Key points of the judgment:
According to Rule 12 (2) of the Implementing Regulations of the Patent Law of the People’s Republic of China, “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 in execution of any task, other than his own duty, which was entrusted to him by the entity to which he belongs”. A creation is determined to be a service invention based on the employment relationship or the temporary employment relationship between the inventor and the entity cited in Rule 12 (2). A creation is deemed as a service invention if the entity has the right to dominate the inventive work for making the invention. If the entity and the inventor build a general relationship of cooperation, rather than an employment relationship, the invention made by the inventor does not belong to a service invention.
Key words:
Invention patent; ownership of the patent; service invention; work; right to dominate
Case briefing:
Bai Jianmin and Wuxi Ler Technology Co., Ltd. (hereinafter referred to as the LerTech) sued Jiangsu MultiDimension Technology Co., Ltd. (hereinafter referred to as the MDT) on the ownership of a patent application No. ZL201210276305.6 entitled “Magnetic Reading Head for Point-of-Sale Terminal” (hereinafter referred to as the involved patent).
The MDT alleged that the involved patent belonged to a service invention on the grounds that Bai Jianmin accomplished it within one year after he left his job from the MDT, and the invention was made during the execution of his task of the MDT. Bai Jianmin filed a patent application of the involved invention without permission, and changed the applicant into LerTech, who finally owned the patent right. The MDT thus filed a civil litigation regarding the involved patent application against the LerTech and Bai Jianmin to Suzhou Intermediate People’s Court (hereinafter referred to as the court of first instance).
The court of first instance held that Bai Jiamin was employed by MDT, thus having an employment relationship with the MDT from May of 2011 to June of 2012 (hereinafter referred to as the involved term). The technical solution included in the emails, the evidence provided by the MDT, almost covered the inventive concepts of the patent. Thus the patent was involved in Bai’s tasks and duties during his employment by the MDT. The court of first instance made a judgment that the MDT owned the right of the patent.
Bai Jianmin and the LerTech failed to accept the decision and filed a second appeal to the Supreme People’s Court (SPC) with three claims. Firstly, Bai Jianmin provided consultations for MDT, and was responsible for the technology development as a contact of Lanzhou University. These emails of the communications were sent on account of the aforesaid consulting service, rather than the evidence-based employment relationship as held by the court of the first instance. Secondly, these emails from the MDT did not relate to the essential information, nor disclose the technical features of the involved patent. Thus, there was no relevance between the emails and the involved patent. Thirdly, the involved patent was irrelevant to MDT as it was accomplished during Bai’s employment by the other concerned party.
The SPC decided to withdraw the decision of the first instance made on December 17 of 2020, and rejected the appeal field by the MDT.
Decisions:
According the judgment of the second instance issued by the Supreme People’s Court, the Patent Law of the People’s Republic of China (hereinafter referred to as the Patent Law) and the Implementing Regulations of the Patent Law of the People’s Republic of China (hereinafter referred to as the Implementing Regulations of the Patent Law) stipulate the determination of the service invention.
Firstly, subject to the provision on the service invention stipulated by Article 6 of the Patent Law, the inventor and the entity shall have the employment relationship or the temporary employment relationship. The primary element for determining the ownership of the service invention is that the entity has the right to dominate the inventive work. Therefore, the entity having the right to dominate the inventive work determines the employment relationship or the temporary employment relationship. If the entity and the inventor have a general relationship of cooperation, and the inventor does not assign the right of dominating the inventive work, it is unreasonable for the entity to own the technical solution created by the inventive work.
Secondly, the individual and the entity are equal civil subjects, wherein the relationship shall adhere to the principle of autonomy of will that is detrimental to public interests. If there is a contract between the entity and the inventor regarding to their relationship, the contractual stipulations shall prevail, and if not, the performed acts and results will be considered.
In this case:
Firstly, there were two bilateral contracts between Bai Jianmin and the MDT determining the employment relationship. Specifically, Bai signed a Technical Development (Commission) Contract with the MDT, in which Bai represented the Lanzhou University to engage in the MDT’s technical development project. Bai signed a Consulting Service Contract with the MDT, based on which the two had another kind of employment relationship.
Secondly, the employment relationship based on the Technical Development (Commission) Contract and the technical solution derived from such relationship cannot serve as the legal or the factual basis for determining the ownership of the involved patent, which the MDT claimed on the ground of the service invention.
Thirdly, the Consulting Service Contract only appointed Bai to provide the intermediary services covering the technical training, the technical cooperation and the project application, etc. The contract clearly indicated that in the period of the contract, Party A shall provide another detailed written contract, requiring Party B to provide the additional services. However, in this case, no evidence may prove that the relationship cited in the Consulting Service Contract was changed into the employment relationship or the temporary relationship in a sense of the service invention.
Fourthly, Bai, as a teacher of the Lanzhou University, was engaged in the communications between MDT and the related individuals not involved in this case. In the pendency of the patent from July 20, 2010 to Jun 19, 2012, Bai worked as the inventor but also a teacher of the Lanzhou University. The MDT actually paid Bai 25,000 monthly salary and the travel expenses, indicating that both parties fulfilled their obligations prescribed in the two contracts. Moreover, the MDT paid the social insurance, provided the accommodation and the subsidies for Bai, and Bai was recorded as the director of the new product development in the contacts of MDT, and the PM in a project proposal of the innovation team. The above actions were not explicitly recorded in the contract, but concerned Bai’s position, a contact of the Lanzhou University. Therefore, the above evidences submitted by both parties were not sufficient for determining the employment relationship or the temporary employment relationship in a sense of the service invention.
To sum up, the contract determining the relationship between Bai and MDT shall prevail. In this case, the involved contracts cannot determine the employment relationship or the temporary employment relationship of the two parties claimed by the service invention. And based on the aforesaid actions, the two-party relationship was not proved to be changed into the employment relationship or the temporary employment relationship in a sense of the service invention.
As a result, the MDT’s claim of owning the involved patent right on the grounds that the patent belonged to a service invention made by Bai Jianmin in execution of the tasks and duties of the entity, lack the factual basis and the legal basis.
