如何应对专利权属纠纷问题

Disputes over the ownership of patent application rights, patent rights, and inventor’s attribution rights are common types of patent ownership disputes.

The case disclosed in Supreme People’s Court Notice No. 1258 (2020) can provide us with some inspiration, and companies should pay attention when cooperating with others.

The “inventor” in this case is a teacher from a certain university, who is the contact person in the “technology development (commission) contract” signed between the university and the “plaintiff company”; The inventor personally also signed a “consulting service contract” with the plaintiff company. From May 2011 to June 2012 (during the dispute period), there were email exchanges between the inventor and the plaintiff company discussing the content of patent technology solutions. Afterwards, the inventor, as the applicant, applied for a patent for the technology containing the relevant invention points in the disputed email correspondence, and later 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. This case was tried by two levels of courts and ultimately rejected the plaintiff company’s lawsuit request.

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 provided the inventor with monthly salary and housing allowance, paid social security, reimbursed travel expenses, and listed the inventor as the new product development director and product manager, there were also weekly reports and exchanges in their work. However, the Supreme Court held that the inventor’s identity as a university teacher has not changed; The above evidence is insufficient to establish a labor relationship or temporary work relationship in the sense of “service invention” between the inventor and the plaintiff company, and cannot serve as a legal and factual basis for the plaintiff company to claim ownership of the patent in question on the grounds of service invention.

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 they do not have the right to dispose of the inventor’s labor, the relevant inventions and creations of the inventor do not belong to service inventions and creations.

按照专利法规定,合作或委托研发过程中的专利(申请)权应以合同约定为准, 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 content of the “Enterprise Intellectual Property Management Specification GB/T29490” (national standard) and “Innovation Management System ISO56001” (international standard) to independently improve internal management.

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Shanghai Bulu Intellectual Property Agency LLP

 

 

上海布路知识产权代理事务所(特殊普通合伙)

 

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