In disputes over patent application rights or patent ownership, even if the inventors recorded in the patent or patent application documents were not directly responsible for the research and development of the relevant technology at their former employer, their ability to access, control, or obtain related technical information by virtue of their job responsibilities and authority at the former employer cannot be disregarded. In this circumstance, it is incorrect to simply deny the relevance between the technical solution of the disputed patent or patent application and the inventors’ primary duties or assigned tasks at their former employer solely because another individual at the former employer was directly responsible for the R&D of that technology.
Disputes over patent application rights or patent ownership generally do not fall within the scope of legal disputes for which reasonable enforcement expenses may be awarded. If the plaintiff requests the defendant to bear such expenses, the court will typically not support such a claim.
Zhejiang A Company, Zhejiang B Company, and Chengdu C Company (collectively, the "Plaintiffs") sued that around 2016, nearly forty technical employees of Chengdu C Company left to join Shanghai S Company and its affiliates. Shanghai S Company and its affiliates subsequently filed over twenty patent applications listing Natural Person X and other five former employees of Chengdu C Company, and other non-former employees, such as Natural Person Y, as inventors, thereby infringing upon their legitimate rights. The Plaintiffs initiated over twenty lawsuits concerning patent application rights and patent ownership. The present case involves the technical solution of the invention patent application titled "Battery Pack Heating Device and Battery Pack Heating Method", which is relevant to X's primary duties and assigned tasks at Chengdu C Company. The Plaintiffs requested the court to confirm that the patent application right belongs to Zhejiang A Company and Zhejiang B Company, and to award compensation for reasonable expenses incurred in protecting their rights.
Shanghai S Company and X argued that Zhejiang A Company and its affiliates lacked technical expertise in electric vehicle research and development, and that storage batteries and power batteries belong to entirely distinct technical fields with different technological pathways. Therefore, X's job responsibilities and tasks at his former employer were unrelated to the technical solution of the disputed patent application. The three Plaintiff companies' claim for compensation of reasonable expenses incurred in protecting their rights lacked legal basis.
The court found through trial that: X was employed by Chengdu C Company in a product technology position starting from April 2, 2014, primarily responsible for the research and development of storage battery systems, electronic and electrical appliances, and air conditioning systems. After obtaining approval to leave his former employer on May 23, 2016, X took up a position at an affiliated company of Shanghai S Company. Shanghai S Company was established on December 1, 2016, and filed the disputed patent application on July 10, 2017, listing X and Y as inventors.
The first-instance court rendered a civil judgment dismissing the claims of Zhejiang A Company, Zhejiang B Company, and Chengdu C Company. The tree Plaintiffs appealed, arguing that Shanghai S Company should compensate them for the reasonable expenses incurred in stopping the infringement.
On December 14, 2023, the Supreme People's Court issued a final civil judgment: 1) Revoking the civil judgment of the first-instance court; 2) Confirming that Zhejiang A Company and Zhejiang B Company are co-owners of the disputed invention patent application right; 3) Dismissing the other claims of Zhejiang A Company, Zhejiang B Company, and Chengdu C Company.
The court's effective judgment held that:
To start with, the filing date of the disputed patent application was July 10, 2017. However, as early as May 17, 2017, staff from a Beijing patent and trademark agency had already communicated with Y, the other inventor of the patent application, regarding the technical solution and suggested improvements. X left Chengdu C Company on May 23, 2016, which is less than one year before the aforementioned communication between the patent agency staff and Y. Within one year of departure from his former employer, X participated in the research and development of 13 patents related to electric vehicle batteries. Therefore, it was highly probable that the disputed patent application was developed within one year of X's departure from Chengdu C Company.
Additionally, the technical solution of the disputed patent application was relevant to X's primary duties or assigned tasks at his former employer. First, as early as around 2015, Zhejiang A Company and its affiliates had invested substantial resources in the development of pure electric vehicle technologies. Through internal efforts and collaboration with technical partners, they conducted joint research on automotive control systems, drive systems, power battery packs and battery management systems, and vehicle chassis technologies. Second, before X left Chengdu C Company, Zhejiang A Company and its affiliates had already established technical reserves in traditional fuel vehicles, hybrid vehicles, and electric vehicle batteries, with research directions including electric vehicle power battery technologies, and had accumulated certain technical expertise. Third, electric vehicle power batteries are a type of storage battery, where high-voltage storage batteries serve as power sources for electric vehicles. Storage batteries and power batteries are not independent or unrelated fields. The disputed patent application involves a "battery pack heating device and method," while X's position at his former employer was in the technical department's product technology role, primarily responsible for the research and design of air conditioning, storage battery systems, and electronic and electrical appliances. His primary duties involved temperature control of battery packs using air conditioning or liquid cooling, which belongs to the technical field of automotive battery temperature control, as does the disputed patent application, which involves using fuel heaters for battery pack heating. The underlying technical principles are similar, demonstrating clear relevance. Third, during his tenure at the former employer, X not only directly participated in research related to electric vehicle batteries but also accessed and mastered technical information of storage batteries, power batteries, battery pack cooling, and heat exchange provided by colleagues, product suppliers, and technical partners through extensive email communications and interactions with colleagues. Therefore, the development of the technical solution in the disputed patent application was inseparable from X's primary duties at his former employer and closely related to the technical information he obtained through those duties. Thus, the disputed patent application was highly relevant to X’s duties at Chengdu C Company. Moreover, Y, the other inventor listed in the patent application, also had the capability to develop the technical solution of the disputed patent application.
In summary, X was one of the actual inventors of the disputed patent application. The technical solution of the patent application belongs to the invention-creation developed within one year of X's departure from his former employer and is related to X's primary duties or assigned tasks at the former employer. Since the patent application also listed another inventor, and X was only one of the actual inventors, the court confirmed that Zhejiang A Company and Zhejiang B Company are co-owners of the patent application right. As this case is a dispute over the ownership of patent application rights, the court did not support the Plaintiffs' claim for compensation in reasonable expenses incurred in protecting their rights.
(2022) Zui Gao Fa Zhi Min Zhong No. 2436
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