The Supreme People’s Court concluded an appeal of disputes over the ownership of a patent application and specified that where the patent application or patent for which ownership confirmation is sought is not based on genuine invention and creation activities, but rather on compiled and fabricated experimental data, such conduct violates the principle of honesty. The alleged invention and creation right involved in the patent application or the patent lack legal basis, and there is no need to determine the ownership.
This case involves a dispute over the ownership of an invention patent application. Case circumstances are introduced as follows:
The disputed invention patent application (hereinafter referred to as “this application”) is titled “A Manufacturing Process for Artificial Bear Bile Powder” filed by Company A. The five inventors recorded in the patent application documents, whose identities are undisputed, were former employees of Company B who later joined Company A. Company A then filed this application within one year of their departure from Company B.
Company B filed a lawsuit with the first-instance court, requesting to confirm that this application belongs to Company B.
The first-instance court held that: this application combined two new enzymes owned by Company A with cell lysate buffer or bacterial suspension owned by Company B through biotransformation technology, so the two companies both contributed to the inventiveness of this patent application, and thus, this application shall be jointly owned by Company B and Company A.
Company B and Company A, dissatisfied with the first-instance judgment, appealed to the Supreme People’s Court.
In the second instance, it was undisputed that Company A lacked experimental conditions from its establishment to the filing date, and that neither Company B nor Company A has conducted experiments using the two new enzymes before the filing date.
The Supreme People’s Court held, in the second instance that, where the patent application or patent for which ownership confirmation is sought is not based on genuine invention and creation activities, but rather on compiled and fabricated experimental data, such conduct violates the principle of honesty. The alleged invention and creation right involved in the patent application or the patent lack legal basis, and there is no need to determine the ownership. Under such circumstances, the people’s court may, based on the facts found, decline to support the litigation claim for confirmation of ownership of the patent application or patent. While the 2008 amendment of the Patent Law which applies to this application, did not expressly require that the patent application adhere to the principle of honesty, the court may nonetheless adjudicate this case under the principle of honesty as prescribed in Article 7 of the General Provisions of Civil Law, which was in effect at the time.
In this case, the evidence on file indicates that this application is not based on actual inventive and creative activities. First, during on-site inquiries conducted separately with the five inventors, their statements were mutually corroborative, which is sufficient to prove that Company A did not actually completed the experiments described in the detailed implementation section in this application and that the relevant experimental data were fabricated by Company A. It was undisputed by the parties that, from its establishment to the filling date of this application, Company A lacked the necessary experimental conditions, and that neither Company A nor Company B has conducted any experiments using the two new enzymes before the filing date. Therefore, it can be determined that the experimental procedures and data recorded in the embodiments of this application were compiled. Second, the contents of all the embodiments recorded in the specification of this application are based on the two new enzymes, and the protection scope of all claims also includes the technical solutions using the two new enzymes. However, neither Company B nor Company A actually used the two new enzymes in any experiment. Since the technical solutions protected by the claims must be consistent with the specification, and because this application falls within the biopharmaceutical field, where verification of technical effects relies on experimental data, all the embodiments in this application are not verified by experiments. Under these circumstances, all subject matter for which protection is sought in this patent application lack a lawful basis. In addition, in the patent application proceedings, experimental data cannot be amended or supplemented to overcome the inherent default in the original application documents. Therefore, there is no possibility for this application to become a lawful right. Consequently, the ownership of this application shall not be determined, Company B’s litigation requests are refused, and Company A no longer enjoys any rights or interests in the disputed patent application.
In view of the above, the Supreme People’s Court ruled to refuse Company B’s litigation request in the second instance.
In this case, the Supreme People's Court shifted the inquiry from “who contributed to the technique” to “whether the technique actually exists,” thereby establishing a new logical framework for examining patent ownership. The fundamental significance of this shift lies in recognizing that the object protected by intellectual property must first be an actual intellectual achievement, not a sophisticated legal construct. When the principle of honesty becomes a prerequisite condition of ownership confirmation, it actually reshapes the foundation of the patent system. The goal is no longer to encourage fighting for rights on paper, but to show respect for genuine innovation and creation. This is an enlightenment that this case leaves for China’s judicial practice.
(2023) Zui Gao Fa Zhi Min Zhong No. 638
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