Patent application right disputes: as for a non-service invention-creation, the right to apply for a patent belongs to the inventor or designer. In this aspect, the patent application right disputes are mainly limited to disputes among co-inventors or co-designers. As for a service invention-creation, the right to apply for a patent belongs to an entity, unless otherwise agreed upon. In this aspect, the patent application right disputes are mainly limited to disputes between the entity and the staff. There is another dispute between the entrusting party and the entrusted party.
Patent right disputes: such disputes occur after the grant of the patent, and such disputes mainly include the patent right disputes among the co-patentees; the patent right disputes in determining service invention-creations or non-service invention-creations; and the patent right disputes between the entrusting party and the entrusted party involved in an entrusted research.
We can represent both parties: to negotiate for solution; to request the administrative authority for patent affairs to mediate; or to file a lawsuit before the court.
Wang completed the design and development of a product during his tenure in a company, and filed a design patent application for the product within one year from his resignation. The application was granted afterwards. The company alleged that the right to apply for the design patent application belonged to the company itself. Entrusted by the company, we filed a lawsuit with the court. We found that this design was made just for Wang's own work in the company based on relevant evidence, and the design patent application was filed within one year from his resignation. We represented the company to claim that (1) Wang designed the product by utilizing the technology, materials and information touched in his work in the company; (2) the granted design patent was involved in the scope of his work; and (3) design and development of the product belonged to the execution of the task of his work, and therefore, the granted patent belonged to a service invention-creation. The court acknowledged our opinions.
Li, an employee of a company, as the applicant, filed an invention application relating to a home appliance product, and the application was granted afterwards. The company alleged that the granted patent belonged to the company. However, Li held that the design and development of the product were self-funded and made in his spare time without utilizing the material conditions of the company, and the design and development of the product did not involve his own duty or the other tasks distributed to him by the company. We were entrusted by the company with resolving this patent ownership dispute. After communicating with the relevant personnel, we found that the company could not provide necessary evidence showing the employment regulations and the scope of duties, and showing that the claimed technical solution of the patent was intended to execute Li's duty task, and the related process was conducted in the company. We suggested the company negotiate an agreement with Li. After our coordination, Li agreed to add the company as a co-patentee.
Both A and B were teachers in a university. A was a major designer for a product process entrusted by an enterprise to the university. Subsequently, B applied for a scientific foundation research project, and A was a key member of the project group. During the process of the project, A suggested B utilize the above mentioned product process entrusted by the enterprise, and described the product process in detail. Subsequently, the university filed an invention application with B as the only inventor. A filed a lawsuit on the dispute of the authorship with the court, and requested an order to determine that A was the inventor of the patent but B was not the inventor. Entrusted by B, after comparing the product process entrusted by the enterprise and the claimed technical solution of the patent, we found that although the patent involved a part of the process entrusted by the enterprise, this part of the process failed to make creative contributions to the substantive features of the claimed technical solution of the patent. According to Rule 13 of the Implementing Regulations of the Chinese Patent Law, “inventor” means any person who makes creative contributions to the substantive features of the invention-creation. The court rejected A's lawsuit based on our above opinions.