table of contents
1. The traditional defense of patent ownership disputes
(1) When the patentee of the disputed patent is an individual, the defendant (patentee) adopts the defense of "non-professional work".
(2) If the patentee of the disputed patent is an entity, the defendant (patentee) adopts the defense that "the inventor is an employee of the entity".
(3) The use of "substantive features" to make a defense
2. The latest type of defense for patent ownership disputes-prior art defense
3. The inspiration of the "prior art defense theory" to the industry
(1) The applicable scenarios of "prior art defense" have been expanded
(2) Comparing patent ownership disputes with patent infringement disputes enriches the theory of patent infringement
(3) Breaking through the "dual-track system" of the patent system
IV. Conclusion
According to the general theory, the legal relationship of patent ownership disputes is essentially the same as that of general infringement of property rights, but it is only a hat of patent rights, but this hat cannot change the attribute of patent rights as a property right, which is equivalent to a technological achievement. There are only two sources for the acquisition of this technical achievement, one is independent research and development to constitute the original acquisition, and the other is the succession through legal means. As for whether the achievement is patented, it is entirely up to the owner of the achievement to dispose of it. Mainland law does not require the right holder to apply for a patent. In other words, regardless of whether the work is patented or not, the right holder is the owner of the technical achievement, the "owner". Therefore, in the trial of a patent ownership dispute, the party claiming that the patent right belongs to itself is the plaintiff and proves by adducing evidence that it is the owner of the achievement, and the other party has no right to apply for a patent for the achievement, so it requests the court to award the patent right to the original owner. As for whether the patent right itself is valid, it is not asked.
On November 27, 2023, the Supreme People's Court issued a second-instance judgment rejecting the appeal and upholding the original judgment in the case of a patent ownership dispute between the appellant Xiamen Zhuoyuan Dinghui Industry and Trade Co., Ltd. and the appellee Xiamen Mizi Water Purification Technology Co., Ltd. (hereinafter referred to as the "Zhuoyuan case") (hereinafter referred to as the "Zhuoyuan case"). The second-instance judgment summarized the legal issues involved in the case as "prior art defense" in the main points of the adjudication, thus establishing a new type of defendant's defense in patent ownership disputes, and once again refreshing the trial thinking of patent ownership disputes.
This article first briefly reviews the form of the defendant's defense in previous patent ownership disputes, and then analyzes the enlightenment brought to the industry by the Supreme Court's introduction of a new type of "prior art defense" in patent ownership disputes.
1. The traditional defense of patent ownership disputes
In a patent ownership dispute, the plaintiff claimed that the patent in question was improperly possessed by the current patentee, and the current patentee was the defendant to file a patent ownership dispute lawsuit with the people's court. In order to deny the plaintiff's claim, the defendant usually adopts the following forms of defense:
(1) When the patentee of the disputed patent is an individual, the defendant (patentee) adopts the defense of "non-professional work".
For example, in the first patent ownership dispute case in China, Tao Yi v. Beijing Metro Foundation Engineering Company[2], he went through the administrative procedures of the Beijing Municipal Patent Administration, the first-instance procedures of the Beijing Intermediate People's Court, and the second-instance procedures of the Beijing Higher People's Court; Tao Yi worked as an engineer in the Sixth Detachment of the Infrastructure Engineering Corps of the Chinese People's Liberation Army before January 1983, and then transferred to the component factory as the director until his departure in 1988. "Drilling and grouting pile method" belongs to the research and invention of foundation construction, and the completion time is during Tao Yi's tenure as the director of the component factory. In the three procedures, all revolve around whether the invention patent of "drilling and grouting pile method" made by the inventor Tao Yi belongs to "non-professional work", if it belongs to "non-professional work", then the invention is Tao Yi's non-service invention and should belong to Tao Yi personally, and if it belongs to the "own work" of performing duties, the invention is a service invention and should be owned by the unit.
The Beijing Intermediate People's Court held that although Tao Yi played a decisive role in the conception of the "drilling and grouting pile forming method" and completed the technical content of the patent, in the process of testing the patented technology, the defendant used the equipment specially purchased for this purpose, and accordingly determined that the invention patent of the "drilling and grouting pile forming method" belonged to the plaintiff Tao Yi and the defendant subway foundation engineering company.
On whether it is a "one's own job" in the performance of duties The Beijing Higher People's Court held that, first, the patented technical solution involved in the case did not belong to the business scope of the component factory and should not be regarded as the work of the director of the component factory; second, the patented technical solution involved in the case was researched by Tao Yi on the basis of his years of work experience in foundation engineering, and did not belong to the task assigned by the unit; third, in the process of completing the invention, Tao Yi mainly relied on his own decades of experience in the construction of foundation engineering, and did not mainly use the material conditions of the unit. In summary, the Beijing High Court ruled that the patent involved in the case was not a service invention, and the patent ownership belonged to Tao Yi.
(2) If the patentee of the disputed patent is an entity, the defendant (patentee) adopts the defense that "the inventor is an employee of the entity".
When judging the ownership of rights, the people's courts mainly focus on the issue of who is the actual inventor. Based on the identity of the actual inventor, determine whether it is a service invention in accordance with relevant laws and regulations, and then confirm the ownership of the patent in question. If the actual inventor belongs to the plaintiff's employer or is a former employee of the plaintiff's employer, but his resignation is less than one year from the date of application of the patent in question, the judgment shall be vested in the plaintiff's unit.
In the case of Shenzhen Xinwei Technology Co., Ltd., Mo Lianghua, Liu Xuechun and Duntai Technology (Shenzhen) Co., Ltd.[3], the court focused on "who is the actual inventor of the application in question" After trial, the court found that the actual inventor of the application involved in the case was Mo Lianghua, and the inventor Liu Xuechun shown on the application was not the actual inventor of the application in question, and that Mo Lianghua had circumvented the law and submitted a number of patent applications with Liu Xuechun as the inventor. The invention-creation related to his own work during his tenure in Duntai Company shall be a service invention-creation, and the relevant rights and interests shall be attributed to Duntai Company.
(3) The use of "substantive features" to make a defense
In the patent ownership dispute case between Shanghai Dongyu Metal Graphite Co., Ltd. and Yuan Qingyang[4], the Shanghai Intellectual Property Court of first instance concluded the focus of the dispute: whether the technical characteristics of the pickling and trimming coiler designed by the plaintiff for Pangang Company were the same as those of the patent in question.
The Shanghai Intellectual Property Court held that:
"In the claims of the patent in question, it is clear that the automatic threading of the device is realized through the trimming guide pipe, which is equipped with a base plate turning mechanism. The specification also clarifies that the technical problems that need to be solved in this patent include the problem that the trimming head is clamped automatically by the reel at the beginning of coiling, and that the trimming edge cut by the trimming guide pipe can be guided to the reel and clamped by setting the trimming guide pipe, and then the guide pipe leaves its original position through the bottom plate turning mechanism, so that it will not affect the subsequent coiling. It can be seen that the trimming guide pipe and the bottom plate turning mechanism are the main invention points of the patent in question. In view of the fact that the plaintiff admitted in the trial that the pickling and trimming coiler designed by the plaintiff did not have a trimming guide pipe and a bottom plate turning mechanism, and even if the automatic material guide function can be realized by using the clamping device as the plaintiff said, it is a completely different technical solution from the patent in question, so this court held that the technical solution of the pickling and trimming coiler designed by the plaintiff for Pangang Company was different from the patent in question, and the plaintiff claimed that there was no factual and legal basis for the patent right of the patent in question. ”
The Shanghai High People's Court of the second instance held that:
"According to the general principle of the patent system, even if the later technical solution fully contains the prior patent, it can still be patentable if it meets the substantive conditions for patentability. Now that the patent in question has been authorized, it should be presumed that it has the necessary conditions for obtaining patent grant, such as novelty, practicability, and inventiveness, relative to the prior art, and it is not contrary to the Patent Law for Yuan Qingyang to become the patentee of the patent in question as the inventor of the invention in question. If Dongyu Company believes that Yuan Qingyang should not obtain the patent right involved in the case, it can solve the problem through the procedure of invalidating the patent right. ...... The court held that, compared with the technical scheme designed by Dongyu Company for Pangang Company, the technical features of the trimming guide pipe and the bottom plate turning mechanism had been added, and the two technical solutions were no longer the same technical scheme. The public has the freedom to invent and create based on the prior art, and if the subsequent invention and creation has the substantive characteristics of patentability compared with the prior art, the patent can be granted, which is in line with the law of technological innovation and is also recognized by the current patent system. Now that the patent involved in this case has been authorized, this court can presume that it has the substantive characteristics of the patent, and further believes that it is not the same as the pickling and trimming coiler designed by Dongyu Company for Pangang Company. ”
2. The latest type of defense for patent ownership disputes-prior art defense
In the Zhuo Yuan case, the Supreme Court held that the technical solution of the patent in question had been disclosed before the application date, and that the patent in question should not be granted a patent, so the patent in question should not be awarded to the plaintiff. This is the "prior art defense". See the refereeing points below for details.
Summary of the case
3. The inspiration of the "prior art defense theory" to the industry
(1) The applicable scenarios of "prior art defense" have been expanded
In the context of the patent law in mainland China, the prior art defense refers specifically to the provisions of Article 67 of the Patent Law, which is one of the defenses in patent infringement disputes, which is limited to comparing the accused solution with the prior art, and the legal theory behind it is that the public has the freedom to implement the prior art solution.
However, in the Zhuo Yuan case, the Supreme People's Court clarified that the legal issue of the patent ownership dispute case was the "prior art defense", and included the comparison between the patent involved in the case and the prior art into the "prior art defense", expanding the application of the prior art defense from patent infringement disputes to patent ownership disputes, thereby expanding the application scenarios of "prior art defense".
(2) Comparing patent ownership disputes with patent infringement disputes enriches the theory of patent infringement.
Patent infringement in the context of patent law in mainland China only refers to the situation of "exploitation of the patent without the permission of the patentee", which is patent infringement in the narrow sense, and the prior art defense is limited to the use of patent infringement disputes in the narrow sense. However, the judgment in this case includes the ownership dispute into the "big pocket" of patent infringement in a broad sense, thereby enriching the theory of patent infringement and enabling the prior art defense to be applied to the patent ownership dispute.
(3) Breaking through the "dual-track system" of the patent system
The "dual-track system" of the patent system means that under the principle of division of powers, the court is responsible for examining civil patent disputes, while the examination of the validity of patent rights is exclusive to the State Intellectual Property Office, the patent administrative organ of the State Council.
In this case, the Supreme Court accepted the "prior art defense" in the patent ownership dispute, which not only compared the patent in question with the prior art, but also compared the patent in question with the plaintiff's prior technological achievements, so that the court's judicial review had multiple perspectives It also curbs the impulse of the current patentee to initiate infringement lawsuits, and practices the Supreme People's Court's concept of active justice, 'grasping the front end, curing the disease', win-win, multi-win, win-win, case concluded, and political communication and other judicial concepts for the people, and constantly promotes the modernization of court trial work, so as to save judicial resources and improve trial efficiency.
IV. Conclusion
This article reviews the traditional adjudication rules for patent ownership disputes, and introduces a new type of defense confirmed by the Supreme People's Court in the Zhuo Yuan case, namely the prior art defense. It is a little regrettable that there was a logical error in the Zhuo Yuan case that "the existing evidence in this case can prove that the patent in question is a prior art and should not be granted a patent, so the patent in question should not be awarded to Zhuoyuan Company in this case", in which "the patent in question is a prior art and should not be granted a patent" and "the patent in question should not be awarded to Zhuoyuan Company in this case"; If Zhuoyuan Company believes that the patent involved in the case should not be owned by Mitz Company, it can resolve it through invalidation procedures or other legal means."
In fact, the invalidation procedure can only solve the issue of the validity of the patent, but cannot determine the question of who belongs to the technical solution (whether it is applied for or not) under the "hat" of the patent right, and the "other legal channels" can only be to raise a dispute over the ownership of the patent right, which the plaintiff in this case has already done. However, we still appreciate the SPC's spirit of courage in exploration, and look forward to the SPC's review of trial experience and active exploration of a multi-angle dispute resolution mechanism.
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[1] See (2023) Supreme Court Zhi Min Zhong No. 1956 Civil Judgment.
[2] Tao Yi v. Beijing Metro Foundation Engineering Co., Ltd., a dispute over the ownership of invention patents, Gazette of the Supreme People's Court, No. 3, 1992.
[3] Shenzhen Xinwei Technology Co., Ltd., Mo Lianghua, Liu Xuechun and Duntai Technology (Shenzhen) Co., Ltd., a dispute over the ownership of patent application rights: Supreme People's Court (2021) Zui Gao Fa Zhi Min Zhong No. 524 Civil Judgment.
[4] Shanghai Dongyu Metal Graphite Co., Ltd. v. Yuan Qingyang, a patent ownership dispute, Shanghai Intellectual Property Court (2015) Hu Zhi Min Chu Zi No. 568 Civil Judgment, Shanghai High People's Court (2016) Hu Min Zhong No. 171 Civil Judgment, Supreme People's Court (2016) Zui Gao Fa Min Shen No. 2905 Civil Ruling.
Author: Lin Ye
Editor: Sharon