Source:|Author:China IP|Publish time:\u00a02018-08-15|37\u00a0Views<\/p>\n
\u00a0 \u00a0Appellant (Defendant below): Nanjing\u00a0Mailande Medical Technology Co., Ltd.\u00a0(Mailande, or Medlander)<\/p>\n
Appellants (Third Parties below):\u00a0Mr. Shi, Mr. Yang, Mr. Zhou, and Mr. X.\u00a0Yang\u00a0Appellee (Plaintiff below): Nanjing\u00a0Vishee Medical Technologies\u00a0 Holdings,\u00a0Ltd. (Vishee)<\/p>\n
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Vishee is an enterprise specialized\u00a0in research, manufacture and sale\u00a0of medical appliances. Shi, Yang,\u00a0and Zhou are all former employees\u00a0of Vishee, being\u00a0responsible for the\u00a0departments of R&D, Products, and\u00a0Quality respectively. Beginning in\u00a02010, Vishee applied for more than ten\u00a0patents,\u00a0\u00a0for\u00a0\u00a0which\u00a0Shi, Yang and Zhou\u00a0were included in the named inventors.\u00a0On January 16, 2013, Medlander was\u00a0set up as a company, doing roughly the\u00a0same business as Vishee, with X. Yang\u00a0being a shareholder. After Medlander\u00a0was formed, Shi, Yang, and Zhou\u00a0subsequently left Vishee and joined\u00a0Medlander for work up to now.<\/p>\n
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On November 5, 2012, X. Yang filed\u00a0an application for an invention patent\u00a0\u201cVagina Electrode\u201d under application\u00a0number 201210435831.2 (the patent\u00a0at issue). On September 13, 2013, a\u00a0change of applicant was recorded for\u00a0Medlander; and on April 16, 2014, the\u00a0patent was approved and published,\u00a0with the certificate showing inventor\u00a0as X. Yang, and patentee as Medlander.\u00a0Vishee contended that, because X.\u00a0Yang had never been involved in the\u00a0business of medical appliances or\u00a0relevant research, the actual inventors\u00a0of the patent at issue ought to be Shi,Yang, and Zhou, who, while being\u00a0employed at Vishee, were appointed to\u00a0work on the research and development\u00a0of the patented invention at issue by\u00a0using Vishee\u2019s financial resources,\u00a0place, equipment, materials, and non-disclosed technical data for a long time.\u00a0For this reason, the patent at issue\u00a0corresponding to the work result of\u00a0the\u00a0above three for the\u00a0subject of their\u00a0jobs at Vishee,and should therefore\u00a0be\u00a0service invention for which\u00a0\u00a0the\u00a0patent\u00a0ought\u00a0to\u00a0be\u00a0awarded\u00a0\u00a0toVishee.<\/p>\n
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Medlander countered that the patented\u00a0invention at issue was completed by X.\u00a0Yang, from whom Medlander obtained\u00a0the patent by assignment; that\u00a0 Shi,Yang, and Zhou were not actual\u00a0inventors of the patent at issue; that\u00a0the patent had nothing to do with the\u00a0work of Shi, Yang and Zhou at Vishee;\u00a0and therefore the patent should belong\u00a0to Medlander.<\/p>\n
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The Nanjing Intermediate Court\u00a0found: (1) that X. Yang is not the\u00a0inventor of the patented invention\u00a0at issue since he lacks the work\u00a0experience,\u00a0 professional\uff0cknowledge\u00a0and research ability for the patent\u00a0at issue;\u00a0(2) that the patent at issue\u00a0is the result of the work of Shi, Yang\u00a0and Zhou during\u00a0\u00a0their employment\u00a0at Vishee and therefore is a service\u00a0invention; (3) that the quitting and\u00a0job-hopping of Shi, Yang and Zhou\u00a0were premeditated,\u00a0and the\u00a0three,\u00a0in order to evade the law, filed the\u00a0patent application in the name of X.Yang, transferring then to Medlander,\u00a0a corporation, to make selfish gains\u00a0\u00a0under the disguise of corporate veil. In\u00a0sum, the Nanjing Intermediate Court\u00a0at first instance trial decided that\u00a0the patented invention at issue was\u00a0a\u00a0 service invention, to be owned by\u00a0Vishee.<\/p>\n
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Medlander, Shi, Yang, Zhou, and X.\u00a0Yang were not satisfied with the first\u00a0instance judgment, and appealed to\u00a0the High People\u2019s Court of Jiangsu,\u00a0which dismissed the appeal and\u00a0affirmed the original judgment.\u00a0Medlander was still dissatisfied, and\u00a0petitioned the Supreme People\u2019s\u00a0Court for reconsideration, which was\u00a0rejected.<\/p>\n
[Judge\u2019s Comment]<\/p>\n
In this case, the Jiangsu High Court\u00a0at second instance found:<\/p>\n
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Upon consideration, the Supreme\u00a0People\u2019s Court sustained the judgment\u00a0of the second instance court.<\/p>\n
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This case is a dispute over patent\u00a0ownership due to service invention,\u00a0of which the unique aspect is: the\u00a0\u00a0inventor indicated in the patent\u00a0document is not a former employee,\u00a0but a third party unrelated to a\u00a0former employer, and this third party\u00a0inventor, after filing the application,\u00a0immediately assigned\u00a0it to\u00a0another\u00a0third party corporation, namely, the\u00a0defendant in this case. Because the\u00a0third parties, the corporation and\u00a0the nominal inventor had no legal\u00a0relationship with plaintiff, it was\u00a0difficult to determine the inventorship\u00a0on basis of relevant statute, but to be\u00a0made by combining the provisions\u00a0of the Patent Law on ascertaining\u00a0identity of inventors, and on service\u00a0inventions. This case is significant in\u00a0that it provides important reference\u00a0as guidance for similar future cases.\u00a0This case also produces positive social\u00a0effect for the breadth and effect of\u00a0its judgment which signals judicial\u00a0enhancement of entrepreneurial\u00a0innovation, as well as judicial guidance\u00a0for good-faith innovative startup and\u00a0fair competition.<\/p>\n
First Instance Docket: (2015) NingZhiMinChuZi No. 130<\/p>\n
Second Instance Docket: (2016) SuMinZhong No. 988<\/p>\n","protected":false},"excerpt":{"rendered":"
Source:|Author:China IP|Publish time:\u00a02018-08-15|37\u00a0Vie …<\/p>\n