Case Description

In 2021, Hu, Pei, Sun, and others founded S Company after leaving R Company, a technology intensive enterprise. In May 2023, R Company discovered that S Company had applied for an invention patent for its trade secret. How should R Company provide relief?

Case Description

Article 5, Paragraph 1 of the Patent Law stipulates that no patent right shall be granted for inventions and creations that violate the law, social morality, or harm public interests. S company shall not use R company's trade secrets to apply for invention patents; Even if applied for, patent rights are not granted in accordance with the law.

1. Remedies provided by R Company after the date of publication of the invention patent application and before the date of announcement of the grant of patent rights by the Patent Office. R Company may, in accordance with Article 48 of the Implementation Rules of the Patent Law, file an objection application with the Patent Office for any patent application that does not comply with the provisions of the Patent Law, from the date of publication of the invention patent application to the date of announcement of the grant of the patent right. After accepting the objection application, the Patent Office will conduct a substantive examination of whether S Company's invention application has infringed on R Company's trade secrets during the patent substantive examination stage. After examination, if S company's invention application infringes on R company's trade secrets, the Patent Office will reject S company's invention patent application. After examination, if the Patent Office believes that the invention application of Company S has not infringed on the trade secrets of Company R and meets the requirements of the Patent Law, it shall issue an invention patent certificate to Company S, and register and announce it.

2. Remedies for R Company after the date of the patent office's announcement of the grant of patent rights. R Company may, in accordance with Article 45 of the Patent Law, file an application for invalidation of a patent right with the Patent Office if any unit or individual believes that the grant of the patent right does not comply with the relevant provisions of this Law from the date of the announcement of the grant of the patent right by the Patent Administration Department of the State Council. After examining an application for invalidation of a patent right, the Patent Office shall make a decision to declare the patent right invalid or maintain the patent right. If Company S is dissatisfied with the decision of the Patent Office to declare the patent right invalid or Company R is dissatisfied with the decision of the Patent Office to maintain the patent right, it may file a lawsuit with the People's Court within three months from the date of receiving the notice. R company or S company participates as a third party in the lawsuit.

In addition to the above remedies for S Company's application for invention patents, R Company can also bring a lawsuit of Unfair competition against S Company, Hu, Pei, Sun and other acts infringing on their trade secrets.