My research paper filed as a patent in China by my Chinese supervisor without me as inventor

Question

I completed my PhD 3 years ago from a university in the UK. Today I was looking for some papers in google scholar. I found a patent in China. The patent was written in Chinese however, all diagrams/figures and equations were exactly same as one of my PhD research papers, which was also part of my PhD thesis.

I translated Chinese text to English I found that work is exactly....same as my PhD thesis and research paper. My research paper was published 1 year before the patent was filed. When I translated the inventors name. I found one of the inventors is my PhD supervisor, who is Chinese but works in a UK university. I couldn't believe it. This patent was filed by a power company in China with my PhD supervisor as one of the inventors.

I am fully aware that the research paper is an open source idea anybody can use it. However, this is the case of copyright infringement. I have full right on text, diagrams, figure and tables in my research paper and my PhD thesis. They have copy-pasted diagrams as well. These diagrams are scientific diagrams nobody can reproduce them without the data.

Now, I am not sure, where should I complain?

1. should I first confront my supervisor directly as he is one of the inventors? or
2. complain to the university, because if this paper is a patent then only the university has first right over it before a power company in China. I never gave any consent to sell my research work or file a patent of my work without me being the inventor.
3. Another issue is that I did research at a UK university. This patent is filed in China. What actions I can take?

Answer 1

This sounds like a clear-cut case of a violation of academic ethics to me - if he’s willing to steal work from you, how could anyone trust anything he’s ever published? I’d strongly consider going to talk with the head of your faculty, school, or department, depending on how your university’s hierarchy is structured, so that the university can begin academic integrity proceedings against him, and I’d also consider talking to the university’s lawyers about what your legal options to dispute the patent are, and if you would be able to file one in the UK.

Answer 2

China does not have a good history of enforcing IP rules. This is a widely-covered topic (Stanford legal blog summary, CNBC study, google search on the topic). This topic has been a focus in recent international politics, as IP has been a non-insignificant focus in larger trade talks. While President Xi has claimed that he's cracking down, things still aren't that great.

To that extent, you're simply now experiencing pain that many others have felt. Unfortunately, there aren't many resources available for you to remedy this problem.

As you say that your advisor works for a UK university, you might be able to do contact the UK university and see if they can assist in policing this in some way. It is unlikely they can for the patent to be overturned or rewritten to acknowledge you, but there may be some other pressure they can exert on the professor. Similarly, if anyone tries to claim rights to your invention outside of China, it's highly likely you could claim prior art.

Lastly, while certainly suspicious, I wouldn't take it as proven that your advisor was responsible, at least not based on what you've written.

Answer 3

Legally, you don't need to do anything, you lost nothing and don't need to worry.

Ethically, well, others answered that adequately I think. Obviously it's not ok, but you don't even know for sure your advisor was involved. I would just like to add that you should keep in mind the cost to yourself of taking any action and whether you really want conflict in your life when you aren't actually threatened.

Details about the legal aspects:

In general, getting a patent is meaningless. The patent registry does some research to verify validity, but only as much as their fee pays for. States don't enforce patents in general, so the people who filed the patent would need to sue you. Then you would trivially win, because I assume you had your thesis published in a reputed place which can vouch for the publication date and it's such a blatant copy (which thus isn't novel, and that's the basic requirement for patents all over the world).

You yourself couldn't get a patent on the idea anyway (in most countries), because you published your paper and thus destroyed novelty (yes, patent law really works like this - you need to file for a patent before you publish anything).

Next, Chinese patents only have any effect in China even if they are legal and enforceable in (Chinese) court. Because of the exorbitant cost of patents and the questionable enforce-ability in China, you probably don't want a patent in China anyway unless you are Chinese or otherwise based there.

If, next time, you wanted to get a patent yourself you should talk to your university early on. Often they will get a patent for you (but also own the patent) or help you get a patent (depending on your contract with them).

(I passed a 2ECTS course on intellectual property at a good university recently, but that's all of my credentials)

Answer 4

I am not a lawyer but this is my understanding of patent law...

Another consideration is that a patent is granted on the understanding that the object or idea covered by the patent was not publicly disclosed prior to the patent application. Such a public disclosure constitutes "prior art".

If your paper was published by a journal, or your thesis was deposited in an online university repository, then relevant prior art was publicly disclosed, predating the patent application. As such the patent should not have been granted in the first place and would be unenforceable if push came to shove in a court. So your university (his employer... perhaps shotly to be his ex-employer) should have a very easy case to get the patent set aside. They will have the legal firepower available to do this, you won't be able to afford what they can afford to protect their reputation. Talk to your research organisation.

Even if the system in China rejects the complaint, the holders won't be able to register a patent anywhere else in the world for this substance / process and anywhere else in the world will be free to use the substance / process so it will seriously devalue the theft of your IP.

Answer 5

Three issues together with a TL;DR:

• Science ethics (talk with your Uni)
• Copyright (largely irrelevant as it's China, unfortunately)
• Patents (dito)

The "patent" aspect would be your least worry. I assume that you do not actually want to use the idea of your paper in China, but maybe in a western country. In that case, any western court should make that very much possible for you. Patents are all about invention; the entity acquiring a patent must prove that they invented it, and if a challenger can prove that the thing was extant before, then it's a moot point.

The "copyright" issue is a big headache for you, but it does not hurt you, really. You did a paper anyways, so it is out there, and in western countries which respect the idea of copyright, that's it. You can easily prove, by comparing the dates on the documents, that you are the copyright holder. If you, say, want to rework your paper into a book, or something like that, you can easily do that (in the west).

"Ethics" is really only applicable here because your supervisor is in the UK as well. If you want to go that way, sure, your uni should have contacts for you. It won't change anything in China, but maybe it creates enough repercussions for that person so something changes... which will be more for your own peace of mind than anything else, I guess.

Except for notifying your uni, I'd let it go, frankly. Unless you have very concrete plans to actually use your paper in aspects of copyright/patentability, you'll not gain anything except gray hair and gastric ulcers... and even then - what I called "easy" up there would still involve lawyers and a lot of time and possibly money depending on whether the chinese company has a dependency (or a vested interest) in a western country.

Answer 6

Patents are only useful in the case of a dispute. And a patent dispute will really only occur when there is competition. If nobody competes with the company that "stole" your patent, then in the big picture, the patent is meaningless. If the corporation that filed the patent is state-owned, then it is likely that it will never face meaningful competition to begin with. At that point, the patent almost certainly provides prestige value only.

It is hard to see how anything of value has been taken from you unless you intended to productize your Ph.D thesis inside China. However, there is a way for you to possibly extract value from the patent that even the patent holder cannot. You should simply advertise on your C.V. that your thesis is already being implemented in China, and refer to the Chinese corporation and its patents as proof. This certainly validates your ideas more strongly than not having a physical implementation. If you really want to take it to the next level, you should contact your adviser and make them give you a fawning quote about your work and how it made possible the glorious Chinese patent for the good of the Motherland (or is it the Fatherland?). Unless acknowledging your role would somehow cause a loss of face for your adviser, this seems like a win-win situation to me.

Even if acknowledging your contribution would cause a loss of face, making your adviser balk, you can simply turn the screws by letting your adviser know that you will be contacting his corporation's legal department to advise them of the provenance of key patent data. That should remove any hesitation to give you the well-deserved acknowledgment, which could easily be written in English, in a place that few people in China are likely to see or look for.

Answer 7

I, too, am not a lawyer, but know enough that patent law varies considerably across the globe. It is even possible that a patent granted in China won't be recognized in the US, though I have no specific knowledge of that. But, among other things, the standards about what can be patented are likely different in different locations. Certainly the process is.

The proper course is to talk to a patent lawyer who can give valid advice. Your university, if it is a large one, probably has access to such lawyers who can advise you and even file for a patent (say in the US) on your behalf and that of the university.

Answer 8

According to this Wikipedia article inventions that are not new are not patentable in China since 2009. The article also mentions two ways of initiating an opposition procedure.

One of them, is at the CNIPA which has a rather comprehensive English website: http://english.sipo.gov.cn/. I'm pretty sure that calling them would at least give you some answers as to what actions are available. The site also contains translations of Chinese patent laws.

There is also another option for you. You can contact the power company that filed the patent. Or threaten your supervisor with that. It is very likely that he received compensation for the invention from that company. In this case, that would mean he committed a crime as the invention was unpatentable and he sold them something that wasn't his.

If the power company filed the patent without even your supervisor's knowledge, it might be a little more difficult. Power companies in China are state-owned mega-corporations with... well... a lot of power. You would need a little more noise to make them give up the patent. I doubt that is the case here though. They don't really have competition. It doesn't make sense for them to try to patent open source ideas.

Answer 9

It is unfortunately common to hear stories similar to this with regards to graduate work. There are no proven damages you list, so there is really no way to sue. It would also not be very beneficial in this circumstance, as it is very difficult to influence or otherwise enforce international intellectual property rules on other countries in general.

The most promising way forward here is not a legal solution, but a social one. Contact the supervisor associated with the publication, and explain that you found your paper filed as patent in China. It is possible they were also unaware, but that isn't necessarily relevant. The relevant issue is to see if they can help correct the patent filing to include you as an inventor.

It is possible to correct the names of inventorship for a patent in China. Given that you approach this from an inclusive stance as opposed to a combative one, you may have some luck there.

According to the The International Association for the Protection of Intellectual Property (AIPPI), "the inventorship of a patent application can be corrected after the filing date in China upon request with related statement of agreement or evidence."

As for the request, make sure that you can provide some sort of documentation to the supervisor for them to present. China's patent office will require some proof of inventorship when filing a correction.

The inventorship of a patent application can be corrected after the filing date in China upon request with related statement of agreement or evidence. Under the current Patent Law of China, where the request to make a change is due to failure to fill in the name of inventor or his wrong name filled in, the certifying document signed or sealed by all the applicants (or patentees) and all the inventors before the change shall be submitted;

Short of them consciously making the decision to include you in this list of inventors, it is highly unlikely you will see any beneficial outcome from being forceful here.

There is also the counter argument which may hold some weight regardless of being entirely accurate. If your supervisor were to argue that they directed the effects of your research only to the extent of organizing your work, then you would not be considered as an inventor in China.

The Patent Law of China does not define inventorship based on any particular part of the patent application. Anyone who makes creative contributions to the substantive features of an invention should be considered as the inventor of the application. On the other hand, a person who is responsible only for organizational work, who offers facilities for making use of materials and technical means, or who takes part only in other auxiliary functions, is not considered to be an inventor. While, from a legal perspective, the “substantive features” refer to those features that distinguish the invention from the closest prior art and thus render the invention patentable, in practice they are generally considered as the act of proposing the original idea of the originally claimed invention.

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_{- Source for citations: https://aippi.org/wp-content/uploads/committees/244/GR244china.pdf}

Answer 10

I'm not a lawyer and I don't know much about Chinese law, but much of this has been missed by other posters so far and I've done a bit of IP work in the past.

China is a "First to File" country

My country is a "first to file". ie if your boss files a patent for something you invented, he has full right to it and you might actually not have any rights over it at all. From a quick google search it appears that China is also a "first to file" country. If your supervisor filed the patent correctly, it should go through if you don't do anything.

More Chinese patent law from my quick google search

In china there are three types of patents: invention patents, utility model patents, and design patents. This might be an invention patent, but I'm not sure. Now, I believe according to this site, there would be a 6 month grace period where you would have been able to contest this patent since it was first made public in an academic setting. However, according to this site, China has no patent opposition procedure. You can still try to beat this by filing an invalidation application as outlined in the same site. It doesn't seem to me that the patent itself is invalid though.

What can you do?

1. If it is important to you, file a patent in the UK and in any other country you want to do business in/want your ideas recognized/want to be involved in litigation in (ooh fun!, not).
2. Talk to your supervisor and ask him to add you as an inventor.
3. Consider speaking to a patent attorney.

Copyright and Patent are two different things

If you wrote the paper and made the figures, then perhaps you are right and you automatically have copyright over that stuff. Be aware that some journals actually take copyright from the authors and some uni's do the same. Neither of those things invalidate the patent itself. I know it sounds strange, but it's patent law - it's all strange. I do not know which of the above is the case though. It is very difficult to determine who wrote the paper this far from the actual fact. Your supervisor may very well have thought he did sufficient work to be the inventor and/or have written significant portions of the paper.

Ownership and inventorship are not equivalent

Even if you were listed as an inventor, you don't necessarily have ownership over anything. So let's say you were able to get yourself listed as an inventor......you are still in the same boat, but now you have bragging rights. You still couldn't sell something based on that paper in china without infringing on their patent. If your intent is to make money off of this paper in China, then I would honestly say it isn't worth it. There are other countries where your paper is not patented and where you could engage in rampant capitalism at your pleasure. If you intend to do that, it's an easy, albeit expensive, journey of several thousands of dollars for each patent.

Answer 11

Are you sure that the officer knew that the patent is just a translation and piracy of your work? Like sending them an complaint or something. I really think it is possible that they just failed to cover some PhD paper in English. I can help you in the translation the Chinese.

Also, as far as I know, patent is to gain protection by disclose of the technique. So the Chinese government will no way benefit from such patent(because it should be open to everybody due to your published paper). It matters only with your supervisor's profit.