A considerable part of the patent right disputes are related to service inventions, and the service invention interpretation of the patent law is : an invention made in execution of the tasks of the enterprise to which it belongs or made by mainly the use of the material and technical conditions of the enterprise to which it belongs is a service invention.The Rules for the implementation of the Patent Law further explain service invention of performing the tasks of the enterprise and it mainly includes the following situations:(1)An invention made in the course of one's job; (2)Inventions made by performing tasks other than the work assigned by the enterprise; (3) An invention made after he has retired or been transferred from his original work unit or within 1 year after the termination of the Labour or personnel relationship with his original work unit and with the task assigned to him by the original work unit. Now let's analyze how the law applies through a case.
Basic information
Our lawyer recently acted in such a case of second instance. This case is a patent right dispute between the plaintiff, Qingdao De COMPANY (hereinafter referred to as De Company), and the defendant, Chen. Chen served as the chief engineer in De company from September 20, 2017 to January 17, 2019. On January 21, 2019, Chen and the case outsiders Chen 1 and Chen 2 jointly applied to the CNIPA for a patent named "quick installation soluble bridge plug plugging tool and plugging method". The judgment of the first instance held that firstly, the application date of the patent involved was a few days after Chen’s resignation,and the invention was made by inferring from daily life experience during the duration of the employment relationship. Secondly, the employment contract agreed that Chen's responsibility is the technical management and coordination of product technology promotion and on-site construction operations. But the employment contract also specified that he was a chief engineer and had access to the plaintiff's products and technology. Thirdly, the patent involved is related to the technology held by the plaintiff and is an invention based on it. Finally, the first-instance court determined that the patent involved was a service invention and ruled in favor of the plaintiff. The patent involved belonged to the De company.
Our law firm filed an appeal to the Supreme Court after being entrusted by the defendant of the first instance ,Chen . After examination, the Court of second instance held that according to the current evidences, it cannot be proved that Chen was responsible to technology research in De Company. So accordingly, its claim that the patent involved is service invention cannot be supported. The reasons are as follows: firstly, the company shall provide evidence to prove that the patent r&d involved is Chen's own work or the task assigned by the company; secondly, the company failed to submit effective evidence to prove that the patent r&d involved was related to
Chen's own work or the task assigned by the company. Although Chen was employed by the De company as a chief engineer, but specifically responsible for product technology promotion and site construction of the technical management and
coordination, and no technical research and development responsibilities . In this case, no matter whether the patent involved is a company's related patent or product improvement invention, it cannot be identified as a service Invention. And last, Chen is a retired technical personnel, enjoying labor freedom and innovation freedom. Unless there are special provisions in the law or there is a clear agreement between
Chen and the company, it is not possible to determine whether the patent involved is a service invention and the ownership of the right simply based on the employment position of Chen and whether the patent involved is completed during the employment period. In the end, the Supreme Court supported the our lawyer's claim, reversed the judgment of the first instance, and rejected the company's claim.
case analysis
As for the determination of service invention in the above case, the court of first instance and second instance made opposite determination on whether the patent involved belonged to service invention. Because the first-instance court did not strictly follow the provisions of the patent law on service invention when determining that the patent involved belonged to service invention. In order to identify the patent involved as a service invention, evidence must be provided to prove that the r&d of the patent involved is related to the defendant's own work or the task assigned to him. The first-instance court simply concluded that the patent involved was a service invention based on Chen's position, the products and technologies he had contacted with the plaintiff, and the patent involved was completed during the employment period, which was not based on law.Therefore, the core of determining whether the patent right belongs to service invention is to determine whether the making of the patent involved is related to the employee's own work or the task assigned by the employer.
A considerable part of the patent right disputes are related to service inventions, and the service invention interpretation of the patent law is : an invention made in execution of the tasks of the enterprise to which it belongs or made by mainly the use of the material and technical conditions of the enterprise to which it belongs is a service invention.The Rules for the implementation of the Patent Law further explain service invention of performing the tasks of the enterprise and it mainly includes the following situations:(1)An invention made in the course of one's job; (2)Inventions made by performing tasks other than the work assigned by the enterprise; (3) An invention made after he has retired or been transferred from his original work unit or within 1 year after the termination of the Labour or personnel relationship with his original work unit and with the task assigned to him by the original work unit. Now let's analyze how the law applies through a case.
Basic information
Our lawyer recently acted in such a case of second instance. This case is a patent right dispute between the plaintiff, Qingdao De COMPANY (hereinafter referred to as De Company), and the defendant, Chen. Chen served as the chief engineer in De company from September 20, 2017 to January 17, 2019. On January 21, 2019, Chen and the case outsiders Chen 1 and Chen 2 jointly applied to the CNIPA for a patent named "quick installation soluble bridge plug plugging tool and plugging method". The judgment of the first instance held that firstly, the application date of the patent involved was a few days after Chen’s resignation,and the invention was made by inferring from daily life experience during the duration of the employment relationship. Secondly, the employment contract agreed that Chen's responsibility is the technical management and coordination of product technology promotion and on-site construction operations. But the employment contract also specified that he was a chief engineer and had access to the plaintiff's products and technology. Thirdly, the patent involved is related to the technology held by the plaintiff and is an invention based on it. Finally, the first-instance court determined that the patent involved was a service invention and ruled in favor of the plaintiff. The patent involved belonged to the De company.
Our law firm filed an appeal to the Supreme Court after being entrusted by the defendant of the first instance ,Chen . After examination, the Court of second instance held that according to the current evidences, it cannot be proved that Chen was responsible to technology research in De Company. So accordingly, its claim that the patent involved is service invention cannot be supported. The reasons are as follows: firstly, the company shall provide evidence to prove that the patent r&d involved is Chen's own work or the task assigned by the company; secondly, the company failed to submit effective evidence to prove that the patent r&d involved was related to
Chen's own work or the task assigned by the company. Although Chen was employed by the De company as a chief engineer, but specifically responsible for product technology promotion and site construction of the technical management and
coordination, and no technical research and development responsibilities . In this case, no matter whether the patent involved is a company's related patent or product improvement invention, it cannot be identified as a service Invention. And last, Chen is a retired technical personnel, enjoying labor freedom and innovation freedom. Unless there are special provisions in the law or there is a clear agreement between
Chen and the company, it is not possible to determine whether the patent involved is a service invention and the ownership of the right simply based on the employment position of Chen and whether the patent involved is completed during the employment period. In the end, the Supreme Court supported the our lawyer's claim, reversed the judgment of the first instance, and rejected the company's claim.
case analysis
As for the determination of service invention in the above case, the court of first instance and second instance made opposite determination on whether the patent involved belonged to service invention. Because the first-instance court did not strictly follow the provisions of the patent law on service invention when determining that the patent involved belonged to service invention. In order to identify the patent involved as a service invention, evidence must be provided to prove that the r&d of the patent involved is related to the defendant's own work or the task assigned to him. The first-instance court simply concluded that the patent involved was a service invention based on Chen's position, the products and technologies he had contacted with the plaintiff, and the patent involved was completed during the employment period, which was not based on law.Therefore, the core of determining whether the patent right belongs to service invention is to determine whether the making of the patent involved is related to the employee's own work or the task assigned by the employer.
