The employer shall bear the obligation to pay remuneration to the inventor of a service invention-creation. The right of the inventor of the service invention-creation to request payment of rewards and remuneration shall not be affected by the employer's disposal of the patent application right or the patent. The assignment of the patent application right or the patent shall not affect the employer's obligation to pay remuneration to the inventor.
In a dispute over remuneration for the service invention-creation between the Appellant a natural person X and the Appellant Tianjin A Company and the Appellee B Group Company, an invention patent owned by B Group Company (hereinafter referred to as the patent in question) was involved.
X claimed that he, having participated in the research and development of the patent in question, is the inventor of the patent, and that Tianjin A Company and B Group Company should pay him inventor's remuneration as they have implemented the patent in question. Therefore, he filed a lawsuit with the first-instance court, seeking remuneration from Tianjin A Company and B Group Company for the research and development of the patent.
The first-instance court held that although the patent in question is owned B Group Company, it was actually created by X while he was working in Tianjin A Company to fulfill his job duties, making it a service invention-creation. In the Patent Law, the term “entity granted the patent” should be understood as the entity that ought to have applied for and obtained the patent. The entity responsible for paying remuneration for a service invention-creation should be the employer of the inventor, not necessarily the entity that obtains the patent application right or the patent through other means, such as assignment. Moreover, since Tianjin A Company implemented the patent, not B Group Company, Tianjin A Company should pay X inventor’s remuneration for service invention-creation. Therefore, the court of first instance deemed X’s claim for payment from that B Group Company lacks factual and legal basis and did not support it.
X and Tianjin A Company were dissatisfied and appealed to the Supreme People's Court. X claimed that Tianjin A Company and B Group Company should pay him inventor remuneration for service invention-creation. Tianjin A Company contended that it did not hold the patent application right or the patent itself, and therefore, should not be considered the "entity granted the patent" that is obligated to pay the inventor remuneration.
On September 29, 2022, the Supreme People's Court ruled to dismiss the appeal and uphold the original judgment.
The Supreme People's Court held in the second instance that Article 16 of the Patent Law, which was amended in 2008, stipulates: "The entity that is granted with a patent shall award to the inventor or designer of the service invention-creation; after the invention patent is implemented, the inventor or designer shall be given reasonable remuneration based on the promotion and application scope of the patent and the economic benefits obtained thereby."
From the perspective of legislative intent, this provision aims to encourage invention-creations and promote their implementation on the basis of the principle of fairness. On the one hand, since the employer pays wages and salaries to the inventor, it is fair to attribute invention-creations made during work to the employer; at the same time, in the context of large-scale socialized production, attributing invention-creations to the employer is also considered to be conducive to the implementation and application of invention-creations. On the other hand, the inventor can request the employer to pay rewards in addition to their wages and salaries, and if the employer profits from the invention, the inventor may also seek additional remuneration and participate in profit sharing, which can greatly enhance the inventor's motivation and encourage further invention-creations.
In this case, based on the established facts, X participated in the research and development of the technical solution involved while employed at Tianjin A Company. The method was later patented, and Tianjin A Company applied the method and gained economic benefits. Therefore, in accordance with the above provisions of Article 16 of the Patent Law amended in 2008, Tianjin A Company is obligated to pay X reasonable remuneration.
Tianjin A Company is not the patentee of the patent in question, which seemingly does not meet the requirement under Article 16 of the 2008 amended Patent Law, which specifies that the payment subject should be "the entity granted the patent". However, the patent was initially under the control of Tianjin A Company before being assigned to and obtained by its controlling shareholder, B Group Company.
The right of the inventor of the service invention-creation to request the payment of rewards and remuneration should not be affected by the employer's disposal of the patent application right and the patent. Therefore, the assignment of the patent (application) right in question does not affect Tianjin A Company’s obligation to pay remuneration to X.
 (2021) Zui Gao Fa Zhi Min Zhong No. 1172
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