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Zhong Lun Assists An Optics Valley Laser Company in Securing Ownership of Nine Patents
Zhong Lun Assists An Optics Valley Laser Company in Securing Ownership of Nine Patents
Tuanjie Laser Equipment Co., Ltd., a large laser company located in Optics Valley of China, is the controlling shareholder of Shanghai Tuanjie Laser Equipment Co., Ltd. (“Shanghai Laser"). Several former officers and employees of Shanghai Laser joined a newly established Shanghai-based intelligent technology company (“Shanghai Intelligent"), which has applied for a number of patents related to laser cutting equipment, with the aforementioned former officers and employees listed as inventors. Such practice was suspected of infringing on the trade secrets and patent ownership of Optics Valley Laser.
After taking this case, lawyers from Zhong Lun formulated a detailed and meticulous scheme for evidence collection and comparison of patent information involved in the case. As almost all the former members of management and the R&D team of Shanghai Laser had moved to work for Shanghai Intelligent, all R&D materials and personnel information fell into the hands of the latter, making it impossible to collect relevant evidence. Despite these difficulties, Zhong Lun lawyers managed to indirectly prove that the aforementioned inventors’ duties at Shanghai Laser had contributed to the inventions and filed 10 lawsuits over the patents ownership with the Intermediate People’s Court of Wuhan Municipality.
Upon jurisdictional objection by the defendant, the Intermediate People’s Court of Wuhan Municipality transferred all the cases to the Shanghai Intellectual Property Court. After hearing, except for one case that the claimant voluntarily withdrew, the Shanghai Intellectual Property Court found that Shanghai Laser is a joint owner of all the patents involved in the other nine cases. The second instance recently heard before the Intellectual Property Court of the Supreme People’s Court of China upheld the trial court’ decisions of the nine cases.
The highlight of this series of cases is to judge whether the inventions in dispute fall into the scope of “relevant invention" specified in Article 12(1)(c) of the Rules for the Implementation of the Patent Law, which requires that the focus of deliberation shall revolve around the particulars of the former employees’ duties at or tasks assigned by the former employer and the causation between such duties or assignments and the inventions, while striking a balance of interests between the employees, the former and current employers.
Zhong Lun partner Dan He and associate Lu Chen provided full legal services for the series of cases, which has recently made to the list of Top Ten Cases of Intellectual Property Rights Protection in Wuhan in 2021 by Wuhan Guild of Intellectual Property Services. Also, the team led by Dan He has been hailed as Team Excellence in Intellectual Property Rights Services in Wuhan in 2021.
