Key words civil/patent right ownership/service invention-creation/related invention-creation
Referee Points
When judging whether it belongs to the "invention-creation" related to the work undertaken by the original unit or the tasks assigned by the original unit as stipulated in Item 3, Paragraph 1, Article 12 of the Patent Law Implementation Rules, attention should be paid to maintaining the original unit, resigned employees and resigned employees. The balance of interests between the employee’s new employer shall be determined by comprehensively considering the following factors: first, the specific content of the original work undertaken by the former employee or the tasks assigned by the original unit; second, the specific circumstances of the patent involved and its relationship with the original job or The relationship between the tasks assigned by the original unit; third, whether the original unit has carried out technology research and development activities related to the patent involved, or whether the relevant technology has other legal sources; fourth, whether the obligee and inventor of the patent (application) involved Make a reasonable explanation for the research and development process or source of the patented technology.
Relevant laws
Article 6 of the Patent Law of the People's Republic of China
Article 12 of the Detailed Rules for the Implementation of the Patent Law of the People's Republic of China
basic case
Shenzhen Weibang Technology Co., Ltd. (hereinafter referred to as Weibang Company) is a high-tech company specializing in the R&D, manufacturing, sales and after-sales service of hospital intravenous fluid dispensing series robot products and related supporting equipment for dispensing centers. From February 2010 to July 2016, Weibang applied for a number of patents involving automatic dispensing equipment and dispensing devices. Among them, the No. 102847473A patent (hereinafter referred to as the 473 patent) applied by Weibang Company on September 4, 2012 is mainly used for the automatic configuration of medical solutions in the injection department.
Li Jianyi joined the production and manufacturing department of Weibang Company on September 24, 2012, and signed the "Shenzhen Labor Contract" and "Employee Confidentiality Contract" with Weibang Company, agreeing that Li Jianyi will be the director of the company's production and manufacturing department, and the main work It is responsible for the research and development of "Infusion Dispensing Robot" related products. During Li Jianyi's tenure, he signed the purchase application form of the R&D department in the name of the department manager, and signed on the review column of technical drawings stamped with "controlled documents". Peristaltic pump infusion needle", "peristaltic pump upper cover connection plate experiment", "assembly", "left gripper", "right gripper", "manipulator gripper 1", "manipulator gripper 2", etc., are related to the series design of automatic dispensing device picture. In addition, the work email provided by Weibang Company shows that Li Jianyi received the report on the R&D test situation by way of work email, arranged the test work and put forward corresponding requirements for the R&D test. And it can be seen from the content of the email that Li Jianyi has participated in the meeting and discussion of the research and development plan many times.
Li Jianyi and Weibang Company terminated the labor relationship on April 17, 2013. On July 12, 2013, Li Jianyi applied to the State Intellectual Property Office for an invention patent titled "Automatic Intravenous Drug Preparation Equipment and Swinging Turntable Dispensing Device" and patent number 201310293690.X (hereinafter referred to as the patent involved). Li Jianyi is the sole inventor of the patent involved. The main content of the technical solution of the patent involved is a drug dispensing device that uses robots to complete the compounding process of intravenous injection drugs. On February 5, 2016, Li Jianyi transferred the patent right involved in the case to Shenzhen Remote Intelligent Equipment Co., Ltd. (hereinafter referred to as Remote Company), which he holds. Before Li Jianyi joined Weibang Company, he had no experience or academic qualifications in the industry related to medical devices and equipment.
Weibang Company filed a lawsuit with the court of first instance on December 8, 2016, requesting: 1. Confirm that the invention patent right of the patent involved in the case belongs to Weibang Company; reasonable expenses of 30,000 yuan, and jointly bear the litigation costs.
referee result
Shenzhen Intermediate People's Court of Guangdong Province made a civil judgment (2016) Yue 03 Min Chu No. 2829 on June 8, 2018: 1. Confirm Weibang Company as the patentee of the patent involved; Weibang Company paid reasonable expenses of 30,000 yuan. After the judgment of the first instance was pronounced, Li Jianyi and Yuanyuan Company refused to accept it and appealed to the Higher People's Court of Guangdong Province. On January 28, 2019, the Higher People's Court of Guangdong Province made a civil judgment (2018) Yue Min Zhong No. 2262: the appeal was rejected and the original judgment was upheld. Li Jianyi and Yuanyuan Company refused to accept it and applied to the Supreme People's Court for retrial. On December 30, 2019, the Supreme People's Court made a civil ruling (2019) Supreme Court Minshen No. 6342, rejecting the retrial application of Li Jianyi and Yuanyuan Company.
Referee reason
The Supreme People's Court held that: The focus of the dispute in this case was whether the patent involved was an employee invention created by Li Jianyi during his work in Weibang Company.
Article 6 of the Patent Law stipulates: "Inventions and creations completed by performing the tasks of the unit or mainly using the material and technical conditions of the unit are service inventions and creations. The right to apply for patents for service inventions and creations belongs to the unit." Patent Law Implementation Rules No. Item 3 of Paragraph 1 of Article 12 further stipulates: "Inventions and creations made within one year after retirement or transfer from the original unit, or after the labor or personnel relationship is terminated, related to the work undertaken by the original unit or the tasks assigned by the original unit belong to the Service inventions and creations."

Invention and creation are complex intellectual labors, which cannot be separated from the investment or support of necessary capital, technology, R&D personnel and other resources, and the corresponding risks. When it comes to the determination of service inventions and creations related to resigned employees, it is necessary to maintain the legal rights of the original unit to the scientific and technological achievements that are indeed service inventions and creations, encourage and support innovation-driven development, and at the same time, it is not appropriate to apply The "relevant inventions and creations" stipulated in the third item of paragraph 1 of Article 12 are interpreted too broadly, which leads to undue restrictions on the normal flow of R&D personnel in the absence of clear legal provisions or non-competition agreements and other contractual agreements , or restrict R&D personnel from legally participating in or carrying out new technology R&D activities in new units. Therefore, when judging whether the invention-creation involved in the case belongs to the "relevant invention-creation" stipulated in Item 3, Paragraph 1, Article 12 of the Patent Law Implementation Rules, attention should be paid to maintaining the relationship between the original unit, the resigned employee, and the new employer of the resigned employee. For the balance of interests, the following factors should be considered comprehensively: First, the specific content of the original work undertaken by the resigned employee in the original unit or the tasks assigned by the original unit, including job responsibilities, authority, access to, control, and access to technical information related to the patent involved in the case, etc. The second is the specific circumstances of the patent involved, including its technical field, technical problems to be solved, the purpose and technical effect of the invention, the scope of protection limited by the claims, the "substantive characteristics" of the patent involved compared with the existing technology, and the relationship between the patent involved and the existing technology. The relationship between the work of one's own job or the tasks assigned by the original unit. The third is whether the original unit has carried out technology research and development activities related to the patent involved in the case, or whether it has a legal source for the relevant technology. Fourth, whether the right holder and inventor of the patent (application) involved in the case can provide a reasonable explanation for the R&D process or technology source of the patent involved in the case. Relevant factors include the complexity of the technical solution of the patent involved in the case, the required R&D investment, and Whether it has the corresponding knowledge, experience, skills or material and technical conditions, whether there is evidence to prove that it has carried out relevant research and development activities, etc.
Combining the relevant facts ascertained by the first and second instance courts of this case and the relevant evidence submitted by the applicant for retrial, focusing on the aforementioned four factors, the focus of the dispute in this case is determined as follows:
First of all, about the specific content of Li Jianyi's own work or assigned tasks during his tenure in Weibang Company. First, Li Jianyi served as the manufacturing director during his tenure in Weibang Company, and was directly engaged in the research and development management of dispensing equipment and dispensing devices. In the application for retrial, it also recognized that it had engaged in "research and development management work". Second, during his tenure at Weibang, Li Jianyi, in the name of the department manager, signed the purchase application form of the R&D department, and reviewed a number of technical drawings that were closely related to the patented technology involved and stamped with "controlled documents". Sign the column. Third, Li Jianyi has participated in Weibang's internal meetings or discussions related to the research and development of automatic drug dispensing equipment and dispensing device technology for many times. He also received reports on research and development testing by email, arranged testing work, and put forward corresponding requirements for research and development testing. In summary, according to Li Jianyi’s own work or assigned tasks during his tenure in Weibang Company, he can directly contact, control and obtain technical information closely related to the research and development of automatic drug preparation equipment and dispensing devices within Weibang Company, and Such information does not represent ordinary knowledge, experience or skill in the art. Therefore, Li Jianyi's own work or assigned tasks in Weibang Company are closely related to the patented technology involved. This court does not support Li Jianyi’s reasons for applying for retrial, such as that he only conducts R&D management and does not participate in Weibang’s research and development of intravenous drug dispensing devices. .
Secondly, the specific situation of the patent involved in the case and its relationship with Li Jianyi's own work or assigned tasks. First, the patent involved in the case involves "automatic intravenous drug preparation equipment and a swinging turntable dispensing device", and the technical problems addressed are: "1. The pharmacist's hands are very labor-intensive and can only work for a short time; 2. Since the skills of each pharmacist are different and the location of dispensing cannot be fixed forcibly, the properties of the prepared medicine are unstable; 3. The chemotherapy medicine is more harmful to the health of the pharmacist." The technical effect achieved is: "The present invention uses robots to complete intravenous injection In the whole preparation process of the medicine, mechatronics is used to control the accurate dosage of the prepared medicine, which improves the quality of the medicine preparation; the medical staff only need to put the pre-prepared medicine bottle into the turntable work disk and the mother solution rack, and finally remove the prepared mother solution bottle , which greatly reduces the labor intensity of the hands of medical staff; for the preparation of medicines that are harmful to the human body (such as chemotherapy drugs), since the pharmacist does not need to directly touch the medicine bottle, the use of isolation tools to clamp and remove the medicine bottle can be greatly improved. reduce the health damage of chemotherapy liquid to the human body." In claim 1 of the patent authorization announcement involved in the case, it mainly includes a base, a turntable workbench, several medicine bottle clamps for fixing medicine bottles, a tool seat, a turntable seat, and a turntable. Transmission mechanism and turntable motor, backlight and visual sensor, robot, clamp body, infusion pump, infusion tube, needle holder, needle chuck, front and rear swinging plate, lifting mechanism on both sides of the turntable table near the rear and other parts. Second, the 473 patent applied by Weibang Company on September 4, 2012 is titled "Dispensing Method and Automatic Dispensing System for Automatic Dispensing System", and the technical problem it aims at is: "The methods of preparing medicines in hospitals are all passed through medical care. Manual operation by personnel.... During the operation, the work intensity of the medical staff is high, and some drugs are toxic, which poses a greater threat to the safety of the medical staff." The purpose of the invention is: "to overcome the above-mentioned deficiencies in the prior art, and to provide a The dispensing method of the automatic dispensing system and the automatic dispensing system can realize automatic dispensing, and the medical staff does not need to manually prepare the liquid medicine, which greatly reduces the labor intensity of the medical staff and is conducive to ensuring the health and safety of the medical staff." The technical effects achieved are: "Provide a dispensing method of an automated dispensing system and an automated dispensing system, which can quickly complete the preparation of multiple groups of medicinal liquids, improve the efficiency of dispensing, greatly reduce the labor intensity of medical staff, and help protect the health and safety of medical staff. In the description of the 473 patent, it also discloses "medicine liquid input shaker device", "clamping parts", "transfusion hose filling and transferring and medicinal liquid distribution device", "bottle breaking device for breaking ampoules" and "mother liquid bottle". The specific structure and drawings of the clamping device, "mother solution bottle", "input carousel that can accommodate multiple medicine bottles at a time", etc. Comparing the patent involved in the case with the 473 patent of Weibang Company, the technical problems solved, the purpose of the invention, and the technical effect solved by the two are basically the same, and the technical solutions of the two are highly related. Based on the review opinions of the patent involved and the search of cited patents, the court of second instance determined that the 473 patent was a document that could independently affect the novelty or inventiveness of the claims of the patent involved, which was not inappropriate. Third, in the drawings related to Li Jianyi's job provided by Weibang Company, it involves "new cover of input module", "assembly of compound needle in sand nest", "infusion needle of peristaltic pump", "experiment of connecting plate on the upper cover of peristaltic pump"" Assemblies", "left gripper", "right gripper", "manipulator gripper 1", "manipulator gripper 2" and other parts closely related to the patent involved in the case shall be stamped with the "Controlled Documents" chapter on the relevant drawings, and in the "review "The column is signed by Li Jianyi. Fourth, in the e-mail exchanges between Li Jianyi and the relevant staff of Weibang Company, the content of the discussion directly involved the research and development activities closely related to the patented technical solutions involved in the case, such as the turntable gripper, the mother liquor feeding scheme, and the breaking test of the ampoule bottle. To sum up, the patent involved in the case is closely related to Li Jianyi's own work or assigned tasks in Weibang Company.
Thirdly, Weibang's technical research and development in the field of automatic intravenous drug preparation equipment is ongoing. Weibang Company was established in 2002. Its business scope includes research and development, manufacturing, sales and after-sales service of hospital intravenous fluid dispensing series robot products and related supporting equipment for fluid dispensing centers. From February 2010 to July 2016, he applied for more than 60 patents related to medical equipment, methods and systems, of which 44 patents were applied before Li Jianyi joined Weibang Company, and many patents involved automatic Dispensing device. Therefore, this court does not support Li Jianyi's claim that Weibang Company has completed the research and development of intravenous drug dispensing devices before he joined the company, and the patent involved in the case is not a service invention.
Finally, whether Li Jianyi and Long-distance Company can provide a reasonable explanation for the research and development process or technology source of the patent involved. According to the specification of the patent involved in the case, the patent involved in the case involves "automatic intravenous drug preparation equipment and a swinging turntable type dispensing device". There are 13 pages of drawings and about 60 components. The technical scheme is complex and difficult to develop. Li Jianyi, as the sole inventor of the patent involved in the case, applied for the patent involved in the case alone in his own name less than 3 months after leaving Weibang Company, and could not make a reasonable explanation for the process of technology research and development or the source of the technology, which is not in line with common sense. Moreover, according to the determination of the court of second instance, as well as the printout of the patent search web page and self-made patent status summary table submitted by Li Jianyi in the first instance, Li Jianyi, as the inventor, first applied for the patent involved in the case on July 12, 2013 and No. 201320416724. Prior to this, the evidence in this case could not prove that Li Jianyi had the knowledge level and ability to independently develop the technical solutions involved in the patent.
In summary, considering the relevant facts of this case and the relevant evidence submitted by Li Jianyi and Yuanyuan Company in the retrial, it was not inappropriate for the courts of the first and second instance to determine that the patent involved was an employee invention created by Li Jianyi during his work in Weibang Company. Neither Li Jianyi nor Long-distance Company's grounds for retrial application can be established.