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Discussion on Inventorship

09

JUN

2020

With the rapid development of science and technology, the protection of innovations is increasingly attracting attention from countries all over the world. In response, a greater number of enterprises and individuals are filing patent applications to protect their invention-creations worldwide. Invention-creations are the fruits of intellectual labor, in which the "human" plays a critical role, because it is inventors who first conceived the idea of invention-creations.

Before discussing inventorship, we should first clarify the definition of "inventor" in the patent law. According to Rule 13 of the Implementing Regulations of the Patent Law of the People's Republic of China:

"Inventor or designer means any person who makes creative contributions to the substantive features of an invention-creation. Any person who, during the course of accomplishing the invention-creation, is responsible only for organizational work, or who only offers facilities for making use of material and technical means, or who only takes part in other auxiliary functions, shall not be considered as inventor or designer".

For example, in the course of designing a house, the person who only provided paper and a pen is not thus a designer.

What rights do inventors and designers have in the process of patent prosecution? Article 6 of the Patent Law of the People's Republic of China explicitly stipulates that "For a non-service invention-creation, the right to apply for a patent belongs to the inventor or designer. After the application is approved, the inventor or designer shall be the patentee"; Article 16 explicitly stipulates that "The entity that is granted a patent right shall award to the inventor or designer of a service invention-creation a reward and, upon exploitation of the patented invention-creation, shall pay the inventor or designer a reasonable remuneration based on the extent of spreading and application and the economic benefits yielded"; Article 17 stipulates that "the inventor or designer shall have the right to state in the patent document that he is the inventor or designer"; while Article 72 stipulates that "Where any person usurps the right of an inventor or designer to apply for a patent for a non-service invention-creation, or usurps any other right or interest of an inventor or designer prescribed by this Law, he shall be subject to disciplinary sanction by the entity to which he belongs or by the competent authority at a higher level".

From the above provisions, it can be seen that an inventor's rights and interests mainly include three aspects, namely the right to:

  1. Apply for a patent for non-service inventions and to enjoy the patent right after grant;
  2. Be named as inventor; and
  3. Receive rewards and remuneration for service inventions. Infringement of the inventor's legitimate rights and interests will be subject to corresponding administrative penalties.

When it comes to inventorship, regardless of whether the invention is a service invention or not, the inventor has the right to state that he is the inventor in the application documents, requests, certificates and other patent documents. This right is a natural right and, like the nature of "author", it is generated upon completion of the invention-creation. Therefore, if the inventor finds out in the course of patent prosecution that he is not named as an inventor, he may require the adding of his name into the “inventor list” through such procedures as a change of bibliographical data. Of course, the inventor or designer may choose whether to enjoy or waive this right. It should be allowed for the inventor or designer to voluntarily waive their inventorship. However, to avoid any dispute arising therefrom in the future, a written statement of waiver shall be made and signed by the inventor or designer.

In practice, a problematic situation often arises when a service patent application is filed after the inventor has left the job: should he still be named as inventor? As a natural right, inventorship shall be automatically bestowed on the inventor. As long as the inventor does not make an explicit statement of abandonment, the inventor’s name should be specifically indicated in the inventor list of the application; otherwise it deprives the inventor of their inventorship. Generally, such indication of inventorship will not cause any burden or trouble. However, as an increasing number of patent applications are filed overseas, inventors’ signatures may be required in the application process according to the requirements of different countries. Sometimes it is difficult to find the inventors who have changed jobs, let alone have them sign the corresponding documents. In some cases the costs to obtain inventors’ signatures are relatively high and the inventors often do not fully cooperate. However, if the inventorship is not specified, the applicant may have to bear the expenses of such uncontrollable risks. So, how to solve such situations?

To avoid such uncertainty, contingency plans should be prepared in advance. The following are several tips which we think may help:

1. At the onset of making the service invention (i.e. when the project commences) or at the latest when the project is completed, a project document shall be drawn up internally. This document should analyze the invention-creation, and indicate the main contributors and the personnel assisting in its realization. Further, this document should be signed and confirmed by the technical director, the chief officer and other related company personnel, and then kept in the company files.

2. The relevant employee could be asked to sign a statement before leaving their position of employment, clearly stating the service invention he/she participated in, and ensuring that he/she will still sign necessary legal documents for the company after their employment ceases. This could also ensure that the company will be informed in a timely manner when his/her contact information is changed, so that he/she can be reached in time, and if he/she cannot be found after exhausting all available contact methods, he/she will be deemed to have abandoned the inventorship.

3. When the relevant employee ceases to be employed, he/she should be asked to confirm whether they are prepared to waive their inventorship. If yes, ask him/her to sign a waiver statement, and thereby the statement mentioned in above point 2 is no longer needed.

All the above-mentioned statements should be kept in the company files.

The legal personnel of the company shall design corresponding legal documents according to specific business scenarios, both to ensure the smooth development of subsequent business and to avoid the above risks.

It is hoped that the above-mentioned tips can help successfully solve such problems of enterprises and protect the interests of inventors more comprehensively and completely.

A name is an important symbol of a person's existence, and can bear the ardent expectations of the elders, accumulating the person’s successes and failures in life. After death, a person’s name may be forgotten over time or may be long remembered. Either way, it is a starting point of others' memories of a person and is thus worth cherishing. No matter long or short, elegant or ordinary, it is hoped that every name can be put to good use.

About the Firm

AFD China Intellectual Property Law Office
Address Golden Towers, Tower B, 21st floor, 38 Xueqing Road, Haidian, Beijing 100083, China.
Tel 86-10-8273 0790
Fax 86-10-8273 0820
Email afdbj@afdip.com
Link www.afdip.com

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