The Supreme People's Court made a final ruling on a dispute over the patent application right, revoking the first-instance judgment that separated the claims of the disputed patent application and determined the ownership of different claims separately, and sent it back for retrial. The final ruling of the case pointed out that a patent application as a whole can only have a singular patent application right, and generally a patent application shall not be arbitrarily divided according to different claims, as it will result in multiple patent application rights for a single patent application.
Guangdong A Company filed a lawsuit alleging that Hangzhou B Company disclosed non-public technical information related to Guangdong A Company’s infiltration system, which was acquired by Hangzhou B Company during their cooperation, to an affiliated company, Changxing C Company, for the purpose of applying for the disputed patent application. Guangdong A Company petitioned that the application right of the disputed patent application should be solely owned by them, rejecting any shared ownership. The technical scheme of the disputed patent application includes 10 claims, of which claim 1 is an independent claim and claims 2-10 are all dependent claims.
After trial, the court of first instance held that, after technical comparison, claims 1-3, 5-8, and 10 of the disputed patent application were substantially the same as the technical schemes that Guangdong A Company provided to Hangzhou B Company, and there was no evidence that Changxing C Company or Hangzhou B Company made inventive contributions to the technical schemes of the aforementioned claims. The additional technical features in claims 4 and 9 were not related to the technical information or the technical features of the equipment provided by Guangdong A Company, and the additional technical features in claims 4 and 9 were not conventional means in the art. Changxing C Company made inventive contributions to the substantive features of technical schemes of claims 4 and 9. Therefore, after clarification from the court of first instance, Guangdong A Company abandoned its claim on the patent application right for the technical schemes of claims 4 and 9 in the disputed patent application. The court of first instance then made a judgment confirming that Guangdong A Company owned the patent application right for the technical schemes of claims 1-3, 5-8, and 10 of the disputed patent application. Dissatisfied with this ruling, Hangzhou B Company and Changxing C Company filed an appeal.
In the second instance, the Supreme People's Court held that this case was a dispute over the ownership of a patent application right. For each patent application, there can generally be only one patent application right, which can be enjoyed by a certain party alone or by multiple parties. While a patent application may consist of multiple claims, and each claim is a complete technical scheme, the patent application is holistic. Claims under the same subject and meeting the unity requirement should not be granted separate patent application rights, or it will result in multiple patent application rights for a single patent application. The first instance court erred in the legal application and explanation in the first instance procedure, causing the plaintiff to abandon the claim to the ownership of the patent application right for the technical scheme of claims 4 and 9 in the disputed patent application. On this basis, the first instance judgment mistakenly divided the multiple claims of the disputed patent application arbitrarily, resulting in two patent application rights on one patent application. In view of the fact that Guangdong A Company abandoned the relevant litigation claims due to the court's incorrect explanation and did not appeal, this case should be sent back for retrial.
The ruling in this case has certain reference significance for the trial of cases concerning ownership of patents and patent applications.
 (2021) Zui Gao Fa Zhi Min Zhong No. 825

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