On April 25, 2024, the Supreme People's Court (SPC) released the "Summary of the Annual Report of the Supreme People's Court on Issues of Legal Application in Intellectual Property Cases (2023)", which compiled a total of 41 issues of legal application in intellectual property cases concluded by the SPC in the year 2023. Ms. Che Xiaoyan, a partner of Llinks Law Office, was selected (No. 3) for her groundbreaking discussion of "the impact of the validity of patent rights on the adjudication of patent ownership disputes" in the patent ownership disputes case [(2021) Supreme Court Zhi Min Jian Jian 2312, No. 2395)].
Decision Objectives
Even if the patent application is rejected or the patent right is declared invalid, the party who is not at fault can still claim legal remedies from the party who is at fault according to the result of the determination of the ownership of the invention and creation in the case of dispute over the ownership of patent application or patent right. Therefore, the people's court may continue to hear the case according to the specific circumstances if the patent application or the patent right is rejected or declared invalid in the case of dispute over the ownership of patent application or patent right.
Basic facts of the case
From 2009 to 2018, the plaintiff and the outsider A company for long-term pipeline fan cooperation, and by the plaintiff to the A company to provide the design scheme, by the A company drew technical drawings; In 2012, Xin Ruilian company deeply involved in the above and the plaintiff's long term cooperation project of the employee Mr. Fan after leaving the defendant ShengShiDa. 2015, in the process of the cooperation between the plaintiff and the defendant, the defendant unauthorized use of the plaintiff's technology application patent and obtained authorization, and registered the invention for the defendant legal representative ZhengMou. Technology application for patent and obtain authorization, and registered inventor for the defendant's legal representative Mr. Zheng. Afterwards, the plaintiff to the shenzhen intermediate court patent ownership disputes, claiming that the defendant's behavior infringes on the plaintiff's technical achievements related rights and the actual inventor Guo's right of authorship. on August 24, 2021, the first-instance judgment confirms that the patent right belongs to the plaintiff, and found that the inventor is a third person Mr. Guo. The patent was still valid at the time of the first instance judgment, but Mr. Liu filed a request for invalidation of the patent during the second trial, and the patent was declared invalid. The defendant claimed that since the patent has been declared invalid, the plaintiff's claim cannot be established. The plaintiff then re-defined the lawsuit to order the rights and interests of the invention to be owned by the defendant, the defendant argued that the plaintiff's second instance to amend the claim is not within the scope of the case. In the end, the Supreme People's Court held that the protection of the rights and interests in inventions does not depend on the validity of the patent right, so it confirmed that the rights and interests in the inventions of the patent in question belonged to the plaintiff, and based on the possibility of actually participating in the development of the invention in question, and the degree of substantial contribution to the research and development of the invention in question, it found that the inventor was the third party, Mr. Guo.
Significance
The groundbreaking judgment of the case not only recognized the contribution of the plaintiff and the third party to the invention, but also laid the foundation for the innovation subject to defend their rights. In the final analysis, respecting creativity, protecting innovation, and giving negative evaluation to behavior that violates honesty and good faith are undoubtedly the best embodiment of the rule of law escorting the protection of intellectual property rights. On the basis of the case, the plaintiff and the third party if you want to further claim the rights of the defendant, at least from the recovery of the defendant based on the original patent rights to obtain property benefits, the recovery of the inventor's entitlement to the property benefits, claiming trade secret infringement damages, based on the original registered patentee did not fulfill the obligation of good stewardship to claim infringement damages in four aspects to try.
Ms. Che Xiaoyan, a partner of Llinks Law Office, has a background in science and technology and is qualified as a patent attorney. She has previously represented many typical patent and trade secret cases, and we look forward to more outstanding achievements in representing our clients in technology-related intellectual property cases in the future!
