The dispute over entitlement to the AB Glider patent application
The dispute involves Ab Glider, a best-selling fitness apparatus advertised on TV and Internet shopping channels. Back in December 21, 2009, Icon sent an initial basic drawing of Ab Glider, the fitness apparatus at issue, by email to its original equipment manufacturer (OEM) in Taiwan, requesting a quotation and a sample apparatus.
The drawing and details of Icon’s requests were subsequently sent to a downstream manufacturer associated with the OEM for further handling.
On April 27, 2010, a marketing assistant of the downstream manufacturer filed a utility model patent application for a multi-function sports apparatus that was suspiciously similar to Ab Glider. The patent was granted by the Taiwan Intellectual Property Office (TIPO) four months after the application was filed.
Pursuant to Article 119 (then Article 107) of the Patent Act, a utility model patent may be invalidated if the utility model patentee is not entitled to file the utility model patent application. While an ownership of right should be decided at a court forum, Icon first sought a civil remedy from the IP court in 2011, with a complaint that it was the true owner of the right to the patent application, and requesting that a transfer of the patent right at issue be ordered.
As soon as litigation proceedings were filed, Icon filed for invalidation of the patent at issue with a request of examination suspension until the outcome of the court judgment became available.
"A preponderence of evidence is sufficient for the court to make judgement despite the fact that only indirect evidence was available in this case."
In the first instance of the civil tribunal, the IP court refused to hear the case on the ground that the court lacks jurisdiction over the matter of ordering a transfer of patent right.
Icon appealed to the second instance court by modifying its claim to request for a declaratory judgment confirming that the appellant Icon is the owner of the application right for the patent at issue. The second instance of the IP court vacated the first instance judgment, confirmed and declared that the entitlement to application for the utility model patent at issue belongs to Icon. There are three distinctive opinions in the court’s judgment as follows:
• According to Article 5 of the Patent Act, the owner of the right to apply for a patent can be an inventor, utility model creator, designer or his/her assignee or successor. The court confirmed that an entitlement to patent application is a dispute involving private law relations. Since a declaratory judgment is a legal means used to confirm the existence or nonexistence of the facts from which a legal relation arises, the court has jurisdiction over who has the right to apply for the patent at issue.
• The court introduced three levels of standard of proof from the US litigation system, so as to explain that a preponderance of evidence is sufficient for the court to make judgment despite the fact that only indirect evidence was available in this case. The court sets the preponderance of evidence as the lowest evidentiary standard for civil disputes, whereas clear and convincing evidence must be attained to prove patent invalidity. The highest standard of proof “beyond reasonable doubt” will be required only in criminal cases.
• The court borrowed the two-pronged test for copyright infringement to resolve: (1) whether the patentee had “access” to the Ab Glider design drawings, and (2) whether “substantial similarity” is established between the technical features of the patent at issue and those of the Ab Glider drawings. Both tests were found established.
As long as plagiarism is found, Icon is determined to be the true owner of the right to file the patent at issue.
