Wuhan Haier electric freezer Co., Ltd. v. Dai Shaochun utility model patent ownership dispute

Plea parties:

Plaintiff: Wuhan Haier electric freezer Co., Ltd

Defendant: Dai Shaochun

Claims and defenses of both parties

（1） The plaintiff claims:

On March 6, 2007, the defendant signed a labor contract with the company on behalf of Shaochun, with a term of one year from March 6, 2007 to March 5, 2008. After the contract was signed, the defendant was arranged to work in the quality improvement department of the company on behalf of Shaochun, mainly engaged in the research, quality improvement, design and development of the electric refrigerator. On March 6, 2008, Wuhan Haier company terminated the labor contract with the defendant on behalf of Shaochun, and gave him an economic compensation of 1300 yuan. The defendant left the company on March 6, 2008.

During the working period of the defendant Shaochun in Wuhan Haier company, the R & D center of the company arranged him and several other designers of the company to research and improve the hinge of the folding door of the horizontal electric freezer of the company. Through joint efforts, the defendant Shaochun and several other designers completed the transformation of each hinge from two shaft sleeves to three or more shaft sleeves Composition and other creative improvements, the design can prevent the hinge of folding door from tearing due to unexpected tension, and improve the product quality. The improved design scheme is jointly completed by Dai Shaochun and several other designers, and the design drawings are made by Dai Shaochun. After the completion of the design, the defendant filed a patent application with the State Intellectual Property Office on behalf of Shaochun on February 26, 2008 in his own name, and obtained the patent authorization for utility model on December 10, 2008, with the patent number of zl200820065744.1. On November 6, 2008, the plaintiff, Wuhan Haier company, found the defendant, Shaochun, to explain to him that the invention and creation is a service invention, which can be rewarded to the service invention and creation group. The defendant, Shaochun, recognized the service invention, and signed the patent right transfer agreement with Wuhan Haier company in November 10, 2008. On July 24, 2009, the plaintiff applied to the State Patent Office for change At the time of registration, the defendant raised an objection on behalf of Shaochun, which made the change procedure unable to be completed.

To sum up, the patent involved in the case is a service invention, and Wuhan Haier company is the patentee of the patent. Therefore, the plaintiff, Wuhan Haier company, filed a lawsuit to the court, requesting the court to order:

1. Confirm that the patent right of utility model zl200820065744.1 is owned by the plaintiff Wuhan Haier company;

2. The litigation cost of this case shall be borne by the defendant on behalf of Shaochun.

（2） The defendant replied that: the patent involved in the case is his personal invention, not a service invention creation, and requested the court to reject the plaintiff's claim.

3、 Court decision

（1） Based on the evidence submitted by the plaintiff and the defendant, the court holds the following facts:

On March 6, 2007, the defendant, acting as an expert, signed the labor contract with the plaintiff, Wuhan Haier company, and registered with the Bureau of labor and personnel of Wuhan Economic and Technological Development Zone. The term of the contract is from March 6, 2007 to March 5, 2008. The contract stipulates the rights and obligations of both parties, but there is no agreement on the defendant's post on behalf of Shaochun. After the signing of the contract, the defendant on behalf of Shaochun was assigned to Wu Yan, the witness, as the R & D center in charge in the autumn of 2007. The defendant on behalf of Shaochun was mainly engaged in welding work, improving welding quality and training welding personnel.

Before the defendant entered the R & D center of the plaintiff Wuhan Haier company on behalf of Shaochun, the center had proposed the improvement project of the hinge of the folding door of the horizontal electric freezer, which was in the charge of Wu Yan, then the director of the center. After the project is put forward, the center conducts research and development in the form of team cooperation. In terms of project task arrangement, the center adopts the form of all staff meeting, which is discussed, proposed and demonstrated by the participants. As a member of the center, the defendant on behalf of Shaochun participated in the meeting of the project. Around September 2007, the defendant on behalf of Shaochun took the lead in proposing the improvement scheme of the hinge of the folding door of the horizontal electric freezer in the company, drew a sketch and sent it to Wu Yan in the form of electronic documents. On February 26, 2008, the defendant, on behalf of Shaochun, filed a patent application to the State Intellectual Property Office for the same drawings and technical solutions as those submitted to the company in his own name, and obtained the patent authorization for utility model on December 10, 2008, with the signature of the patentee, Dai Shaochun.

On March 6, 2008, upon the expiration of the labor contract period between the plaintiff and the defendant, the two parties signed the agreement on termination (dissolution) of labor contract, and the plaintiff Wuhan Haier company paid the defendant 1300 yuan of economic compensation on behalf of Shaochun. The defendant left the company on behalf of Shaochun on the same day and handed over the work to Wu Yan, the supervisor of the company. In the work handover sheet, the improvement plan for hinge of folding door of horizontal electric freezer involved in the case was included.

On November 6, 2008, before the patent involved was authorized, the plaintiff, Wuhan Haier company, and the defendant, Shaochun, talked about the nature of the patent. At that time, the company pointed out that the technical scheme belongs to the work achievement, and requested that the patent applicant be changed into the plaintiff, Wuhan Haier company, and was willing to give team incentives. The defendant accepted on behalf of Shaochun at that time.

On November 10, 2008, the plaintiff Wuhan Haier company and Qingdao Haier special electric freezer Co., Ltd., as Party A and the defendant Shaochun as Party B, signed the patent application right transfer agreement, which agreed to transfer the patent application right involved to Party A. After the signing of the agreement, the plaintiff, Wuhan Haier company, hereby went through the change registration formalities with the State Intellectual Property Office. Later, because the defendant raised an objection on behalf of Shaochun, it failed to complete the change registration formalities.

It is also found out that Dai Shaochun did not participate in the demonstration, simulation experiment and transformation of technical achievements into products after submitting the patent technical scheme involved to the company, and the follow-up work was all completed by the R & D center and the Development Department of the company.

（2） On the application of law in this case

There is only one dispute focus in this case, that is, whether the patent involved is a service invention.

The court held that all the facts in this case occurred before the current patent law, and only the laws at that time could be applied. According to the first paragraph of Article 6 of the patent law of the people's Republic of China revised in 2000, the invention created by performing the tasks of the entity or mainly using the material and technical conditions of the entity is a service invention creation. The right to apply for a patent for a service invention creation belongs to the entity; after the application is approved, the entity is the patentee. Article 11, paragraph 1, subparagraphs (1), (2) and (2) of the detailed rules for the implementation of the patent law of the people's Republic of China stipulate that the invention and creation made in the course of their own work and the invention and creation made in the performance of tasks other than their own work delivered by the entity belong to the service invention and creation made in the performance of their own tasks as mentioned in Article 6 of the patent law, and the temporary work entity also belongs to Scope of the unit.

In this case, the plaintiff Wuhan Haier company has a labor contract relationship with the defendant acting on behalf of Shaochun. The term of the contract is from March 6, 2007 to March 5, 2008. The contract does not stipulate the specific positions and responsibilities of the defendant acting on behalf of Shaochun. In the specific performance of the contract, the plaintiff Wuhan Haier company and the defendant acting on behalf of Shaochun have no specific restrictions. Although he is mainly engaged in welding and improvement work in specific work, this is not all of his work. He participated in other projects of the R & D center, including the improvement project of hinge of folding door of horizontal electric refrigerator involved in the case. It can be concluded that the tasks completed by the defendant on behalf of Shaochun during the working period of the plaintiff Wuhan Haier company belong to the tasks delivered by the plaintiff Wuhan Haier company. The technical scheme involved in the case was completed in September 2007, within the labor contract period between the defendant and the plaintiff Wuhan Haier company; when the defendant left the company to handle the work handover, it was clearly stated that the technical scheme involved in the case was the result of the defendant completing the work task on behalf of Shaochun in the work handover sheet submitted to the company.

Secondly, the defendant, on behalf of Shaochun, worked in the quality improvement and R & D center of Wuhan Haier company as the plaintiff. The responsibilities of the center include improving the defects in the products produced and sold by the company. The defendant signed the labor contract with the plaintiff Wuhan Haier company on behalf of Shaochun as an expert. The purpose of the company's introduction as an expert is to provide technical support.

Moreover, the technical proposal and sketch put forward by the defendant on behalf of Shaochun are all made in the quality improvement and product R & D center of the plaintiff Wuhan Haier company. The proposal of the technical proposal is inseparable from the working environment of the center. After the proposal of the technical proposal, the later demonstration, simulation experiment and other work were completed by the plaintiff, Wuhan Haier company research and development center.

Finally, in the conversation and the patent application right transfer agreement signed by the two parties, the original and the defendant respectively clarified that the patent belongs to the service invention, and the patent application right belongs to the plaintiff Wuhan Haier company. Therefore, whether the oral agreement and the written agreement are valid or not will not affect the court's determination of the nature of the patent service invention according to law.

To sum up, the patent involved in the case is the result obtained by the defendant acting on behalf of Shaochun in performing the work task of the plaintiff Wuhan Haier company, which is a job-related invention creation. The plaintiff Wuhan Haier company's claim is established and supported by the court. The defense reason of the defendant acting on behalf of Shaochun's personal invention is lack of facts and legal basis, and the court does not support it.

In accordance with Article 6, paragraph 1, of the patent law of the people's Republic of China, as amended in 2000, Article 11, paragraph 1, paragraphs 1 (1), (2), and 2 of the rules for the implementation of the patent law of the people's Republic of China, and article 128 of the Civil Procedure Law of the people's Republic of China, the judgment is as follows:

1、 The name is "horizontal electric freezer", and the patent number is zl200820065744.1. The utility model patent is owned by the plaintiff Wuhan Haier electric freezer Co., Ltd.

2、The case handling fee of 1000 yuan shall be borne by the defendant on behalf of Shaochun.