to the inventor in the same case, usually no more formal notices will be issued. For the same case where the patent right has just been transferred, applications for adding inventors are usually not accepted. Especially for domestic applicants, some examiners will require documents that prove that the newly added inventor has indeed made a substantial contribution to the patent. The examiner requires that this kind of certification documents need to be formed in the research and development process of the invention and creation to reflect the true creation process, and cannot be the certification materials to be supplemented after handling changes. The author has gone through two procedures for adding inventors to the applicant "Sino Medical". After providing the employment agreement of the new inventor, the minutes of the R&D meeting with the participation of the new inventor, and also providing the patents in the same family when entering other countries, the patent document which listed this person as the inventor was used as proof and passed the examination.

In short, for the change procedures of the bibliographic data, the supporting documents must be carefully analyzed to see if they meet the official requirements. If the official requirements are not specific enough, they can also be analyzed in accordance with legal principles. As long as the evidence chain is complete, it is not difficult to obtain approval.

The last thing to note is: in order to obtain approval for the change request of the bibliographic project, both documents and fees are indispensable. Changes to inventors, applicants, and patentees need to pay a change fee, while changes to nationality, address, zip code, ID number or organization code, and agency are not required to pay.

About the Firm

Ge Cheng & Co Ltd.
Address Level 19, Tower E3, The Towers, Oriental Plaza, No 1 East Chang An Avenue, Beijing 100073, China.
Tel 86-10-8518 8598
Fax 86-10-8518 3600
Email davidcheng@gechengip.com , info@gechengip.com
Link www.gechengip.com

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