I. Overview
There are two different methods about the right to apply for and obtain a patent. Any invention is made by people, so there is a view that inventors, designers or their legal successors should have the right to file patent applications for inventions and creations. In some countries, such as the United States, the patent law stipulates that patent applicants can only be inventors. The completion of an invention often requires a lot of money and equipment, and it is often difficult for individuals to complete it independently. Many times, an invention is completed on the premise that enterprises, scientific research institutions and universities provide research funds and various material conditions, and organize and coordinate. Therefore, the patent laws of many countries stipulate that the right to apply for and obtain a patent belongs to the unit when the invention and creation are taken as the task of the executing unit or the material and technical conditions of the unit are used. In other cases, such as cooperative or commissioned inventions, in order to protect the interests of investors, the right to apply for and obtain patents can be stipulated in the contract. In fact, most patents granted in the United States indicate their assignees, which are generally the companies to which the inventors belong. In this case, the actual owner of the patent right is still the unit, not the inventor. Therefore, as far as its final result is concerned, the practice of the United States is not substantially different from that of most countries.
For service invention-creation, if China's collective ownership units, foreign-funded enterprises and Sino-foreign joint ventures apply for a patent, the patent right shall be owned by the enterprise after the application is approved; Where a unit owned by the whole people applies, the right to apply for and obtain a patent belongs to the unit. After the application for non-service invention-creation is approved, the patent right belongs to the inventor or designer.
Second, the definition of service invention
The first paragraph of this article stipulates the right to apply for service invention-creation and the ownership of patent right. Service invention-creation refers to the invention-creation made by the inventor or designer by performing the tasks of his own unit or mainly using the material and technical conditions of his own unit. Combined with the provisions of Article 12 of the Detailed Rules for the Implementation of the Patent Law, the following factors affect the definition of service invention-creation.
1. Employees of this unit
First of all, the inventor or designer of an invention-creation should be the employee of the entity applying for a patent. According to the provisions of the first paragraph of this article, the focus of judging the right to apply for a patent and the ownership of the patent right is the person who has completed the invention-creation. The so-called "creator" means the inventor or designer. Article 12 of the Detailed Rules for the Implementation of the Patent Law, which was revised for the second time, stipulates: "The inventor or designer mentioned in the Patent Law refers to a person who has made creative contributions to the substantive features of an invention-creation. In the process of completing the invention and creation, those who are only responsible for organizing the work, those who provide convenience for the use of material and technical conditions, or those who engage in other auxiliary work are not inventors or designers. " Therefore, an invention cannot be regarded as a service invention just because the organizer is carrying out the task of the unit. The above provisions of the detailed rules for the implementation are not only the basis for determining the inventor and designer indicated in the patent application documents or patent documents, but also one of the basis for judging the right to apply for a patent and the ownership of the patent right.
Second, the term "unit" as mentioned in this article includes legal entity and unincorporated entity. If divided by ownership, it should include state-owned (national) ownership units, collective ownership units, private ownership units and individual ownership units.
Third, the word "this unit" in this article should be understood in a broad sense. Paragraph 2 of Article 11 of the Detailed Rules for the Implementation of the Patent Law, which was revised for the second time, is added: "Units mentioned in Article 6 of the Patent Law include temporary work units". According to this regulation, the staff of this unit include temporary staff, such as those seconded or hired from other units. Although the establishment of these personnel and the relationship between J and capital are in other units, the seconded unit and the employing unit actually include them in the work plan of their own units, so they should be regarded as the staff of their own units after completing the work assigned by their own units.
2. Inventions and creations made in carrying out the tasks of this unit.
According to Article 11 of the Detailed Rules for the Implementation of the Patent Law revised for the second time, the tasks of this unit include the following situations:
(l) inventions made by inventors or designers in their own work. For example, the inventor's job is to study micromotors, and he invented a new micromotor in his work; This invention is a job invention. Another example is the designer of the pattern design of the printing and dyeing factory. The new model he designed is homework design.
(two) although it has nothing to do with the position of the inventor or designer, it belongs to the invention-creation completed when performing the special task assigned by the unit. For example, the inventor's job is to design machine tools, and the unit temporarily sends him to design new drawing tables and chairs. His related inventions are also job inventions.
(3) A staff member has completed inventions and creations related to his own work or tasks assigned by his original unit within one year after his resignation, retirement or transfer. Invention is a complicated mental work, which can't be accomplished overnight, and it has a long-term process of conception and practice. Employees who leave or retire have accumulated a lot of knowledge and experience in the original unit because of their long service. Their inventions and creations within a period of time after leaving or retiring are often closely related to the work of the original unit. Therefore, the company will generally stipulate that inventions made by employees within a period of time after leaving the original unit and related to the tasks assigned at the original job or when they joined the company are still job inventions. This provision can prevent employees from applying for patents in their own names for inventions made before leaving or retiring after leaving their jobs, which is conducive to adjusting the relationship between employers and employees on the issue of job invention creation. As for how long after leaving the original unit, the invention should be classified as a service invention, and the regulations in different countries are different. Too long is not good, too short is not good, and the detailed rules for the implementation of China's patent law stipulate one year.
3. Inventions and creations mainly make use of the material and technical conditions of the unit.
The material and technical conditions mentioned here shall include funds, equipment, spare parts, technical information or technical data according to the provisions of Article 11 of the Detailed Rules for the Implementation of the Patent Law as amended for the second time. Among them, technical information or data refers to the internal information or data owned by the unit, such as technical files, design drawings, new technical data, etc. The information or materials disclosed by the unit library or reference room are not included. In addition, it should be indispensable to use the material and technical conditions of the unit to complete the invention and creation. A small amount of use or use that does not substantially help to complete the invention and creation shall not be considered. It should be pointed out that only when the staff completes the invention and creation through their own efforts, not through their own work or tasks assigned by the unit, do they need to determine the ownership of the patent application right and patent right according to the provisions of "invention and creation mainly using the material and technical conditions of the unit".
In the second revision of the Patent Law, the term "invention-creation mainly using the material conditions of the unit" was changed to "invention-creation mainly using the material and technical conditions of the unit". The word "technology" is added, which can be understood as the "conditions" mentioned in this article include both material conditions and technical conditions. For example, when a person makes an invention, he does not complete the task assigned by the unit, nor does he make use of the specific material conditions of the unit, but it is closely related to the internal technical information he knows in the unit and the progress of the project, so he should be regarded as making use of the "material and technical conditions" of the unit.
4. Relevant contracts between the unit and the inventor and designer.
The second revision of the Patent Law added a third paragraph to this article, which is a major breakthrough in this revision of the Patent Law. According to this provision, scientific and technical personnel and units are allowed to agree on the ownership of inventions and creations completed by using the material and technical conditions of their own units through contracts. An invention-creation made by making use of the material and technical conditions of the unit may not be regarded as a service invention if the inventor has fulfilled the obligations of returning funds or paying royalties as stipulated in the contract concluded in advance.
Regarding the above agreed principles, the following points should be noted:
1. A contract concluded between a unit and an inventor or designer shall be limited to inventions made with the material and technical conditions of the unit, and the provisions in the third paragraph of this article shall not apply to inventions made with the tasks of the unit.
Second, this agreement should have a written contract. A contract may stipulate that an invention made with the material and technical conditions of the unit is a service invention, or an invention made with the material and technical conditions of the unit is a non-service invention. If no contract is concluded, the ownership of rights shall be determined in accordance with the provisions of the first paragraph of this article.
Third, when concluding a contract according to the third paragraph of this article, it is stipulated that the right to apply for a patent and the ownership of the patent right, and it does not matter whether the completion of the invention-creation is "main" or "non-main" to the utilization of the material conditions of the unit.