Summary of Case

Mr. XIE used to work in Dafeng Company as Deputy Manager and later as Manager of Quality Management Department as well as General Manager for skylight sales. Mr. XIE resigned from Dafeng in November 2012 and filed an invention patent application about window opening mechanism in April 2013. The application was published in July 2013. Dafeng considered that the patent filed by the Mr. XIE was invented through contacting, managing, obtaining and mastering the techniques of skylight during his work in Dafeng. Thus, the patent should be a service invention creation and it should belong to Dafeng. However, Mr. XIE declared that the invention was an intellectual creation by him and other four outsiders. The involved patent application had no relation with his work in Dafeng and belonged to different technology fields from Dafeng’s skylight. Thus, Dafeng’s claim of the ownership of the patent was lack of factual and legal basis.

After the trial, Ningbo Intermediate People’s Court deemed that the patent of window opening mechanism was invented within one year from Mr. XIE’s resignation, and the invention creation was related to his own duty as he took an important role in research and development of skylight technology. Besides, the contents of the said invention were closely related to the Dafeng’s skylight technology. In addition, Mr. XIE failed to provide sufficient evidence to prove that the other four inventors had any related technical qualifications or made creative contributions to the invention, and therefore the ownership of the patent application should belong to Dafeng.

Mr. XIE did not accept the first instance judgment and then he appealed to Higher People’s Court of Zhejiang Province. However, the court sustained the original judgment.

Legal Basis

Patent Law of the People's Republic of China

Article 6  An invention that is accomplished in the course of performing the duties of an employee, or mainly by using the material and technical conditions of an employer shall be deemed as a service invention. For a service invention, the employer has the right to apply for a patent. After such an application is granted, the employer shall be the patentee.

For a non-service invention, the inventor or designer has the right to apply for a patent. After such an application is granted, the said inventor or designer shall be the patentee.

In cases that inventions are made by using the materials and technical conditions of an employer, if the employer has concluded a contract with the inventor or designer stipulating agreements concerning the right to apply for the patent or the ownership of the patent right concerned, such agreements shall prevail.

Rules for the Implementation of the Patent Law of the People's Republic of China

Article 12 "A service invention-creation made by a person in execution of the tasks of the entity to which he belongs" referred to in Article 6 of the Patent Law means any invention-creation made: (1) In the course of performing his own duty; (2) In execution of any task, other than his own duty, which was entrusted to him by the entity to which he belongs; (3) Within one (1) year from his retirement, transferring out of the original entity or termination of labor or personnel relation, where the invention relates to his own duty or the tasks assigned by the original entity.

"The entity to which he belongs" referred to in Article 6 of the Patent Law includes the entity in which the person concerned is a temporary staff member. "Material and technical means of the entity" referred to in Article 6 mean the entity's money, equipment, spare parts, raw materials or technical materials which are not disclosed to the public.

Remarks

The Higher People’s Court of Zhejiang Province deemed that a balanced protection concept shall be applied when determining the ownership of a service invention patent right.

Here are the main points:

  1. The essential element of “within 1 year from one’s resignation”

As a kind of intellectual labor process, innovation and creation has certain continuity, which makes it inapplicable to use time as a demarcation line. The essential element of determining the ownership of a service invention patent is “within 1 year from one’s resignation” according to Article 12 of the Implementation of the Patent Law.

  1. The reasonable definition of the “scope of employment”

Due to the differences on the division of work, jobs could be divided into technological research and development ones and non-technological research and development ones. In this case, we should not base on the title recorded on the labor contract or his non-engagement of R&D department to determine whether Mr. XIE had engaged in technological research and development in practical work or not. Mr. XIE fully participated in controlling the product quality during his service in Dafeng as the Deputy Manager and later as Manager of Quality Management Department. Therefore, he was familiar with the relevant technical information and equipped with corresponding professional and technical capacity. As one of the participants of the Dafeng’s skylight project, Mr. XIE could not deny the fact that he had participated in the project of research and development in the absence of evidence to the contrary. Besides, Mr. XIE was responsible for sales, management and promotion of skylights when he was the General Manager. In view of Mr. XIE’s important role in his positions, the court deemed that research and development for skylights technology was among the scope of employment when Mr. XIE served in Dafeng.

  1. Measuring relevance comprehensively

Based on the reasonable definition of the defendant’s “scope of employment”, further consideration should be given to the relevance between the involved invention and the “scope of employment”, such as technical backgrounds, using scope and places, functions etc.

  1. Other elements

Other elements should also be taken into consideration, such as supporting evidences of other inventors’ substantial contributions for the involved invention, as well as their technical qualifications, work experience and educational background.

Source: People’s Court Daily