How to Avoid Patent Ownership Disputes in R&D Contracts
Disputes over the ownership of patent application rights, patent rights and inventor’s authorship rights are some of the more common types of patent ownership disputes.
The case No. 1258 of the Intellectual Property Court Civil Final Judgment (2020) of the Supreme People’s Court of P.R.C. (SPC) can give us some inspiration, and companies should pay attention when cooperating with others.
The “inventor” in this case is a university teacher and the contact person in the “Technology Development (Commission) Contract” signed between the university and the “Plaintiff Company”. The inventor also signed a “Consulting Service Contract” with the Plaintiff Company. From May 2011 to June 2012 (during the dispute), the inventor and the Plaintiff Company had email exchanges discussing the content of the patent technology solution. Afterwards, the inventor himself applied for a patent for the technology containing the relevant invention points in the emails during the dispute period, and then changed the patent applicant to the “Defendant Company”. Therefore, the Plaintiff Company filed a lawsuit, requesting that the patent in question be awarded to the Plaintiff Company. The case was heard by two courts, and the Plaintiff Company’s lawsuit was ultimately rejected.
此时有人会问，明明是原告公司出钱委托的技术开发，最后为何判决原告败诉呢？
判决主要依据双方签订的合同。发明人和原告公司之间共存在两份合同，而 这两份合同中，既没有明确发明人与原告公司之间的工作关系（即没有证据证明发明人与原告公司之间的工作关系是劳动关系或是临时工作关系），也没有基于该工作关系形成的相关技术成果的归属的意思表达。
Although the plaintiff company paid the inventor a monthly salary and housing allowance, paid social security, reimbursed travel expenses, and listed the inventor as the new product development director and product manager, and there were weekly reports at work, etc. However, the SPC believed that the inventor’s identity as a university teacher had not changed; the above evidence was not sufficient to determine that there was a labor relationship or temporary working relationship between the inventor and the plaintiff company in the sense of “employment invention”, and could not be the legal and factual basis for the plaintiff company to claim that it was a work invention in this patent ownership dispute case.
发明人与单位之间存在劳动关系或临时工作关系，是认定职务发明的前提。劳动关系或临时工作关系的判断标准在于单位 是否取得了对发明人的劳动支配权，包括完成发明创造的创造性劳动在内的劳动支配权。 If there is only a general cooperative relationship between the unit and the inventor and the unit does not have the labor control rights over the inventor, the inventor’s invention does not constitute a work-related invention.
According to the “Patent Law of the People’s Republic of China”, the patent (application) right in the process of cooperative or commissioned research and development shall be based on the contractual agreement. 没有约定的，完成发明创造的人可以作为专利申请人。
启示
此案例让我们警醒：
一、签订合同时，一定要约定好知识产权的归属，否则，再热的心肠，也不能改变法律的规定，造成花钱又吃亏的尴尬局面。
2. Enterprises and other market entities that want to engage in innovative research and development can refer to the contents of “《企业知识产权管理规范GB/T29490》（国家标准）” and “《创新管理体系ISO56001》（国际标准）” to independently improve internal management.
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