Congratulations to our lawyers Zhang Bowen and Zou Peng for hosting the case and being awarded the top ten typical cases of service and protection of technological innovation by Guangzhou Intellectual Property Court in 2022- Zhiheng Law Firm

On February 28, 2023, the Guangzhou Intellectual Property Court held a press conference to release the trial work of technology cases in 2022 and the top ten typical cases of service and protection of technological innovation. The relevant cases reflect the judicial protection of intellectual property rights related to the digital economy and platform technology.

Among them, the "Winding Switching Device" Patent Application Right Case sponsored by our lawyers Zhang Bowen and Zou Peng was successfully awarded as one of the top ten typical cases of technical case trial work in 2022 and service and guarantee of technological innovation.

"Winding Switching Device" Job

Invention patent application right ownership case

[Case and Judgment]

The original notice said that its former employee Cai Liang joined the defendant company within less than a year of leaving the company, and as the inventor applied for the invention patent of "a winding switching device applied to the self-adhesive label winding machine", and it was related to Cai Liang's own work and assigned tasks in the plaintiff company, and Cai Liang had creative contributions to the patent involved.

The defendant applied maliciously knowing that the patent involved was a service invention, which seriously infringed the legitimate rights and interests of the plaintiff, and should compensate the plaintiff for reasonable rights protection expenses.

The Guangzhou Intellectual Property Court held that whether an invention or creation made by a departing employee is a service invention or creation should meet two conditions: first, the time requirement, that is, the invention or creation involved in the case should be made within one year after the termination of the employee's labor and personnel relationship; second, the content requirement, that is, the invention or creation involved in the case is related to the work or tasks undertaken in the original unit.

When judging whether an invention-creation involved in a case is a "relevant invention-creation" as stipulated in Article 12, Paragraph 1, Paragraph 3 of the Implementing Regulations of the Patent Law, attention should be paid to maintaining the balance of interests between the original unit, the departing employee, and the new employer of the departing employee, and the focus should be on reviewing the relevance of the technical field to which the departing employee's own job or work task belongs, the content of the work or job responsibilities, technical themes, and technical ideas, without requiring the consistency of specific technical solutions.

The patent in question was a professional invention and creation completed by Cai Liang in the execution of the plaintiff's task, and the right to apply for it should belong to the plaintiff. In the absence of a clear law stipulating that the reasonable expenses of the winning party in the ownership dispute should be paid by the losing party, the plaintiff did not provide evidence to prove that the defendant maliciously applied for and withdrew the patent in question, so the reasonable expenses claimed by the plaintiff were not supported.

The plaintiff filed a total of 6 cases involving 6 patents, and the court all determined that the patent right or the right to apply for a patent belonged to the plaintiff. After the first instance judgment of the 6 cases was pronounced, both parties served the judgment.

[Typical meaning]

The frequent occurrence of patent ownership disputes reflects the urgent need for the attribution protection of inventions and creations in the modern society with rapid technological changes. The determination of whether an invention and creation is related to its own work in the original unit or the tasks assigned by the original unit is the core dispute of patent ownership disputes.

This case clarifies the legal relationship between Article 6 (1) of the Patent Law and Article 12 (1) of the Implementing Regulations of the Patent Law. The former is used to resolve disputes over patent ownership between employees and units, while the latter is used to resolve disputes over the ownership of inventions and creations between the original unit where the employee is employed and the new unit.

The Guangzhou Intellectual Property Court held that it is not necessary to compare technical solutions when determining whether the invention-creation involved is a service invention, nor does it require that the technical solution of the invention-creation involved is essentially the same as the technical solution already formed by the original unit. It should focus on examining the relevance of the technical field to which the employee's own job or work task belongs, the work content or job responsibilities, technical themes, and technical ideas, so as to determine whether the patent involved is a service invention-creation.

The plaintiff in this case is a high-tech enterprise specializing in label and packaging and intelligent digital printing post-processing technology, which integrates R & D, production, sales, and after-sales services. The judgment in this case found that the patent involved belonged to the professional invention and creation completed by the plaintiff's task, which strengthened the judicial protection of the innovation and creation of high-tech enterprises, achieved a balance of interests between protecting the material and technical investment of enterprises and protecting and encouraging the legitimate flow of talents, and created a good legal environment for the continuous innovation of technology in this industry.

Lawyer introduction

Zhang Bowen, lawyer

Zhiheng Law Firm

Patent Agent

Master of Laws, Shenzhen University

Bachelor of Engineering, Nanjing University of Aeronautics and Astronautics

Areas of expertise:

Focusing on patent business, including patent layout, patent invalidation oral examination, patent infringement litigation, patent search analysis, etc.

Zou Peng, Lawyer

Zhiheng Law Firm

Areas of expertise:

Intellectual property rights, labor and personnel, corporate governance, civil and commercial litigation

Key achievements:

In 2021, the party's trademark was registered by its distributor, and a large number of products similar to the party were produced in the market, squeezing the party's market. After accepting the commission, after analysis, it was decided to start rights protection in the form of copyright infringement and simultaneously file trademark invalidation and other means, which have achieved good results.