AIPPI Forum & ExCo in Hyderabad (India)
13-18 October 2011
Inventorship
in Multi-Jurisdictions
Report from China
Cotents
 How to determine the inventorship
 Inventorship and security clearances
 Solutions to issues incurred by joint inventions
 Reward and remuneration for inventors of
service inventions
How to determine the inventorship
 Inventorship
Rule 13 (the new Implementing Regulations) provides
that: "Inventor" or "creator" 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 offers facilities for making use of
material and technical means, or who takes part in other
auxiliary functions, shall not be considered as inventor or
creator
Key words: “creative contributions to the substantive
features”; “auxiliary functions”
How to determine the inventorship
 creative contributions to the
substantive features
Wherein, the substantive features should be the features
that distinguish the invention from the most related prior
art and thus make the invention patentable.
While in practice, creative contributions would generally be
referred to the act of proposing the original idea of the
invention or the substantive features
 Joint invention and Joint inventors
In many cases, inventions were accomplished by joint
inventors, which might subsequently lead to issues about
security clearance and dispute on rewards and
remuneration.
Inventorship and security clearances
 Security clearances
Article 20 (the new Patent Law) provides that, Where
any entity or individual intends to file an application for
patent abroad for any invention or utility model developed
in China, it or he shall request in advance the Chinese
Patent Office for confidentiality examination……
Key words: “any entity or individual”;
“developed in China”; “confidentiality examination”
Inventorship and security clearances
 Interpretations

Security examination shall only concern technologies
involving national security and interest. There is a
technology check-list used internally at SIPO, but such list
is not open to the public.

SIPO does not give any more details or interpretations
about “developed in China”, just stating that “an invention
made in China” means “substantial part of the invention is
made in China”, according to which joint inventions do not
make any exceptions.

Consequences of failure to comply would be loss of patent
or even disciplinary or criminal sanctions. Although Article
16 is a ground for invalidation, it is still not easy for third
parties to challenge the validity of the involved patents
Since there is no “discovery” procedure in China and thus it
nearly impossible to get convincing evidences.

There is no excuses for inadvertent errors or any other
remedies.
Inventorship and security clearances
 The security examination request can be done
in four different ways:




The applicant can directly file a security examination request
alone,
The applicant can file a security examination request
simultaneously with the filing of a Chinese patent application,
The applicant can file a security examination request after filing
a Chinese patent application,
The applicant can file a PCT application directly to SIPO with no
need to file such requests separately
 Statistics
During the period from October 1, 2009 to May 30, 2010, the total
number of security examination requests (excluding PCT application*)
is 9845, wherein
 12 cases were not allowed to file abroad, taking 0.12%
 46 requests were deemed as not being filed, taking 0.47%
 4132 PCT applications were all approved to be filed abroad.
Inventorship and security clearances
 Why are inventorship and security clearances
inter-connected

To determine whether security examination shall be
requested, one shall see whether the invention was
developed in China.

In today's global economy, there are more and more joint
inventions accomplished by inventors from more than one
countries, for which it is hard to determine where they were
developed. Due to the publication of patent gazette, on the
other hand, the nationality of the inventors will be disclosed
and consequently reveal to the public the possibility that the
invention might be developed within China.

Thus determination of inventorship would affect the
decision-making about whether security examination shall be
requested.
Solutions to issues incurred by joint inventions
 The predicament where the joint invention
involves both US and Chinese inventors
Issue:
 Filing first in US would violate Chinese law
 Filing first in China would violate US law
 Request for foreign filing license in China could violate US
law
Option:
 Request for foreign filing in US followed by actual filing in
China may satisfy both country’s laws
Solutions to issues incurred by joint inventions
Solutions:

First, check if it is feasible to identify single inventor, the
one who made the most substantial contribution.

Second, check whether it is feasible to split the subject of
the invention so as to make each subject correspond to less
inventors (either us inventors or Chinese inventors) and file
applications basing on the separated subjects.

If none of the above is feasible, there seems only one
option left, to request for filing license in US followed by
actual filing in China.



It seems that this option could satisfy both country’s laws, as
the Chinese Patent Law does not have literal provisions
prohibiting the applicant from requesting foreign filing license
first in other countries.
In practice, many multi-national companies had followed this
solution to resolve this contradiction.
Nonetheless, there is still a potential risk of violating Article 20
when viewing from the legislation purpose of Article 20, i.e.
preventing the secret of the state from being divulged.
Reward and remuneration
 Provisions

About Article 16 – not changed by the third amendment
The policy of awarding the inventor a reward and a
reasonable remuneration is unchanged.

About the Implementing Regulation
The old Regulation
 Rules 74-77 only applied to state-owned entities, other
entities did not abided by the rules but took them as
reference.
The new Regulation
 Rules 76-78 are applicable to all entities, covering joint
ventures, wholly foreign-owned entities and R&D centers of
multi-national companies.
 If an agreement or policy is in place, the agreement or policy
will rule; but if in absence of that, Rule 77-77shall be
complied , which set lower limits of the amount of the reward
and the remuneration.
Reward and remuneration
 Interpretations

“Reasonable” in Article 16 is a very abstract criteria and
thus hard to interpret. At present stage, the prevailing
point on this issue can be expressed in this way, the
amount of the reward and remuneration can be set either
lower or higher than the statutory ones but definitely can
not be zero.

Rules 77 and 78 shall apply to both Chinese inventors and
foreign inventors.

The monetary reward and remuneration shall be shared by
joint inventors.

The remuneration could be based on revenue or it could be
just a set amount.

The remuneration could be paid either in lump-sum or in
on-going payments
Thank You !
Qing GE
Liu, Shen & Associates
qingge@liu-shen.com