SPC Case-Library Ruling: Foreign-First Filing of China-Based R&D Turns on Where the Substantive Content Was Completed

The list of case-library entries published by the Supreme People's Court Intellectual Property Tribunal on 27 January 2026 shows that (2022) Zui Gao Fa Zhi Xing Zhong No. 255, a patent invalidation dispute between a Guangzhou biotechnology company, the China National Intellectual Property Administration (CNIPA) and a United States diagnostics company, has been selected as a reference case in the People's Court Case Library; the tribunal had published its analysis of the case on 5 September 2024. The patent, titled an in-vitro medical diagnostic device and system and relating to a blood-gas biochemical analyser, is held by the United States company. The petitioner argued that the technical solution was the outcome of a Guangdong provincial research project and that the patentee had filed abroad for an invention completed in China without requesting a confidentiality examination, so that the same solution filed in China should not have been granted.

CNIPA found that the substantive content of the patent had been completed abroad in the first half of 2010, before the research project began, that the project was the industrialisation phase of the solution, and maintained the patent; the Beijing Intellectual Property Court dismissed the action at first instance and the Supreme People's Court dismissed the appeal. The Supreme People's Court held, first, that whether a granted patent must be invalidated for breach of the confidentiality examination rule turns on whether the substantive content of the technical solution in the earlier foreign application was completed in China, so the foreign application text is in principle the basis of examination, and the Chinese application text may be used where the two solutions are confirmed to be substantially the same; second, that where the substantive content was completed must be judged comprehensively on the evidence, examining how the solution took shape and where the inventors were when they completed its substantive content, together with the research and development patterns of the field. Here the court relied on the technical content recorded in the inventors' correspondence, the background and schedule recorded for the research project and the development and industrialisation patterns of the field to find that the substantive content already existed when the project was set up, and that the evidence did not show it had been completed in China.

For cross-border research and foreign-first filing strategies, the value of this headnote is that it turns a confidentiality examination dispute into a workable evidentiary test. Article 19 of the current Patent Law keeps the same rule: an invention or utility model completed in China must undergo a confidentiality examination by the patent administration department of the State Council before it is filed abroad, and a Chinese application filed in breach cannot be granted, with completed in China meaning that the substantive content of the technical solution was completed within China. The dispute is rarely about the rule but about proving the place of completion: the case shows that the court does not infer it simply from the patentee's nationality, domicile or the name of a project, but looks at when and where the solution actually took shape and at the development patterns of the field, and that the object of examination is the application filed abroad. For companies whose research is spread across China and other countries, that is both room to defend and a burden of proof. J&C recommends that multinationals with research teams in China, and Chinese companies that file abroad first, treat evidence of where the substantive content was completed as a routine compliance record: keep the development logs, version history and key correspondence showing how each solution took shape and where the inventors were when it was completed; where that content may have been formed in China, request a confidentiality examination from CNIPA or file in China first; and self-check patents filed abroad first and granted in China against this standard.