Patents/patent applications are collective intelligence of numerous inventors. One of the driving forces behind the development and strengthening of China's patent system is the increasing innovation by inventors. In order to protect inventors’ enthusiasm for creativity, safeguarding their rights and interests is always a key consideration for enterprises or institutions. In this paper, the rights of inventors will be presented with reference to the Chinese Patent Law, its relevant regulations, cases and practices to facilitate enterprises or institutions to review their management of inventors.
In this article, the term invention-creation includes inventions, utility models, and industrial designs. The term "inventor" includes both inventors of inventions and utility models, and designers of industrial designs.
Who is an inventor
An inventor is an individual who makes creative contributions to the substantive features of an invention-creation. Those who, during the course of accomplishing the invention-creation, is responsible only for organizational tasks, or who only offers facilities for making using of material and technical conditions, or who only take part in other auxiliary functions, are not inventors.
Although the technical solutions of claims sought for protection should include the substantive features of the invention-creation, not all substantive features are usually included in claims. Claims are mainly written based on designing claims with various scopes from broader to narrower, grouping of technical solutions, and combinations of technical features, etc. And there is no explicit requirement that all substantive features must be included in the claims of a patent application. The general understanding is that the substantive features of an invention-creation could be included in the entirety of its patent application document, i.e., not only the claims but also the technical solutions disclosed in the specification and drawings. Even after being granted, it is possible to include unclaimed technical solutions from the specification into the claims through divisional applications.
In practice, some parties argue that the technical features recorded in the claims are the "substantive features" and use such argument to establish themselves as inventors. The court does not reject these arguments and, based on the arguments presented by the parties involved and the evidence submitted by all parties, renders a judgment accordingly. For example, in the case no. (2020) Zui Gao Fa Zhi Min Zhong 239, the Supreme Court preliminarily determined the creative contributions of the plaintiff to the substantive features of the patent by comparing the evidence provided by the plaintiff in the first-instance which included all the technical features of the patented claims in question. Some courts make judgments based on the claims, description, and drawings as a whole. For example, in case number (2016) Jing Min Zhong 202, the first-instance court, Beijing Intellectual Property Court, held that the patent claims serve as a written expression of an invention, and when literally describing, modifying, and limiting the technical solutions, the applicant must meet the requirements for patent application, examination, and drafting. Consequently, there may be variations between the written expression of the patented claims and the components and structural elements’ names recorded in the original invention documents. In such cases, the court can make the determination based on the original inventive concepts, key structures, working principles, and other relevant aspects of the original invention.
Although different courts may provide slightly different specific descriptions of "substantive features," they generally use similar standards and methods used for assessing inventiveness to determine the substantive features. This involves comparing the inventions in the patent application with prior art to identify the "substantive features."
Regarding the creative contribution, the Supreme Court states the following provision in the related judicial interpretations:
“... When determining the creative contribution, the court shall break down the substantive technical components of the relevant technological achievement. The person who proposes the substantive technical components and realizes the technical solution based on these components is considered the one making the creative contribution...
Individuals, who provide funds, equipment, materials, and experimental conditions, carry out organizational management, assist in drawing diagrams, organizing data, translating literature, etc., shall not be the individuals accomplishing service technical achievements.”
In conclusion, an inventor refers to a person who makes creative contributions to the substantive features of an invention-creation.
The Rights of Inventors
Right to be named as an inventor
Inventors have the right to be named as such in patent documents. Inventors should use their real names and are not allowed to use pseudonyms or other informal names.
Furthermore, inventors also have the right to decide whether or not to disclose their names in patent documents.
If an inventor decides to disclose his/her name in the patent publication, the CNIPA will publish the name in the patent gazette, patent application documents, and the patent certificate.
If an inventor chooses not to disclose his/her name, he/she should submit a request for non-disclosure. If the CNIPA determines, after examination, that the request complies with the related regulations, the CNIPA will not publish the name in the patent gazette, patent application documents, patent specification, or patent certificate. Instead, the phrase "Request for Non-Disclosure of Name" will be indicated there. The inventor is not allowed to request the re-publication of his/her name thereafter.
Right to Receive Rewards:
When a service invention-creation is granted a patent, the entity, who is the employer of the inventor, should award to the inventor a reward for his/her service invention-creation. If the entity assigns the patent application to a third party, the entity remains responsible for paying the inventor's rewards.
The entity could enter into contracts with its inventors or establish in its legally formulated rules and regulations on the payment methods and amounts of rewards.
Where the entity has not entered into contracts with its inventors or designers on the payment methods and amounts of rewards, nor has the entity established such in its legally formulated rules and regulations, the entity shall, within three months from the date of patent announcement, award to the inventors or designers of a service invention-creation a sum of money as prize. The sum of the money prize for an invention patent shall not be less than 4000 RMB yuan, while the sum of money prize for a utility model patent or a design patent shall not be less than 1500 RMB yuan.
Right to Receive Remuneration:
Upon exploitation of the patented service invention-creation, the entity, who is the employer of the inventor, shall pay the inventor a reasonable remuneration based on the extent of spreading and application and the economic benefits yielded.
The entity could enter into contracts with its inventors or established in its legally formulated rules and regulations the payment methods and amounts of remuneration.
Where the entity has not entered into contracts with its inventors or designers on the payment methods and amounts of remuneration, nor has the entity established such its legally formulated rules and regulations, the entity shall provide a reasonable remuneration with the inventors or designers pursuant to the following standards in Law of China on Promoting the Transformation of Scientific and Technological Achievements:
(1) where the service invention-creation is assigned or licensed to others, a proportion not less than fifty percent shall be extracted from the net income from assignment or license of such service invention-creation;
(2) where the service invention-creation is used as a trade-in investment, a proportion not less than fifty percent shall be extracted from the shares or capital contributions formed from such service invention-creation; and
(3) where the service invention-creation is implemented by the employer on its own or in cooperation with others, a proportion not less than five percent shall be extracted annually from the business profits from the implementation of the service invention-creation for three to five consecutive years after the transformation and successful production.
The state encourages entities that are granted patents to implement property rights incentives and adopt methods such as equity, stock options, dividends, etc., to ensure that inventors receive a fair share of the innovation benefits.
Right of First Refusal:
When the patentee/applicant of a service invention-creation enters into an assignment agreement, the inventor has the right of first refusal under equal conditions.
The determination of equal conditions involves factors such as the overall assignment price, payment method, and deadline. For example, if a potential assignee proposes a consideration of 100,000 RMB to be paid in full within 5 working days, the inventor can exercise the right of first refusal if he/she is willing to fulfill the payment under the same conditions. However, if the inventor modifies the conditions, such as reducing the consideration, extending the payment deadline, or changing the payment method, he/she will lose the right of first refusal.
Right to Apply for Patents:
No entity or individual shall prevent the inventor from filing an application for patent for non-service invention-creation.
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.
Avoiding improper disclosure of invention
In addition to the above rights, inventors also have obligations, such as the obligation to keep confidentiality.
As invention-creations have intangible property attributes, it is crucial to keep the invention-creations confidential and avoid improper disclosure or leakage unless the protection plan for the invention has been well established and publication is allowable. This determines whether the invention loses the patentability and whether it loses its due value.
One of the prerequisites for obtaining patent for invention-creation is novelty, which means that the invention-creation have not been disclosed prior to the filing of the patent application. To meet this prerequisite, it is suggested not disclosing the content of the invention-creation before filing a patent application with the CNIPA. Disclosing an invention-creation to the public before filing a patent application means that the invention-creation is contributed to the public domain freely. Inventors should exercise extreme caution in such matters.
In practice, it happened that inventors published articles which disclose the content of their invention-creations before filing a patent application. After filing the patent application, the examiner found and cited the article as prior art destroying the novelty of the application in his rejection. In such cases, it becomes challenging to obtain patent protection for the content of the invention-creation disclosed in the article. This situation should be avoided.
If an invention-creation is accidentally disclosed before filing a patent application, measures need to be taken to remedy the situation. It is important to promptly contact a patent attorney for assistance in this matter.
In addition to applying for patents, the technical solutions of inventions and utility models can also be used and protected as technical know-how or trade secrets. As technical know-how or trade secrets, confidentiality is of utmost importance. For example, the formula of Coca-Cola has never been patented, but has been used and protected as technical know-how/trade secrets, and confidentiality has been done very well so far.
Ordering of Inventors
When multiple inventors collaborate on an invention-creation, they can negotiate the order of inventors.
Currently, there are no specific regulations regarding the ordering of inventors, and the ordering has no specific impact on the inventor’s rights. Generally, those who have made significant contributions are placed at the forefront as the first or second inventor, while those with lesser contributions are listed afterwards. In cases where patents serve as personal research achievements for academic promotion, being listed as the first inventor carries more weight in many appraisal processes. This implies that the contributions of the inventors listed first are considered greater than those listed later. Therefore, careful consideration is necessary when determining the order of inventors.
Remedies for Inventors' Rights
The rights of inventors, including the right to be named as an inventor, the right to receive awards, and the right to receive remuneration, are statutory rights. If these rights are infringed upon, the inventor can negotiate with the infringing party, seek administrative mediation from the intellectual property management department, or file a lawsuit before the intellectual property court.
It is worth noting that the right to receive awards and remuneration is generated only after the grant of patent for service invention-creations. If, due to the actions of the applicant, the service invention-creation fails to obtain patent—for example, if the applicant fails to file a patent application, voluntarily abandons a filed patent application, passively responds to office action resulting in the application being deemed as withdrawn, or fails to pay the required official fees—it becomes difficult to obtain awards and remuneration. In case number (2022) Zui Gao Fa Zhi Min Zhong 238, the Supreme Court did not support the inventor's claim for awards under similar circumstances. To protect their rights, inventors can proactively enter into written contract with their employing entities specifying the amount of awards and remuneration, thus avoiding potential harm to their interests. From an enterprise perspective, it is advisable to establish advance contract with inventors or internal policies or rules to prevent potential disputes.
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