Keywords: Non-unit tasks; Using the unit's unpublished technology ; Ownership of patent rights

Handling Attorney: Wang Tao

Basic Facts of the Case:

1. Plaintiff’s claim

The plaintiff, a technology company affiliated with a certain university of science and technology, is an internationally leading high-tech enterprise integrating technological R&D and equipment manufacturing in the field of high-temperature submersible electric pumps for thermal recovery of heavy oil. After long-term, in-depth R&D efforts, the plaintiff has generated a wealth of highly valuable technological achievements in the R&D and manufacturing of thermal recovery equipment for heavy oil fields, which have been put into actual production, making pioneering contributions to the country’s independent development of intellectual property rights in the field of heavy oil thermal recovery. The invention patent application at issue, “A Metal-Bag Protector for High-Temperature Submersible Motors” (ZL202010434211.1), was filed on May 21, 2020, by Defendant No. 1, a certain petroleum technology development company in Shenyang, and Defendant No. 2, a certain petroleum technology company in Karamay. The technical solution disclosed in this application is identical to the technical content that the plaintiff had already developed but had not yet made public. Among the inventors listed in the application, Mr. Bai (Technical Director and Deputy General Manager), Mr. Zeng (Deputy Technical Director), Ms. Li (Head of the Electrical Engineering Group and Head of Product Testing), and Mr. Li (Head of the Production Department) were all former employees of the technology company affiliated with the university of science and technology. They were either technical personnel involved in the plaintiff’s R&D of the same technical content or persons responsible for implementing related technologies. All of these individuals left the plaintiff less than one year ago. Among them, Mr. Bai, Mr. Zeng, Ms. Li, and Mr. Li signed “Employee Confidentiality Agreements” with the plaintiff, obligating them to maintain the confidentiality of the plaintiff’s technological achievements. The actual inventors named in the patent application are all current employees of the plaintiff or former employees who left the technology company affiliated with the university of science and technology less than one year ago. Therefore, the right to the patent application should belong to the technology company affiliated with the university of science and technology. Despite knowing full well that the technical content of the patent application in question was the result of R&D conducted by the technology company affiliated with the university of science and technology, the defendants nevertheless appropriated the plaintiff’s technological achievements and filed the invention patent application themselves, thereby infringing upon the plaintiff’s right to file the patent application. According to Article 6 of the Patent Law, Article 12 of the Implementing Rules of the Patent Law, Article 15 of the Tort Liability Law, and the “Several Provisions of the Supreme People’s Court on Applying Laws in the Trial of Patent Dispute Cases,” the right to the invention patent application in this case should be vested in the plaintiff.

2. Point of contention:

Although it is not a task assigned by the organization, whether an invention or creation primarily based on the organization’s unpublished technology qualifies as an official invention or creation, and to whom the patent application rights arising from such an invention or creation belong.

3. Attorney’s Opinion:

First, the third-party party Zeng and others had previously worked at the plaintiff’s company and signed relevant confidentiality agreements.

Second, on May 21, 2020, the defendants, Shenyang Petroleum Technology Development Co., Ltd. and Karamay Petroleum Technology Co., Ltd., jointly filed an application with the National Intellectual Property Administration for an invention patent entitled “A Metal-Bag Type Protector for High-Temperature Submersible Electric Motors,” with Zeng et al. as the inventors.

Third, the third-party plaintiff Zeng and others had previously served as members of the research team for the “SAGD Electric Submersible Pump” project and participated in the R&D activities related to the high-temperature submersible electric pump’s “98 High-Torque Protector.” The specific component technical features and their interconnections described in the plaintiff’s “Technical Achievement Appraisal Materials for SAGD High-Temperature Electric Submersible Pumps” (March 2016) are identical to the interconnection relationships among the components involved in the patent application at issue between the defendant Shenyang Petroleum Technology Development Company and the defendant Karamay Petroleum Technology Company.

Fourth, although the defendant, Shenyang Petroleum Technology Development Co., Ltd., and the defendant, Karamay Petroleum Technology Co., Ltd., stated that they had withdrawn the invention patent application in question from the National Intellectual Property Administration in April 2021, this does not affect the determination of the infringement fact.

Fifth, some of the inventors of the technological achievements previously worked at the plaintiff company and had already proposed preliminary ideas for the inventions and creations at certain meetings. They further made improvements on drawings that had not been made public. Therefore, it should be recognized that they took advantage of the plaintiff’s unique technical conditions.

Sixth, the defendant, Shenyang Petroleum Technology Development Co., Ltd., and the defendant, Karamay Petroleum Technology Co., Ltd., have failed to prove that other individuals made creative contributions to the technical solution, nor have they demonstrated that the inventor who switched jobs utilized their former employer’s material and technical resources or fulfilled tasks assigned by their former employer.

In summary, the right to apply for the invention patent involved in this case should belong to the science and technology company of a certain university of technology.

Case Highlights:

1. The outcome of this case represents the implementation of the relevant decisions and deployments outlined in the “Outline for Building a Strong Country in Intellectual Property (2021–2035)” and the “Opinions on Strengthening Intellectual Property Protection.”

2. This case was simultaneously selected as one of the Top Ten Intellectual Property Judicial Protection Cases of the Liaoning Courts for 2021 and one of the Top Ten Typical Intellectual Property Judicial Protection Cases of the Shenyang Courts for 2021, and ranked first in both the typical cases rankings.

Typical significance:

1. Although it is not a task assigned by the organization, any invention or creation completed primarily using the organization’s unpublished technology also qualifies as an official invention or creation, and the right to apply for a patent belongs to the organization.

2. The right to file an invention application is the right enjoyed by the inventor or creator of an invention to apply for a patent for their invention. This right encompasses both the right to decide whether or not to file a patent application, as well as the rights—granted by law—to amend the patent application documents and withdraw the patent application during the authorization examination procedure.

Lawyer's Insights ：

1. Inventions and creations primarily made using the material and technical resources of this unit are considered official inventions and creations. The right to apply for a patent for such official inventions and creations belongs to the unit itself.

According to the Patent Law and other relevant provisions, any invention or creation completed in the course of performing the unit’s assigned tasks or utilizing the unit’s material and technical resources shall be considered a work-related invention. The unit’s tasks include both the employee’s regular job duties and temporarily assigned tasks. Material and technical resources encompass tangible resources such as funds and equipment, as well as intangible resources such as trade secrets and unpublished information. If an invention or creation is merely based on publicly available technology, it shall not be considered a work-related invention. Specifically in this case: First, some of the inventors of the disputed technological achievement previously worked at the plaintiff company and had already proposed preliminary ideas for the invention during certain meetings; furthermore, they made improvements upon previously undisclosed drawings. Therefore, it should be recognized that these inventors utilized the plaintiff’s unique technical resources. Second, among the inventors who filed the patent application are also employees of the defendant company. If the invention also relied on the defendant’s material and technical resources or was completed in the course of performing their official duties, the resulting technological achievement could potentially be jointly owned by both parties. However, during the trial, the defendant failed to provide evidence demonstrating that other individuals had made creative contributions to the technological achievement, nor did it prove that the aforementioned inventors who had switched jobs had utilized the defendant’s material and technical resources or carried out tasks assigned by the defendant. Consequently, the technological achievement for which the patent was applied should be recognized as belonging solely to the plaintiff.

2. The right to file a patent application should be interpreted broadly.

The right to file a patent application generally refers to the legal rights enjoyed by the applicant during the authorization and examination procedure, including the right to amend the patent application documents and the right to withdraw the patent application. Once the application is withdrawn, this right ceases to exist. In contrast, the right to apply for a patent refers to the right held by the inventor or creator after completing an invention or creation—specifically, the right to decide whether to file a patent application for the invention or creation and, if so, how to file such an application. Although both types of rights ultimately pertain to the invention or creation itself, their content and effects differ because, from the perspective of the patent approval process, the invention or creation is at different stages: either after filing but before authorization, or before filing altogether. In civil disputes, the right to file a patent application should be interpreted broadly, encompassing also the right to apply for a patent. This right does not disappear merely because a non-applicant gives up the right to file a patent; under certain conditions, the rights holder can still resume the patent application in accordance with applicable regulations.