——(2020) Supreme People’s Court Final Civil Judgment No. 871

In the case of patent attribution dispute between the appellant Tianjin Qingsong Huayao Pharmaceutical Co., Ltd. (hereinafter referred to as Qingsong Company) and the appellee Huabei Medicine Hebei Huamin Pharmaceutical Co., Ltd. (hereinafter referred to as Huamin Company), an invention patent with the number ZL201410517486. 6. Was involved, which is entitled as "Preparation Process of High Purity Fluoxef Sodium" (hereinafter referred to as the patent involved).

Qingsong Company believed that it is the right holder for the technical secrets of the confidential preparation process of fluoxef sodium. After Huamin Company obtained the technology, it applied for and obtained the patent right involved of the confidential process without Qingsong Company's permission. Therefore Qingsong Company filed a lawsuit to the intermediate peoples’ court of Shijiazhuang, Hebei (hereinafter referred to as the court of first instance) requesting confirmation that the patent right involved belongs to Qingsong Company.

The court of first instance held that the existing evidence could not prove that the technical solutions recorded in the patent application documents involved of Huamin Company came from the confidential technical information in the " Agreement on commission of processing and production " implemented by both parties, which is provided by Qingsong Company, so the litigation request of Qingsong Company was rejected. Qingsong Company refused to accept it and appealed to the Supreme People's Court.

The Supreme People's Court detemined to quash the original judgment on December 16, 2020, confirming that the patent involved in the case was jointly owned by Qingsong Company and Huamin Company.

In the trial of second instance of the Supreme People's Court, the party should examine whether the patent documents disclose technical secrets and whether the patented technical solutions use technical secrets when claiming patent rights based on the infringement of technical secrets. If patent documents disclose technical secrets or patent technical solutions use technical secrets, then it constitutes an infringement of technical secrets.

In this case, regarding the secret information 1 "Deprotecting intermediates with the use of mixed cresol (m-cresol) ", the claims of the patent involved did not directly document specific method used to deprotect the intermediates, but Example 1 of the patent specification, but it discloses the use of m-cresol for deprotection, and secret information 1 uses mixed cresol for deprotection, in which mixed cresol is a mixture of three isomers of o-cresol, m-cresol and p-cresol, while o-cresol, m-creso and p-cresol all use the hydrogen bond of the phenolic hydroxyl group for the deprotection of intermediates, there is no essential difference between them. Therefore, the patent specification involved in this case has disclosed and used secret information1.

Regarding the secret information 2 "the overall technical information of the acid forming reaction step", firstly, the step a) in claim 1 of the involved patent is the acid reaction, that is, it includes the secret information 2. In addition, the technical solution described in Example 1 of the patent specification involved differs in deprotection reagents, reaction atmosphere, temperature control timing, reaction temperature, time, and reagent dosage of the secret information 2 in the confidential process technical solution, and the confidential process does not disclose "dissolution and clarification" and "pH to 2.5", while the above difference is not a substantive difference. Therefore, it can be determined that the patent specification has disclosed and used secret information 2.

As for the secret information 3 "the overall technical information of washing, extraction, and sterile filtration", first, there are differences between step b) in claim 1 of the involved patent and the secret information 3 as follows.

(1) Materials added are different, during the process of extraction to the water phase, sodium chloride and sodium metabisulfite are additionally added in the confidential process; during the process of extraction to the organic phase, sodium chloride is additionally added in the confidential process;

(2) Methods of materials addition and related operations are different. Materials are added all at the same time for the patents involved, and added in batches, stirred several times and separated through standing for the confidential process;

(3) The undisclosed filtrating operation of the confidential process is sterile filtration. After comparing the differences, the above-mentioned difference between step b) in claim 1 of the involved patent and the secret information 3 is not a substantive difference, it can be determined that the step b) in claim 1 of the involved patent contains secret information 3.

Therefore, it can be held that the patent specification involved has disclosed and used secret information3.

In summary, the patent documents involved in the case disclosed the technical secrets of Qingsong Company, and the patented technical solutions also used technical secrets, which constituted an infringement of the technical secrets. Therefore, the technical secrets of Qingsong Company constitute the substantive content of the patented technical solution involved, and Qingsong Company shall have legal rights of patent involved.

From The Intellectual Property Court of the Supreme People’s Court

May 31st, 2021