Professional Interpretation

Abstract: When confirming whether patent rights of inventions in urban rail transit industry belongs to service inventions, the completion time of technical scheme and the scope of inventor’s duties are important legal conditions to meet the requirements of service inventions. The Urban Rail Transit team of Beijing Docvit Law Firm will introduce a case to evaluate the patent rights of urban rail transit inventions.

Ⅰ. Case introduction

Basic facts: In 1983, Mr. Tao started to work in a prefabricated component factory in Beijing. After the establishment of Beijing Great Wall Foundation Company (now is Beijing Metro Foundation Engineering Company) which belonged to the prefabricated component factory, Mr. Tao also took a position of manager in this company. Based on years of experience in foundation engineering construction, in 1984, Mr. Tao completed the “Scheme for Forming Holes into Piles under Geological Conditions such as Flowing Sand, Groundwater and Boring” (i.e. the patented “Drilling and Grouting Pile Method” technical scheme). Although that technical scheme had not been tested, it already had the practicability required by Patent Law.

In September 1984, the foundation construction of Beijing Science and Technology Center Building encountered difficulties. After the foundation construction project was undertaken by Mr.Tao on behalf of the prefabricated component factory, two piles were hit according to the “Drilling and Grouting Pile Method” technical scheme. After the test was fully qualified, the technical scheme was successfully applied for the first time. Later, Mr.Tao applied and obtained a non-service invention patent. At the end of 1988, Beijing Metro Foundation Engineering Company sued to confirm that the patent for the invention was owned by the entity.

The trial result of the court of first instance: Beijing Intermediate People's Court held that: Mr.Tao had been engaged in foundation construction for a long time, although his experience played a decisive role in the conception and completion of “Drilling and Grouting Pile Method” technical scheme, the patented invention was tested by equipment which was specifically purchased by Beijing Metro Foundation Engineering Company. Accordingly, Beijing Intermediate People's Court ruled that the patent right for the invention of “Drilling and Grouting Pile Method” technical scheme belonged to Mr.Tao and Beijing Metro Foundation Engineering Company.

The trial result of the court of second instance: Beijing High People's Court held that: the“Scheme for Forming Holes into Piles under Geological Conditions such as Flowing Sand, Groundwater and Boring”, which was provided by Mr. Tao, was the same as the patented “Drilling and Grouting Pile Method” technical scheme. The completion date of the technical scheme was April 16, 1984. According to the facts, when confirming the patent right of the invention, the completion time of the technical scheme and whether it was a part of work should be considered to see if it conformed to the requirements of service inventions stipulated in Patent Law.

Firstly, Mr. Tao was the director of the prefabricated component factory, and the research and invention of foundation construction should not be regarded as his own work in the factory.

Secondly, the “Drilling and Grouting Pile Method” technical scheme was not a task assigned by the factory. The facts showed that the scientific research mission issued by Beijing Metro Foundation Engineering Company was independent of Mr. Tao's invention. So it did not belong to the situation of “in the execution of the tasks of the entity” as stipulated by law.

Thirdly, in the process of completing the invention, Mr. Tao mainly used his rich experience in foundation engineering construction for several decades, not mainly on the material conditions of the entity. The two test piles in the site of Beijing Science and Technology Center Building was the implementation of “Drilling and Grouting Pile Method” technical scheme, which was obviously different from the test of technical conception before the completion of the technical scheme.

To sum up, the “Drilling and Grouting Pile Method” technical scheme was neither an invention completed by Mr. Tao to carry out his own task, nor an invention made mainly by using the material conditions of the entity. Therefore, the “Drilling and Grouting Pile Method” technical scheme did not belong to the service invention under Patent Law.

Judging bases: Article 6 of Patent Law of the People's Republic of China provides: An invention made by a person in the execution of the tasks of the entity for which he works or made by him by taking advantage of the material and technical means of this entity shall be a service invention. The right to apply for patenting a service invention shall remain with the entity. After the application is approved, the entity shall be the patentee.

For any non-service invention, the right to apply for a patent shall remain with the inventor or designer. After the application is approved, the inventor or designer shall be the patentee.

For an invention made by a person by taking advantage of the material and technical means of the entity where he works, if there is a contract between the entity and the inventor or designer regarding the right to apply for patent and the ownership of the patent, the contractual stipulations shall prevail.

Article 12 of Detailed Rules for the Implementation of the Patent Law of the People's Republic of China provides: Service invention-creation made by a person in execution of the tasks of the entity to which he belongs mentioned in Article 6 of the Patent Law means any invention-creation made:

(1) in the course of performing his own duty;

(2) in execution of any task, other than his own duty, which was delivered to him by the entity to which he belongs;

(3) within 1 year of his retirement, removal from office, or termination of the employee or personnel relationship, provided that the invention-creation relates to his own duty in the entity where he worked or relates to a task assigned to him by the entity.

“The entity to which he belongs” mentioned in Article 6 of the Patent Law may also be a temporary entity for which the person works; “material resources of the entity” mentioned in Article 6 of the Patent Law shall include the entity's money, equipment, spare parts, raw materials, or technical data which are not to be disclosed to the public.

Ⅱ. Conditions to be met for service inventions

The ownership of inventions should first be settled in accordance with the agreement in labor contract. In the absence of an agreement, the following conditions need to be met to confirm service inventions:

1. Identity of inventor

Before completing inventions, the inventor should have an employment relationship with the entity, including regular employee, temporary worker, seconded and part-time personnel.

2. Scope of inventor's duties

Within the scope of inventor's own work or the tasks assigned by the entity, the inventions, made during the period of service and within one year of separation, are service inventions, no matter when they are made (working hours or spare time).

3. Completion time of inventions

The completion time of inventions is also an important standard for determining service inventions, including finishing time and transformation time.

4. Using entity's material and technical means

In order to complete inventions, the entity provides funds, equipment, components, raw materials or non-public technical information and other resources. Moreover, the above-mentioned material and technical means provided by the entity play an indispensable role in the completion of inventions.

5. Agreement on the ownership of inventions

For an invention made by a person by taking advantage of the material and technical means of the entity where he works, if there is a contract between the entity and the inventor or designer regarding the right to apply for patent and the ownership of the patent, the contractual stipulations shall prevail.

III. Conclusion

Urban rail transit industry is faced with a unique variety of engineering site conditions. The system of intellectual property rights can promote the development of technology. The system of non-service invention in patent law recognizes the creativity of individuals, and the system of service invention allows the entity to provide encouragement to the individual inventors. The law encourages innovations through this patent system and ensures that the intellectual achievements of urban rail transit industry are enriched.