Disputes involving the alleged disclosure of trade secrets in patent applications are common in China and elsewhere. Jerry Xia, founding and managing partner of GEN Law Firm’s Shanghai office and US liaison, says patent filings by former employees or competitors is not uncommon and this is often what causes a trade secret owner’s suspicion that their proprietary information has been misused.

“In the Emerson case I co-counselled, the court ordered patent reassignment back to Emerson plus damages, because the former employee’s patent application was deficient in its handling of the confidential information he took away from Emerson,” comments Xia, referring to the patent ownership dispute where China-based Emerson Zhuhai, part of American multinational Emerson Electric triumphed against Shenzhen Aier in Guangdong Shenzhen Intermediate People’s Court.  

Shenzhen Aier filed its complaint in 2016 alleging that Emerson’s use of a thermal fuse stamping device infringed its 2010 patent. It was at this point that Emerson discovered the technology it had long used and legally owned in the form of a trade secret had been patented by Shenzhen Aier. The inventor of the patent at issue was a former employee of Emerson Zhuhai.