Judgment Gist
According to the relevant provisions of the Patent Law, an invention-creation made by performing the tasks of the entity concerned or mainly using the material and technical conditions of the entity concerned is a service invention-creation; The right to apply for a patent for a service invention-creation belongs to that entity, which shall be the patentee after the application is granted; Service invention-creations made in the performance of the tasks of the entity to which they belong include invention-creations made in the course of their own work, and invention-creations made in the performance of tasks other than their own work but assigned by the entity to which they belong; The entity includes the temporary working entity. Among them, invention-creations made in the course of their own work include those made in their own work and those made in the work related to their own work. The evidence on the file can identify that the technology applied for in the invention involved is related to the work task of the defendant Xin LI in Horiba Shanghai, which should belong to the invention-creation made by performing tasks other than his own work but assigned by the entity, and belongs to the service invention created by performing the tasks assigned by the entity. The right to apply for the patent and the patent right after being granted should belong to the plaintiff.
Case Information
Case Summary
The plaintiff Horiba (China) Trading Co., Ltd. (hereinafter referred to as “Horiba China”) and Horiba Instruments (Shanghai) Co., Ltd. (hereinafter referred to as “Horiba Shanghai”) found that the defendant Shanghai Longwu Measurement and Control Technology Partnership (Limited Liability Partnership) (hereinafter referred to as “Longwu Partnership”) filed an application No. XXXXXXXXXXXX.7 for an invention patent titled “chassis dynamometer and intelligent vehicle test bench including chassis dynamometer” (hereinafter referred to as “the involved patent application”) on April 4, 2018. The announcement date of the invention patent is September 18, 2018, and Xin LI was listed as the only inventor. Xin LI was at the moment an employee of the plaintiff, and the technical solution of the patent application involved in the case was also closely related to the business of the plaintiff. The two plaintiffs believed that the invention-creation involved in the patent application in the case belonged to the service invention that Xin LI completed during his work at the two plaintiffs, and the patent application right should be jointly owned by the two plaintiffs. Therefore, the two plaintiffs filed a lawsuit of dispute of the ownership of the right to Shanghai Intellectual Property Court, requesting confirmation that the patent application in the case belongs to the plaintiffs.
The main issue of this case is whether the patent application in question belongs to the service invention specified in the Chinese Patent Law. After trial, Shanghai Intellectual Property Court recognized that the defendant Xin LI joined Horiba China in October 2005 and terminated the labor contract in February 2019. He has served as the sales manager of the Engine Department, the Automotive Business Department and the manager of the ATS Department. The labor contract signed by both parties clearly agreed that specific work should be arranged by the company according to needs (possibly not limited to the scope specified in the contract). During the term of the labor contract relationship with Horiba China, the defendant Xin LI also engaged in technical work related to Horiba Shanghai according to the arrangement of Horiba China. Moreover, the defendant Xin LI’s work is related to the automotive indoor test technology, including chassis dynamometer and hub technology. The evidence on the file can prove that the technology applied for in the invention involved is related to the work task of the defendant Xin LI in Horiba Shanghai, which should belong to the invention-creation made by performing tasks assigned by the entity other than his own work, and belongs to the service invention created by performing the tasks assigned by the entity. The right to apply for the invention patent and the patent right after being granted should belong to the plaintiffs.
Accordingly, Shanghai Intellectual Property Court made the first instance judgment that supported the plaintiffs’ claim. Neither party appealed, so the first instance judgment came into force on January 14, 2021.
Attorney’s Opinion
This case mainly involves the identification of service invention-creation.
Article 6 of the Patent Law of the People’s Republic of China stipulates that an invention-creation completed in the performance of the tasks of the entity or mainly by using the material and technical conditions of the entity is a service invention-creation. The right to apply for a patent for a service invention-creation belongs to that entity; After the application is granted, the entity shall be the patentee.
……
Article 12 of the Rules for the Implementation of the Patent Law of the People’s Republic of China stipulates that “service invention-creation completed by performing the tasks of the entity” mentioned in Article 6 of the Patent Law refers to:
(1) Inventions and creations made in the course of their own work;
(2) Inventions and creations made in the performance of tasks other than their own work assigned to them by the entity;
(3) Inventions and creations made after retirement or transfer from the former entity or within one year after the termination of labor or personnel relations, which are related to their own work or tasks assigned by the former entity.
The entity referred to in Article 6 of the Patent Law includes the temporary working entity; The material and technical conditions of the entity referred to in Article 6 of the Patent Law refer to the funds, equipment, spare parts, raw materials or technical materials not disclosed to the public of the entity.
According to the above provisions, service invention-creations can be divided into two categories: one is the invention-creations completed by performing the tasks of the entity. For such invention-creations, Article 12 of the Rules for the Implementation of the Patent Law of the People’s Republic of China specifies three specific situations in detail; The other category refers to invention-creations completed mainly by making use of the material conditions of the entity (including funds, equipment, spare parts, raw materials or technical materials that are not disclosed to the public).
With regard to whether the invention-creation is a service invention created by performing the tasks of the entity, the examination usually involves two key aspects: one is whether the inventor has a labor relationship with the plaintiff or the labor relationship has been terminated for less than one year when the invention-creation is completed, and the other is whether the technical solution of the invention-creation is related to the inventor’s work or the tasks assigned by the entity.
The Supreme Court mentioned in the No. 158 of the Guidance Cases (2019) (Supreme Civil Retrial No. 6342), i.e., dispute over the ownership of patent rights between Shenzhen Weimou Technology Co., Ltd. and Jianyi LI, Shenzhen Yuanmou Intelligent Equipment Co., Ltd., that when judging whether the invention-creation involved in the case belongs to the “relevant invention creation” specified in Item (3), Paragraph 1, Article 12 of the Rules for the Implementation of the Patent Law, attention should be paid to balance the interests among the former entity, the resigned employee and the new employer of the employee, based on a comprehensive consideration of the following factors: (1) The specific contents of the work or tasks assigned by the former entity to the resigned employee, including job responsibilities, authorities, and technical information related to the patent involved that can be accessed, controlled, and obtained. (2) The specific situation of the patent involved, including its technical field, the technical problem solved, the purpose and effect of the invention, the scope of protection defined by the claims, “substantive characteristics” of the patent involved relative to the prior art, etc., and the relationship between the patent involved and the job or the task assigned by the former entity. (3) Whether the former entity has carried out technology research and development activities related to the patent involved, or whether it has legal sources of relevant technologies. (4) Whether the patentee and inventor can reasonably explain the research and development process or the source of technology of the patent involved, the relevant factors include the complexity of the technical solution of the patent involved, necessary research and development investment, whether the patentee and inventor have the corresponding knowledge, experience, skills or material and technical conditions, whether there is evidence to prove that they have carried out the relevant research and development activities, etc.
Although the above case was a dispute related to the invention-creation made by the resigned employee within one year after his resignation, the factors in the judgment and consideration of the relevance can obviously be equally applicable to the dispute of invention-creation made by the employees during their service. Therefore, the work content, the information that the employee can access, and tasks assigned by the former entity of the employee are all the key points of proof in such cases.
In this case, the inventor Xin LI recorded in the patent application documents involved in the case had labor relationship with the plaintiff Horiba China, and at the time when the patent application involved was filed, the labor relationship had still existed. Therefore, the key point of this case was to prove that the technical solution of the invention-creation in dispute was relevant to the work of the employee or the tasks assigned by the entity. And a large amount of evidence focused on the work responsibilities, work contents and technical information that the defendant Xin LI had access to during his work for the plaintiff was submitted, and a comparison with the technical solution of the patent application involved was made in order to fully prove the relevance of the work task to the technical solution.
It should be noted that the criteria for judging the technical relevance considered in the dispute over the ownership of service invention are completely different from the principle of full coverage of the infringement judgment in patent infringement cases, that is, it is not necessary to prove that the technical solution of the patent application in dispute can be one-to-one corresponding to the technical information, research and development, and technology used by the former entity.
In addition, the basis of service invention lies in the labor relationship between the inventor and the entity. It is easy to prove whether there is a labor relationship. In many cases, the focus of dispute may change to whether the employee who has a labor relationship with the entity is the real inventor. As in this case, during the litigation process, the defendant argued that Xin LI was not the real inventor. However, the inventor recorded in the patent application document can be the preliminary evidence of inventor, although it has not undergone substantive examination. Any party who challenges the inventor recorded in the patent application documents shall provide corresponding counter evidence to prove it.
Link of the Case Judgement:
First instance:
https://wenshu.court.gov.cn/website/wenshu/181107ANFZ0BXSK4/index.html?docId=kCEZ3yzXGmbPeG2P2Ki90l3XG3TbueRLLuoI+8i5MakBK3K41W98UJ/dgBYosE2gnzCJ67RrBQ9tDjTsJDwNIvTXTyWfi7q21XjDwDE+XhYCG6NEk0MUQk3dY/rt1xFU
