Patent Inventorship Dispute Relating to Services

Civil Case

Invention Patent

–Scope of Patent Protection

[Headnotes]

Under the Implementing Regulations of the Patent Law of China, an invention relating to the service at former employment made within one year after termination of employment is a service invention. An inventive creation made with inventor's knowledge from former employment on basis of special technical information, technical deficiencies, and needs for technical improvements shall be deemed as relating to the service of former employment, and is therefore, a service invention.

[Synopsis]

First Instance: (2016) Su 05 MinChu No. 407

Second Instance: (2017) SuMinZhong No. 2066

Appellant (Defendant in original instance): SIP Mechanical Technology (Taicang) Co., Ltd (SIP), Zheng Qinghao

Appellant (Third party in original instance): Du Zhongkai

Appellee (Plaintiff in original instance): Rittal Electro-Mechanical Technology (Shanghai) Co., Ltd. (Rittal)

SIP filed a patent application with the Patent Office on May 26, 2014 for "Profile for Cabinet Frame" (Application No. 201410224711.7) with Du Zhongkai and Zheng Qinghao as inventors. The invention relates to a profile for cabinet frame, and the inventors Du and Zheng both had worked at Rittal where Du was the product development engineer, and Zheng was managing director. On October 29, 2013, Zheng resigned from Rittal, and as an initial investor, he set up SIP. On March 31, 2014, Du resigned from Rittal and subsequently joined SIP. On September 1, 2015, Du registered as a shareholder of SIP.

Rittal filed the lawsuit in court seeking declaration that (1) Du Zhongkai is the inventor of Patent No. 201410224711.7 invention patent; (2) Rittal is entitled to invention patent application No. 201410224711.7; (3) SIP and Zheng Qinghao be liable for damages and reasonable expenses of 30,000 Yuan.

The Intermediate People's Court of Suzhou held in first instance that Zheng, though claiming to have contributed to the innovative work of organization, conception and detail planning, failed to present any evidence, and concluded that Zheng was not an inventor of the patent at issue.

The patent at issue was applied within one year after Du left Rittal and should be deemed as a service invention. The evidence introduced at trial by Rittal showed that Du was involved in technical work at Rittal, and had conducted relevant work in the name of Rittal. The subject matter of the patent at issue is related to Du's work at Rittal, and that the parent company of Rittal also achieved some fruit in design, and research and development on the technology associated with the patent at issue while Du was working at Rittal. Moreover, the evidence adduced by SIP, Du and Zheng failed to show that the patented invention was achieved by employing SIP material and technical conditions. In sum, it should be concluded that the invention at issue was made in relation to Du and Zheng's services at Rittal.

In conclusion, the court of first instance determined that the inventor of the patent at issue was Du Zhongkai, and the patentship belongs to Rittal, and dismissed the other claims of Rittal. SIP, Du and Zheng appealed to Jiangsu High People's Court, the second instance dismissed the appeal and affirmed the original judgment.

[Typical Significance]

It is difficult to define the service range of a former employee in the judgement of whether the invention and creation made by the employee within one year after dismission is a service invention. The court concludes in combination with e-mail evidence that Du accumulated profound knowledge and understanding during his work in relation to subway industry's cabinet standards, special needs for the profile, as well as existing deficiencies of current products, etc., which formed the basis of the invention at issue, therefore a service invention. The judgment broadens the caliber for protecting corporate interests, and delineates the range for protecting corporate innovation and the proper regulation of exiting employees.