Point of View | On the Protection of Job Invention and Creation
Published:
2021-12-21
According to the Patent Law and its implementing rules, the intellectual property right of service invention creation belongs to the unit, and the inventor only enjoys the right of signature and the right to reward. In practice, the unit only stipulates the obligations of the inventor in the contract or rules and regulations, rarely stipulates its rights, does not pay rewards and remuneration in accordance with the law, and infringes on the inventor's right of signature. Taking into account the unit's material input and actual management expenditure, it is necessary to take into account the interests of both parties, mobilize the enthusiasm of both parties, and effectively protect the legitimate rights and interests of the creators of scientific and technological achievements. Definition of 1. Service Invention-Creation Service inventions and creations refer to inventions and creations completed by performing the tasks of the unit or mainly using the material and technical conditions of the unit. If the unit has a contract with the inventor or designer to make an agreement on the right to apply for a patent and the ownership of the patent right, the agreement shall be followed. In accordance with the provisions of the Patent Law and the Regulations for the Implementation of the Patent Law, an invention-creation that falls under one of the following two circumstances is a service invention-creation: 1. Perform the tasks of the unit to complete the invention. It mainly includes three situations:(1) inventions and creations made in their own work;(2) inventions and creations made by performing tasks other than their own work delivered by the unit;(3) inventions and creations made within one year after retirement, transfer from the original unit or within one year after the termination of labor and personnel relations, which are related to their own work undertaken by the original unit or tasks assigned by the original unit. 2. Inventions and creations completed by using the material and technical conditions of the unit. The material and technical conditions of the unit mainly refer to the funds, equipment, spare parts, raw materials or technical data not disclosed to the public. Regarding the ownership of the rights of service inventions, according to the "Patent Law" and the "Implementation Rules of the Patent Law", the right to apply for a patent for a service invention-creation belongs to the unit. After the application is approved, the unit is the patentee. The unit shall have the right to dispose of its right to apply for a patent for a service invention-creation and the patent right. According to actual needs, the unit may also adopt other forms of intellectual property protection other than patent protection, such as the right to new plant varieties, the right to layout design of integrated circuits, and the protection of technical secrets. Protection Measures for 2. Service Inventions and Creations On April 2, 2015, the Legislative Affairs Office of the State Council announced the "Draft Regulations on Service Inventions (Draft for Review)" (hereinafter referred to as the "Draft for Review") submitted by the Intellectual Property Office and the Ministry of Science and Technology to the State Council for deliberation to solicit opinions from all walks of life. Although the draft for review has not yet been promulgated and implemented, some of these systems are very worthy of reference by units and inventors or designers, and can play a positive role in promoting the management of service inventions.. In combination with the draft for examination and approval, the patent law, the detailed rules for the implementation of the patent law and other relevant provisions, the measures and suggestions for the protection of service inventions and creations are put forward: (I) Establishment of a System of Rewards and Remuneration for Job Inventions The service invention management system is mainly about the application, management, application, reward, protection and other aspects of the service invention, which should be clearly defined in the system: the inventor or designer of the service invention shall be rewarded, and after the implementation of the invention-creation patent, the inventor or designer shall be given reasonable remuneration according to the scope of its popularization and application and the economic benefits obtained. The unit may also agree on relevant matters by signing a special agreement with the inventor and designer. For those that are not agreed upon or stipulated in the rules and regulations, the inventor and designer may require bonuses and remuneration in accordance with Articles 77 and 78 of the Detailed Rules for the Implementation of the Patent Law. The legal standard for bonuses is: an invention patent The minimum bonus is not less than 3000 yuan; the minimum bonus for a utility model patent or design patent is not less than 1000 yuan. The legal standard of remuneration is: not less than 2% of the operating profit from the implementation of the invention or utility model patent or not less than 0.2 of the operating profit from the implementation of the design patent shall be withdrawn each year, and the inventor or designer shall be given as remuneration, or the inventor or designer shall be given a one-time remuneration with reference to the above proportion; the unit granted the patent permits other units or individuals to implement its patent, not less than 10 per cent of the royalties collected shall be paid to the inventor or designer as remuneration. (II) establish invention reporting system 1. Reporting time and reporter. Where a unit may require the inventor to complete an invention related to the business of the unit, it shall report to the unit within the specified time from the completion of the invention. Inventions made by two or more inventors shall be reported to the unit by all the inventors or their representatives. 2. The contents of the invention report. Including: the names of all inventors, the title and content of the invention, opinions and reasons on whether the invention is a service or non-service invention, and other matters that the unit or inventor deems necessary to explain. 3. Unit handling opinions. The unit shall give a written reply within the prescribed time after receiving the invention report; if the unit fails to reply within the aforementioned time limit, it shall be deemed to agree with the inventor's opinion. If a unit claims in its written reply that the reported non-service invention is a service invention, it shall state the reasons. If the inventor puts forward a written objection within the specified time after receiving the reply from the unit, the two parties may resolve it through consultation, request the patent administrative department for mediation, litigation or arbitration; if no objection is raised, it shall be deemed to agree with the opinion of the unit. 4. The processing procedure disclosed by the inventor without authorization. The unit may stipulate that the invention may not be disclosed without the unit's consent, nor may it apply for intellectual property rights or transfer them to a third party. (III) Strengthening the Turnover Management of Personnel Related to Job Invention According to Article 12 of the Regulations for the Implementation of the Patent Law, a patent applied for after leaving office constitutes an essential element of a service invention, and shall meet both the time and content requirements: 1. Time element: refers to the dispute patent after retirement, transfer from the original unit or labor, personnel relations terminated within 1 year. 2. Content elements: refers to the patent application in the original unit to undertake their own work or the original unit assigned tasks. For those who have mastered the patented technology and trade secrets of the unit, if they do not strengthen their resignation prevention measures, it is very likely to cause significant damage to the legitimate interests of the unit in the future. To this end, the employer may formulate a non-competition management system in accordance with the relevant provisions of the Labor Contract Law. Select the appropriate agreement method, either stipulate the non-competition clause in the labor contract, or sign a separate confidentiality agreement to reasonably determine the scope of the subject and the scope, region and duration of the competition. For example, it is agreed that the person with non-competition restrictions cannot go to other employers that have a competitive relationship with the production or operation of similar products and businesses of the unit, or start production or operation of similar products and businesses by themselves; it is important to note that the non-competition period should not exceed two years. If there is no agreement to give economic compensation to the laborer after the termination or termination of the labor contract, and the laborer has fulfilled the obligation of non-competition, the employer may be required to pay 30% of the average wage of the laborer in the 12 months before the termination or termination of the labor contract. Economic compensation (Note: If 30% of the average monthly wage is lower than the minimum wage standard of the place where the labor contract is performed, it shall be paid according to the minimum wage standard of the place where the labor contract). If the parties have agreed on non-competition and economic compensation in the labor contract or confidentiality agreement, and after the termination or termination of the labor contract, if the employer fails to pay economic compensation for three months, the employee may request the people's court to lift the non-competition agreement. Current situation of disputes over the right of duty patent in 3. In Weike's pre-legal information base, search for the cause of "patent right ownership dispute, patent application right ownership dispute" and search for the key words "invention-creation and resignation related to the job undertaken by the original unit or the tasks assigned by the original unit". A total of 574 cases were retrieved, of which 70 were from the Supreme People's Court, accounting for 12%; 223 higher people's courts, accounting for 39%; the Intermediate People's Court has 215 cases, accounting for 37%; from the focus of the dispute, the content of the dispute in the case is mainly judged by "relevance", that is, from the technical field to determine "relevance", from the technical characteristics to determine "relevance", from the technical field, the technical problems solved, and the technical means implemented to determine "relevance". For example, in the Supreme People's Court Guidance Case (2019), Li Jianyi, Supreme Court Minshen No. 6342, and the civil ruling on retrial review and trial supervision of patent right ownership disputes of Shenzhen Remote Intelligent Equipment Co., Ltd., the focus of the dispute is: the specific content of Li Jianyi's job or assignment during his tenure in Weibang Company, the specific situation of the patent involved and its relationship with Li Jianyi's job or assignment, etc, the court held that Li Jianyi, as the only inventor of the patent involved, applied for the patent involved in the case in his own name less than 3 months after leaving Weibang, and could not make a reasonable explanation of the technology research and development process or the source of the technology, which was not in line with common sense. In China's legislative practice, the unit to which the inventor or designer belongs directly owns the patent right of the service invention-creation, and the invention-creation completed by performing the task of the unit or mainly using the material and technical conditions of the unit is classified as the service invention-creation, which is the core standard to judge whether the invention-creation belongs to the service invention or the non-service invention. At the same time, the law also provides for the attribution of job inventions, the principle of autonomy, and the two parties agree to take precedence over the legal attribution of job inventions. Therefore, in order to avoid disputes over the ownership of patent application rights or patent rights, it is recommended that the inventor or designer and the employer make an agreement or system regulations to divide the ownership of the job invention involved, so as to avoid disputes over rights and cause litigation to both parties. Tired and heavy economic losses.
According to the Patent Law and its implementing rules, the intellectual property right of service invention creation belongs to the unit, and the inventor only enjoys the right of signature and the right to reward. In practice, the unit only stipulates the obligations of the inventor in the contract or rules and regulations, rarely stipulates its rights, does not pay rewards and remuneration in accordance with the law, and infringes on the inventor's right of signature. Taking into account the unit's material input and actual management expenditure, it is necessary to take into account the interests of both parties, mobilize the enthusiasm of both parties, and effectively protect the legitimate rights and interests of the creators of scientific and technological achievements.
Definition of 1. Service Invention-Creation
Service inventions and creations refer to inventions and creations completed by performing the tasks of the unit or mainly using the material and technical conditions of the unit. If the unit has a contract with the inventor or designer to make an agreement on the right to apply for a patent and the ownership of the patent right, the agreement shall be followed.
In accordance with the provisions of the Patent Law and the Regulations for the Implementation of the Patent Law, an invention-creation that falls under one of the following two circumstances is a service invention-creation:
1. Perform the tasks of the unit to complete the invention.
It mainly includes three situations:(1) inventions and creations made in their own work;(2) inventions and creations made by performing tasks other than their own work delivered by the unit;(3) inventions and creations made within one year after retirement, transfer from the original unit or within one year after the termination of labor and personnel relations, which are related to their own work undertaken by the original unit or tasks assigned by the original unit.
2. Inventions and creations completed by using the material and technical conditions of the unit.
The material and technical conditions of the unit mainly refer to the funds, equipment, spare parts, raw materials or technical data not disclosed to the public.
Regarding the ownership of the rights of service inventions, according to the "Patent Law" and the "Implementation Rules of the Patent Law", the right to apply for a patent for a service invention-creation belongs to the unit. After the application is approved, the unit is the patentee. The unit shall have the right to dispose of its right to apply for a patent for a service invention-creation and the patent right. According to actual needs, the unit may also adopt other forms of intellectual property protection other than patent protection, such as the right to new plant varieties, the right to layout design of integrated circuits, and the protection of technical secrets.
Protection Measures for 2. Service Inventions and Creations
On April 2, 2015, the Legislative Affairs Office of the State Council announced the "Draft Regulations on Service Inventions (Draft for Review)" (hereinafter referred to as the "Draft for Review") submitted by the Intellectual Property Office and the Ministry of Science and Technology to the State Council for deliberation to solicit opinions from all walks of life. Although the draft for review has not yet been promulgated and implemented, some of these systems are very worthy of reference by units and inventors or designers, and can play a positive role in promoting the management of service inventions.. In combination with the draft for examination and approval, the patent law, the detailed rules for the implementation of the patent law and other relevant provisions, the measures and suggestions for the protection of service inventions and creations are put forward:
(I) Establishment of a System of Rewards and Remuneration for Job Inventions
The service invention management system is mainly about the application, management, application, reward, protection and other aspects of the service invention, which should be clearly defined in the system: the inventor or designer of the service invention shall be rewarded, and after the implementation of the invention-creation patent, the inventor or designer shall be given reasonable remuneration according to the scope of its popularization and application and the economic benefits obtained. The unit may also agree on relevant matters by signing a special agreement with the inventor and designer.
For those that are not agreed upon or stipulated in the rules and regulations, the inventor and designer may require bonuses and remuneration in accordance with Articles 77 and 78 of the Detailed Rules for the Implementation of the Patent Law. The legal standard for bonuses is: an invention patent The minimum bonus is not less than 3000 yuan; the minimum bonus for a utility model patent or design patent is not less than 1000 yuan. The legal standard of remuneration is: not less than 2% of the operating profit from the implementation of the invention or utility model patent or not less than 0.2 of the operating profit from the implementation of the design patent shall be withdrawn each year, and the inventor or designer shall be given as remuneration, or the inventor or designer shall be given a one-time remuneration with reference to the above proportion; the unit granted the patent permits other units or individuals to implement its patent, not less than 10 per cent of the royalties collected shall be paid to the inventor or designer as remuneration.
(II) establish invention reporting system
1. Reporting time and reporter.Where a unit may require the inventor to complete an invention related to the business of the unit, it shall report to the unit within the specified time from the completion of the invention. Inventions made by two or more inventors shall be reported to the unit by all the inventors or their representatives.
2. The contents of the invention report.Including: the names of all inventors, the title and content of the invention, opinions and reasons on whether the invention is a service or non-service invention, and other matters that the unit or inventor deems necessary to explain.
3. Unit handling opinions.The unit shall give a written reply within the prescribed time after receiving the invention report; if the unit fails to reply within the aforementioned time limit, it shall be deemed to agree with the inventor's opinion. If a unit claims in its written reply that the reported non-service invention is a service invention, it shall state the reasons. If the inventor puts forward a written objection within the specified time after receiving the reply from the unit, the two parties may resolve it through consultation, request the patent administrative department for mediation, litigation or arbitration; if no objection is raised, it shall be deemed to agree with the opinion of the unit.
4. The processing procedure disclosed by the inventor without authorization.The unit may stipulate that the invention may not be disclosed without the unit's consent, nor may it apply for intellectual property rights or transfer them to a third party.
(III) Strengthening the Turnover Management of Personnel Related to Job Invention
According to Article 12 of the Regulations for the Implementation of the Patent Law, a patent applied for after leaving office constitutes an essential element of a service invention, and shall meet both the time and content requirements:
1. Time elements:Refers to the dispute patent after retirement, transfer from the original unit or labor, personnel relations terminated within 1 year.
2. Elements of content:A patent application is related to the work it undertakes in the original unit or the tasks assigned by the original unit.
For those who have mastered the patented technology and trade secrets of the unit, if they do not strengthen their resignation prevention measures, it is very likely to cause significant damage to the legitimate interests of the unit in the future. To this end, the employer may formulate a non-competition management system in accordance with the relevant provisions of the Labor Contract Law. Select the appropriate agreement method, either stipulate the non-competition clause in the labor contract, or sign a separate confidentiality agreement to reasonably determine the scope of the subject and the scope, region and duration of the competition. For example, it is agreed that the person with non-competition restrictions cannot go to other employers that have a competitive relationship with the production or operation of similar products and businesses of the unit, or start production or operation of similar products and businesses by themselves; it is important to note that the non-competition period should not exceed two years.
If there is no agreement to give economic compensation to the laborer after the termination or termination of the labor contract, and the laborer has fulfilled the obligation of non-competition, the employer may be required to pay 30% of the average wage of the laborer in the 12 months before the termination or termination of the labor contract. Economic compensation (Note: If 30% of the average monthly wage is lower than the minimum wage standard of the place where the labor contract is performed, it shall be paid according to the minimum wage standard of the place where the labor contract). If the parties have agreed on non-competition and economic compensation in the labor contract or confidentiality agreement, and after the termination or termination of the labor contract, if the employer fails to pay economic compensation for three months, the employee may request the people's court to lift the non-competition agreement.
Current situation of disputes over the right of duty patent in 3.
In Weike's pre-legal information base, search for the cause of "patent right ownership dispute, patent application right ownership dispute" and search for the key words "invention-creation and resignation related to the job undertaken by the original unit or the tasks assigned by the original unit". A total of 574 cases were retrieved, of which 70 were from the Supreme People's Court, accounting for 12%; 223 higher people's courts, accounting for 39%; the Intermediate People's Court has 215 cases, accounting for 37%; from the focus of the dispute, the content of the dispute in the case is mainly judged by "relevance", that is, from the technical field to determine "relevance", from the technical characteristics to determine "relevance", from the technical field, the technical problems solved, and the technical means implemented to determine "relevance".
For example, in the Supreme People's Court Guidance Case (2019), Li Jianyi, Supreme Court Minshen No. 6342, and the civil ruling on retrial review and trial supervision of patent right ownership disputes of Shenzhen Remote Intelligent Equipment Co., Ltd., the focus of the dispute is: the specific content of Li Jianyi's job or assignment during his tenure in Weibang Company, the specific situation of the patent involved and its relationship with Li Jianyi's job or assignment, etc, the court held that Li Jianyi, as the only inventor of the patent involved, applied for the patent involved in the case in his own name less than 3 months after leaving Weibang, and could not make a reasonable explanation of the technology research and development process or the source of the technology, which was not in line with common sense.
In China's legislative practice, the unit to which the inventor or designer belongs directly owns the patent right of the service invention-creation, and the invention-creation completed by performing the task of the unit or mainly using the material and technical conditions of the unit is classified as the service invention-creation, which is the core standard to judge whether the invention-creation belongs to the service invention or the non-service invention. At the same time, the law also provides for the attribution of job inventions, the principle of autonomy, and the two parties agree to take precedence over the legal attribution of job inventions. Therefore, in order to avoid disputes over the ownership of patent application rights or patent rights, it is recommended that the inventor or designer and the employer make an agreement or system regulations to divide the ownership of the job invention involved, so as to avoid disputes over rights and cause litigation to both parties. Tired and heavy economic losses.
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