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Weng Like v. Shanghai Pudong EV Fuel Injection Co., Ltd. and Shanghai Diesel Engine Co., Ltd. (dispute over compensation of service invention designer)
翁立克诉上海浦东伊维燃油喷射有限公司、上海柴油机股份有限公司职务发明设计人报酬纠纷案
【法宝引证码】
  • Type of Dispute: IPR-->IPR Ownership & Infringement
  • Legal document: Judgment
  • Judgment date: 04-18-2008
  • Procedural status: Trial at Second Instance
  • Source: SPC Gazette,Issue 7,2009

Weng Like v. Shanghai Pudong EV Fuel Injection Co., Ltd. and Shanghai Diesel Engine Co., Ltd. (dispute over compensation of service invention designer)
(dispute over compensation of service invention designer)
翁立克诉上海浦东伊维燃油喷射有限公司、上海柴油机股份有限公司职务发明设计人报酬纠纷案

Weng Like v. Shanghai Pudong EV Fuel Injection Co., Ltd. and Shanghai Diesel Engine Co., Ltd.
(dispute over compensation of service invention designer)

 

翁立克诉上海浦东伊维燃油喷射有限公司、上海柴油机股份有限公司职务发明设计人报酬纠纷案

 【裁判摘要】

 根据《中华人民共和国专利法》第十六条以及《中华人民共和国专利法实施细则》第七十六条的规定,被授予专利权的国有企业事业单位许可他人实施其专利的,应当从许可实施该项专利收取的使用费纳税后提取不低于10%作为报酬支付发明人或者设计人。根据《中华人民共和国专利法》第四十七条请你喝茶第二款的规定,宣告专利权无效的决定,对在宣告专利权无效前人民法院作出并已执行的专利侵权的判决、裁定,已经履行或者强制执行的专利侵权纠纷处理决定,以及已经履行的专利实施许可合同和专利权转让合同,不具有追溯力。但是因专利权人的恶意给他人造成的损失,应当给予赔偿。根据上述规定,在发明人、设计人起诉要求许可他人实施专利的专利权人依法支付职务发明设计人报酬的案件中,即使专利因丧失新颖性被宣告无效,专利权人以该专利已经被宣告无效为由,拒绝支付在专利权被宣告无效之前已经发生的专利实施许可行为所应支付的职务发明设计人报酬的,人民法院仍不应予以支持。
BASIC FACTS 

Plaintiff: Weng Like, male, 65, Han ethnicity, domiciled at Baihua Road, Shanghai.

 原告:翁立克。
Defendant: Shanghai Pudong EV Fuel Injection Co., Ltd., domiciled at Pudong Avenue, Shanghai. 被告:上海浦东伊维燃油喷射有限公司。
Legal Representative: Bai Hongfa, Chairman of the board of directors of this company. 法定代表人:白洪法,该公司董事长。
Defendant: Shanghai Diesel Engine Co., Ltd., domiciled at Pudong Avenue, Shanghai. 被告:上海柴油机股份有限公司。
Legal Representative: Chen Longxing, Chairman of the board of directors of this company. 法定代表人:陈龙兴,该公司董事长。
PROCEDURAL POSTURE 
The plaintiff, Weng Like, instituted an action in the No. 1 Intermediate People's Court of Shanghai against the defendants, Shanghai Pudong EV Fuel Injection Co., Ltd. (hereinafter referred to as “EV Company”) and Shanghai Diesel Engine Co., Ltd. (hereinafter referred to as “Shanghai Diesel Company”) for dispute over compensation of a service invention designer. 原告翁立克因与被告上海浦东伊维燃油喷射有限公司(以下简称伊维公司)、上海柴油机股份有限公司(以下简称上柴公司)发生职务发明设计人报酬纠纷,向上海市第一中级人民法院提起诉讼。
Weng Like claimed that: He once worked at EV Company and was the first to complete and a major contributor to two technical achievements: the “P7N fuel injection pump assembly” and “PE fuel injection pump assembly.” In these two technical achievements, the “rolling wheel lock spring device of the tappet body for an oil spraying pump” and the “rectangular section plunger spring oil jet pump” were service inventions of Weng Like. On April 17, 2001, Shanghai Diesel Company, EV Company's parent company, applied to the State Intellectual Property Office of the People's Republic of China (hereinafter referred to as the “SIPO”) for the patents at issue and was granted the patents on January 23, 2002. On November 1, 2003, Shanghai Diesel Company and EV Company entered into a contract to transfer the patents at issue to EV Company at no cost. On November 4, 2003, EV Company signed a Technology Transfer Agreement on the P7 and PE Fuel Injection Pumps with Shanghai Denso Fuel Injection Co., Ltd. (hereinafter referred to as “Denso Company”). According to this Agreement, Denso Company should pay an initial fee of 2.5 million yuan and a royalty at 4% of the net sales of its products to EV Company. By December 31, 2005, Denso Company had paid royalties of more than 5.98 million yuan for the “P7 fuel injection pump” technology and an initial fee of 2.5 million yuan and royalties of more than 10.9 million yuan for the “PE fuel injection pump” technology. EV Company also produced and sold products adopting the patents at issue. Article 76 of the Detailed Rules for the Implementation of the Patent Law of the People's Republic of China法小宝 (hereinafter referred to the “Detailed Implementation Rules”) provided that: “Where a state-owned enterprise or institution which has been granted a patent authorizes other entities or individuals to exploit the patent, it shall draw a percentage of not less than 10% of the after-tax royalties charged from the licensed exploitation of the patent as compensation of the inventor or designer.” Both the Several Opinions on Further Strengthening Work on Intellectual Property Rights in Shanghai and the Notice on Implementing Several Supporting Policies for the Outline of the Medium- and Long-term Program for Science and Technology Development (2006-2020) in Shanghai provided that a patentee may draw not less than 30% of the after-tax income from the licensed exploitation of its patent as compensation of the designer. Weng Like was the first to complete and a major contributor to the technical achievements of the “P7N fuel injection pump assembly” and “PE fuel injection pump assembly” and was also the sole inventor of the “rolling wheel lock spring device of the tappet body for an oil spraying pump” and “rectangular section plunger spring oil jet pump.” Shanghai Diesel Company and EV Company, which had authorized others to exploit the patents at issue, should pay service compensation to Weng Like in accordance with law. Therefore, Weng Like requested the people's court to order both defendants to compensate him in the amount of 2 million yuan from the royalties for the exploitation of the two service inventions as of April 2007. 原告翁立克诉称:原告曾在被告伊维公司任职,系“P7N型喷油泵总成”和“PE型喷油泵总成”两项科技成果的第一完成人和主要贡献者,前述科技成果中“喷油泵挺柱体滚轮锁簧装置”、“矩形截面柱塞弹簧喷油泵”两项技术系原告的职务发明。 2001年4月17日,伊维公司的母公司亦即被告上柴公司向中华人民共和国国家知识产权局(以下简称国家知识产权局)申请了涉案专利,并于次年1月23日获得授权。2003年11月1日,上柴公司与伊维公司签订合同将涉案专利无偿转让给伊维公司。2003年11月4日,伊维公司与案外人上海电装燃油喷射有限公司(以下简称电装公司)签订了《P7、PE型柴油喷射泵技术转让协议》,根据该协议,电装公司应向伊维公司支付人民币250万元的入门费和产品净售价4%的技术提成费。至2005年12月31日,电装公司已支付了“P7型柴油喷射泵技术”提成费人民币598万余元,以及“PE型柴油喷射泵技术”入门费人民币 250万元和提成费人民币1090万余元。此外,伊维公司还自行生产、销售过使用了涉案专利的相关产品。《中华人民共和国专利法实施细则》(以下简称专利实施细则)第七十六条规定:“被授予专利权的国有企业事业单位许可其他单位或者个人实施其专利的,应当从许可实施该项专利收取的使用费纳税后提取不低于10%作为报酬支付发明人或者设计人。”上海市《关于进一步加强本市知识产权工作的若干意见》和上海市《关于实施<上海中长期科学和技术发展规划纲要(2006-2020年)>若干配套政策的通知》均规定,专利权人在专利许可他人实施后可在税后收益中提取不低于30%作为设计人的报酬。原告是“P7N型喷油泵总成”和“PE型喷油泵总成”科技成果的第一完成人和主要贡献者,也是“喷油泵挺柱体滚轮锁簧装置”和“矩形截面柱塞弹簧喷油泵”的唯一发明人,上柴公司与伊维公司许可他人实施专利,应当依法向原告支付相应职务报酬。综上,请求人民法院判令两被告向原告支付截止2007年4月的两项职务发明创造专利许可使用费的职务报酬人民币200万元。
Weng Like also claimed service compensation for EV Company's own exploitation of the patents at issue and two other matters, which were removed during two amendments to his claims, but Weng Like reserved his rights to recover service compensation for those two matters. 原告翁立克起诉时还主张被告伊维公司支付自行实施专利的职务报酬等三项内容,经两次变更诉讼请求后不再提起,但保留对该部分职务报酬权益另案追索的权利。
EV Company and Shanghai Diesel Company pleaded that: (1) Weng Like did not have the right to claim service compensation from EV Company for the patents at issue, the “P7N fuel injection pump assembly” and the “PE fuel injection pump assembly,” both of which were jointly completed by technicians of Shanghai Diesel Company in 1994 and not by Weng Like during his service in EV Company. On November 1, 2003, Shanghai Diesel Company entered into a contract with EV Company to transfer the aforesaid patents to EV Company, and when EV Company authorized a party not involved in this case to exploit such transferred patents, compensation to its staff was unnecessary. (2) Weng Like did not have the right to claim service compensation from Shanghai Diesel Company for the patents at issue. Both patents have been declared invalid, and Shanghai Diesel Company did not receive any income when such patents were transferred. Therefore, there was no basis to pay service compensation to Weng Like. (3) The amount of service compensation claimed by Weng Like was improper. The service inventions allegedly owned by Weng Like were related to parts of the fuel injection pump assemblies, accounting for 3.65% of the assemblies. Weng Like's claim for 2 million yuan as compensation lacked legal basis. Therefore, Weng Like's claims lacked both factual and legal basis and should not be supported. 被告伊维公司、上柴公司辩称:1.原告翁立克无权向伊维公司主张“P7N型喷油泵总成”和“PE型喷油泵总成”两项涉案专利的职务报酬请求权。涉案两项专利不是原告在被告伊维公司任职期间完成的,而是由上柴公司的相关技术人员在1994年完成的,2003年11月1日,上柴公司与伊维公司签订合同,将涉案专利转让给伊维公司,伊维公司许可案外人使用转让来的专利自然无需向本公司工作人员支付报酬;2.翁立克无权向上柴公司主张涉案两项专利的职务报酬请求权。涉案两项专利均已被宣告无效,上柴公司在转让专利时未获任何利益,向原告支付职务报酬没有依据;3.原告所主张的职务报酬金额不合理。原告拥有的两项职务发明只是相关喷油泵总成中的零部件,该发明在喷油泵总成中的贡献度仅为3.65%,原告主张支付 200万元没有法律依据。综上,原告的诉讼请求没有事实根据和法律依据,不应支持。
The No. 1 Intermediate People's Court of Shanghai, the court of first instance, found that: 上海市第一中级人民法院一审查明:
Shanghai Diesel Company was a shareholder of EV Company with a capital contribution accounting for 90% of EV Company's registered capital. Weng Like had worked at EV Company as Chief Engineer since this company's formation on December 15, 1995 until his retirement in March 2005. 被告上柴公司是被告伊维公司的股东之一,其出资占伊维公司注册资本的90%。原告翁立克自1995年12月15日伊维公司成立之日起一直担任该公司的总工程师,2005年3月退休。
On April 17, 2001, Shanghai Diesel Company applied to the SIPO for two utility model patents, the “rolling wheel lock spring device of the tappet body for an oil spraying pump” and “rectangular section plunger spring oil jet pump.” On January 23, 2002, the SIPO granted these two patents, numbered ZL01238898.X and ZL01238896.3, to Shanghai Diesel Company, with Weng Like as the designer on both patent certificates. 2001年4月17日,被告上柴公司向国家知识产权局申请名称为“喷油泵挺柱体滚轮锁簧装置”和“矩形截面柱塞弹簧喷油泵”实用新型专利,2002年1月23日国家知识产权局决定将前述两项专利权授予上柴公司,专利号为ZL01238898.X和 ZL01238896.3,专利证书上所列设计人均为原告翁立克。
In September 2003, after consultations, Shanghai Diesel Company and EV Company agreed that the patentee was Shanghai Diesel Company because EV Company was a subsidiary of Shanghai Diesel Company and all of its patent applications were handled by Shanghai Diesel Company; however, for intellectual property ownership issues emerging with an increasing awareness of market economy, as the aforesaid two patents should be owned by EV Company, patent transfer formalities should be conducted. Both parties reached an mutual understanding and signed a written statement. On November 1, 2003, Shanghai Diesel Company and EV Company entered into two Patent Transfer Contracts, stating that Shanghai Diesel Company should transfer the two patents numbered ZL01238898.X and ZL01238896.3 to EV Company at no cost. The registration date of transfer of the “rectangular section plunger spring oil jet pump” was February 27, 2004, and the registration date of transfer of the “rolling wheel lock spring device of the tappet body for an oil spraying pump” was April 23, 2004. 2003年9月,被告上柴公司与被告伊维公司协商认为,由于伊维公司是上柴公司的一个子公司,其专利申请统一由上柴公司出面办理,因此当时专利权人落款为上柴公司。目前市场经济意识增强,涉及知识产权归属问题,上述三项专利应该归属伊维公司,应当办理专利权转移法律手续。双方形成共识,共同签署了书面情况说明。同年11月1日,上柴公司与伊维公司双方签订了两份《专利权转让合同》,约定上柴公司将ZL01238898.X和ZL01238896.3专利权无偿转让给伊维公司。“矩形截面柱塞弹簧喷油泵”专利权转让登记日为2004年 2月27日,“喷油泵挺柱体滚轮锁簧装置”专利权转让登记日为2004年4月23日。
On November 4, 2003, EV Company, the licensor, and Denso Company, a party not involved in this case and the licensee, signed a Technology Transfer Agreement on the P7 and PE Fuel Injection Pumps, including the following clauses: “6.1: As compensation for the technical information provided under Clause 3.1 of this Agreement and the licensed exploitation under Article 2 of this Agreement, the Licensee shall pay the Licensor the following: (1) Initial fees, which shall be nonrefundable. The initial fee is zero yuan for the P7 fuel injection pump (hereinafter referred to as the “P7 pump”) and 2.5 million yuan for the PE fuel injection pump (hereinafter referred to as the “PE pump”) and shall be paid in a lump sum by the Licensee to the Licensor within 60 days after the effective date of this Agreement … (2) Royalty, which shall be non-refundable and calculated at 4% of the net sales by selling or otherwise disposing of the contract products during the term of this Agreement … 7.3: The Licensor shall pay taxes in accordance with the tax collection provisions of the People's Republic of China …” The “Technical Features of the P7 and PE Fuel Injection Pumps,” “Patent List,” and “Technical Information” were attached to this Agreement. After this Agreement took effect, EV Company received the initial fees of 2.5 million yuan under this Agreement from Denso Company. According to a summary table of received royalties submitted by EV Company, the amounts of pre-tax royalties (including business tax, additional tax, and enterprise income tax) were: 303,227.66 yuan, 4,000,821.22 yuan, 1,678,563.97 yuan, 2,267,125.80 yuan, and 912,224.01 yuan for the P7 pump in 2003, 2004, 2005, 2006, and January to April 2007 respectively; 282,654.95 yuan, 5,448,673.97 yuan, 5,175,504.24 yuan, 3,827,915.48 yuan, and 1,383,375.81 yuan for the PE pump in 2003, 2004, 2005, 2006, and January to April 2007 respectively. As calculated on this basis by EV Company, the net incomes after deduction of business tax, additional tax, and enterprise income tax from royalties for the P7 pump in 2003, 2004, 2005, 2006, and January to April 2007 were 243,438.74 yuan, 3,211,959.30 yuan, 1,347,593.12 yuan, 1,820,105.27 yuan, and 732,356.24 yuan respectively; the net income after deduction of business tax, additional tax, and enterprise income tax from the initial fee for the PE pump was 2,007,062.50 yuan, and the net incomes after deduction of business tax, additional tax, and enterprise income tax from royalties for the PE pump in 2003, 2004, 2005, 2006, and January to April 2007 were 226,922.46 yuan, 4,374,331.68 yuan, 4,155,024.19 yuan, 3,073,146.25 yuan, and 1,110,608.68 yuan respectively. Weng Like raised questions regarding tax reductions and exemptions and the actual payment of taxes because both defendants only provided a general tax payment certificate rather than separate tax payment certificates on royalties from the P7 and PE pumps. EV Company stated that the taxes involved in the summary table had been actually paid and there were no tax reductions and exemptions. Both the plaintiff and the defendants agreed that one patent titled the “rolling wheel lock spring device of the tappet body for an oil spraying pump” was included in the P7 pump assembly technology and two patents titled the “rolling wheel lock spring device of the tappet body for an oil spraying pump” and the “rectangular section plunger spring oil jet pump” were included in the PE pump assembly technology. 2003年11月4日,被告伊维公司作为许可方,案外人电装公司作为被许可方签订《P7、PE型柴油喷射泵技术转让协议》,该协议约定:“……6.1:作为对根据本协议3.1款提供技术情报以及根据本协议第2条许可权利的报酬,被许可方应向许可方支付以下款项:(1)入门费系不退还费用,P7型柴油喷射泵(以下简称P7泵)为人民币零万元(¥0000),PE型柴油喷射泵 (以下简称PE泵)为人民币贰佰伍拾万元 (¥2 500 000),应由被许可方在本协议生效日后六十日内一次性支付给许可方…… (2)技术提成费系不退还费用,为被许可方在本协议期限内销售或以其他方式处理的合同产品净售价的百分之四(4%)……7.3:许可方应按照中华人民共和国征收税款的规定,自行缴纳税款……”前述协议还将“P7、PE型柴油喷射泵技术特性”、“专利清单”、“技术情报”作为附件。前述协议生效后,伊维公司已收到电装公司支付的协议约定的入门费人民币250万元,根据伊维公司提供提成费收取情况汇总表,各项税额(营业税、附加税、企业所得税)扣除之前的提成费数额为:P7泵2003年、2004年、 2005年、2006年、2007年1月至4月的提成费收入分别为303 227.66元、4 000 821.22元、1678563.97元、2267125.80元、912224.01元;PE泵2003年、2004年、2005年、2006年、2007年1月至4月的提成费收入分别为282654.95元、5448673.97元、5175504.24元、3827915.48元、1383375.81元。伊维公司据此计算,P7泵提成费收入扣除营业税、附加税和企业所得税之后2003年、2004年、2005年、2006年、2007年1月至4月的净收益分别为243438.74元、3211 959.30元、 1 347 593.12元、1 820 105.27元、732 356.24元;PE泵入门费收入扣除营业税、附加税和企业所得税之后的净收益为2007062.50元,PE泵提成费收入扣除营业税、附加税和企业所得税之后2003年、2004年、2005年、2006年、2007年1月至4月的净收益分别为226922.46元、4374331.68元、4155024.19元、3 073 146.25元、1 110 608.68元。原告翁立克认为二被告没有提供专门针对P7泵、PE泵许可使用费的单项纳税凭证,只有总的纳税凭证,因此对是否存在减免税相关税额以及是否实际缴纳提出质疑。伊维公司表示汇总表中涉及的税额已实际缴纳,不存在减免税情况,原、被告双方均认可前述协议所涉P7泵总成技术中含有“喷油泵挺柱体滚轮锁簧装置”一项专利,PE泵总成技术中含有“喷油泵挺柱体滚轮锁簧装置”、“矩形截面柱塞弹簧喷油泵”两项专利。
On July 7, 2005, the Patent Reexamination Board of the SIPO (hereinafter referred to as the “Patent Reexamination Board”) accepted an application on the same day of Denso Company, a party not involved in this case, for declaring invalidation of the patents numbered ZL01238898.X and ZL01238896.3. On December 23, 2005, based on the special VAT invoices issued by EV Company to Shanghai Diesel Company on August 31, 1999 and the assembly list of Shanghai Diesel Company as submitted by Denso Company, the Patent Reexamination Board made a decision to declare invalidation of the utility model patents numbered ZL01238898.X and ZL01238896.3 on the grounds that products with identical technical schemes as protected in the claims of the patents at issue had been openly sold before the application dates of the patents at issue and the patents at issue therefore lacked novelty. EV Company failed to take measures to respond to the patent invalidation declaration. During trial, EV Company argued that its personnel mistakenly sent the complaint of an administrative lawsuit to the Patent Reexamination Board, instead of the No. 1 Intermediate People's Court of Beijing. Due to this delay, the court did not accept the administrative lawsuit for EV Company's failure to satisfy the statute of limitation requirements and issued a notice of return. 2005年7月7日,中华人民共和国国家知识产权局专利复审委员会(以下简称专利复审委)受理了案外人电装公司于同日对ZL01238898.X和ZL01238896.3专利权提出的无效宣告请求。2005年12月23日,专利复审委依据电装公司提交的被告伊维公司于1999年8月31日向被告上柴公司开具的增值税专用发票及上柴公司的装配明细表,以与专利权利要求保护的技术方案相同的产品已经在专利申请日前公开销售即不具有新颖性为由,作出了宣告 ZL01238898.X和ZL01238896.3实用新型专利权全部无效的决定。伊维公司未采取措施应对专利被宣告无效,庭审时称因工作人员错将向北京市第一中级人民法院提起行政诉讼的诉状寄给了专利复审委,耽误了时间,导致法院以不符合在诉讼时效内起诉的立案要求为由不予受理并发送了退件通知。
The No. 1 Intermediate People's Court of Shanghai employed Shanghai Science & Technology Consulting Service Center (hereinafter referred to as “the STCSC”) to identify the technical weight of the patents at issue in the fuel injection pump assemblies (that is, the quantification of functions of the patents at issue in the fuel injection pump assemblies as analyzed from the technical perspective) and the technical weight of the technologies of the P7 and PE pumps in the Technology Transfer Agreement on the P7 and PE Fuel Injection Pump Assemblies. For the first technical weight, the STCSC issued a Technical Identification Report (No. 027 [2006] of the STCSC), in which the entire technology of the fuel injection pump assemblies was divided into introduced technology, independent technology developed collectively, and patented technology developed independently. This Report concluded that: in the entire technology of the fuel injection pump assembly involving one patent titled “rolling wheel lock spring device of the tappet body for an oil spraying pump”, the contribution proportion of introduced technology was 50%, that of independent technology developed collectively during the digestion and absorption of introduced technology was 45%, and that of the utility model patent numbered ZL01238898.X was 5%; in the entire technology of the fuel injection pump assembly including two patents titled the “rolling wheel lock spring device of the tappet body for an oil spraying pump” and “rectangular section plunger spring oil jet pump”, the contribution proportion of introduced technology was 40%, that of independent technology developed collectively during the digestion and absorption of introduced technology was 40%, that of the utility model patents numbered ZL01238898.X and ZL01238896.3 was 10%. For the second technical weight, the STCSC issued a Supplementary Identification Report (No. 027-1 [2006] of the STCSC), stating that: the factors creating values of the P7 and PE pumps were classified into three categories: technology (including design and process), manufacturing, and management, and the assembly technology included technology (design and process) and manufacturing. The two patents at issue fell into the scope of design technology of the contract products. Based on an analysis of the “technical information” attached to the Agreement, the Supplementary Identification Report concluded that the technical weight of the P7 and PE pump assemblies in all technologies transferred under the Agreement was approximately 70%; and the weight of the management system in all technologies transferred under the Agreement was approximately 30%. 上海市第一中级人民法院依法委托上海市科技咨询服务中心(以下简称科咨中心),就涉案专利在相关喷油泵总成中的技术比重(即涉案专利从技术角度分析在相关喷油泵总成中作用的量化)问题以及P7泵和PE泵总成技术在涉案《P7、PE型柴油喷射泵技术转让协议》中的技术比重问题进行鉴定。针对第一个问题,科咨中心出具了沪科技咨询服务中心(2006)鉴字第 027号《技术鉴定报告书》,将喷油泵总成整体技术分为引进技术、群体自主开发技术和自主开发取得知识产权的专利技术,结论为:含有“喷油泵挺柱体滚轮锁簧装置”一项专利的喷油泵总成整体技术中,引进技术的技术贡献率约占50%,在消化、吸收引进技术过程中群体自主开发技术的技术贡献率约占45%,ZL01238898.X实用新型专利的技术贡献率约占5%;含有“喷油泵挺柱体滚轮锁簧装置”和“矩形截面柱塞弹簧喷油泵”两项专利的喷油泵总成整体技术中,引进技术的技术贡献率约占40%,在消化、吸收引进技术过程中群体自主开发技术的技术贡献率约占50%, ZL01238898.X和ZL01238896.3两项实用新型专利的技术贡献率约占10%。针对第二个问题,科咨中心出具了沪科技咨询服务中心(2006)鉴字第027-1号《补充鉴定报告书》,认为创造P7泵和PE泵价值的诸要素主要为技术(设计、工艺)、制造、管理三方面,总成技术则包括技术(设计、工艺)和制造两个方面,其中涉案两项专利应归结为协议合同产品的设计技术范畴,在对协议附件中“技术情报”内容进行具体分析的基础上,补充鉴定结论为:P7泵和PE泵总成技术在协议所涉全部转让内容中的技术比重为70%左右;管理体系在协议所涉全部转让内容中的比重为30%左右。
In court, Shanghai Diesel Company and EV Company provided a Supplementary Agreement on Refunds and the Technology Transfer Agreement on the P7 and PE Fuel Injection Pumps and the credit vouchers for the refunds from EV Company to Denso Company and stated that EV Company and Denso Company had negotiated the weight of the patents at issue in the transferred technologies and, after such patents were declared invalid, the royalties charged from such patents had been refunded to Denso Company. EV Company also provided receipts for purchase of a housing unit and rewards to Weng Like, claiming that it had paid more than 200,000 yuan to Weng Like as rewards. However, the dates on the aforesaid receipts were prior to the date of the Technology Transfer Agreement on the P7 and PE Fuel Injection Pumps. 庭审中,被告上柴公司、伊维公司提供了《退款及关于的补充协议》及伊维公司向案外人电装公司退款的贷记凭证,称伊维公司与电装公司已协商确定涉案专利在转让技术中所占的比重,并且在专利权被宣告无效后,已将此前收取的专利所涉之许可使用费退还给电装公司。伊维公司提供了其给付原告购房款和奖励费的单据,称伊维公司已向原告翁立克支付了人民币20余万元的奖励,但前述单据的落款时间在涉案《P7、PE型柴油喷射泵技术转让协议》之前。
The main disputes before the court of first instance were: (1) whether Weng Like had the rights to claim service compensation from EV Company and Shanghai Diesel Company for the two patents at issue: “the P7N fuel injection pump assembly” and “PE fuel injection pump assembly”; and (2) how to determine the method for calculating such compensation if Weng Like was entitled. 本案一审的争议焦点是:1.原告翁立克是否享有向被告伊维公司、上柴公司主张“P7N型喷油泵总成”和“PE型喷油泵总成”两项涉案专利的职务报酬请求权。2.如果原告有权主张,如何确定报酬的计算方式。
The No. 1 Intermediate People's Court of Shanghai, the court of first instance, held that: 上海市第一中级人民法院一审认为:
1. Whether Weng Like had the rights to claim service compensation from EV Company and Shanghai Diesel Company for the patents at issue: 一、关于第一个争议焦点。
Article 16 of the Patent Law of the People's Republic of China (hereinafter referred to as the “Patent Law”) provided that: “The entity which is granted a patent shall reward the inventor or designer of the patented service invention; and, after the exploitation of the patented invention, reasonably compensate the inventor or designer on the basis of the scope of popularization or application and the economic benefits received.” Article 76 of the Detailed Implementation Rules provided that: “Where a state-owned enterprise or institution which is granted a patent authorizes other entities or individuals to exploit the patent, it shall draw not less than 10% of the after-tax royalties charged from the licensed exploitation of the patent as compensation of the inventor or designer.” EV Company and Shanghai Diesel Company provided drawings of the piston spring, tappet parts, and P7 strengthened pump to support their claim that the patents at issue were completed by the staff of Shanghai Diesel Company. However, on one hand, the designer recorded on the patent certificates at issue was Weng Like. On the other hand, according to the consensus reached when Shanghai Diesel Company transferred the technologies at issue to EV Company at no cost, the patents at issue belonged to EV Company. Because EV Company was a subsidiary of Shanghai Diesel Company, the patentee was registered as Shanghai Diesel Company, which handled all patent applications on behalf its subsidiaries. This fact had been certified by a written statement signed by both parties. In addition, the drawings provided by EV Company and Shanghai Diesel Company could not directly prove that the patents at issue were completed by the staff of Shanghai Diesel Company. After comprehensively considering the aforesaid factors, the court should not support the argument of both defendants that Weng Like was not the designer of the utility model patents of the “rolling wheel lock spring device of the tappet body for an oil spraying pump” and “rectangular section plunger spring oil jet pump.” Weng Like should have the rights to claim reasonable compensation for the two service inventions. Because EV Company authorized Denso Company, a party not involved in this case, to exploit the aforesaid patents and charged royalties, it should draw a percentage of the royalties charged from the licensed exploitation of the patents at issue as compensation of Weng Like. Weng Like also claimed that Shanghai Diesel Company should assume joint and several liability for compensation, which should not be supported by this court because it was EV Company that signed the Patent Licensing Agreement and obtained income therefrom, Shanghai Diesel Company transferred the patents to EV Company only for resolving issues on the ownership of intellectual property and did not authorize others to use such patents, and Weng Like also recognized that the service inventions at issue were completed by him when he worked at EV Company. 中华人民共和国专利法》(以下简称专利法)第十六条规定:“被授予专利权的单位应当对职务发明创造的发明人或者设计人给予奖励;发明创造专利实施后,根据其推广应用的范围和取得的经济效益,对发明人或者设计人给予合理的报酬。”专利实施细则第七十六条规定:“被授予专利权的国有企业事业单位许可其他单位或者个人实施其专利的,应当从许可实施该项专利收取的使用费纳税后提取不低于10%作为报酬支付发明人或者设计人。”被告伊维公司、上柴公司提供了柱塞弹簧、挺柱体部件及P7加强泵的图纸,称涉案专利是由上柴公司工作人员完成,但一方面涉案专利证书上记载的设计人为原告翁立克,另一方面,上柴公司向伊维公司无偿转让涉案技术时双方形成的共识是涉案专利应该归属伊维公司,专利权人登记为上柴公司是由于伊维公司是上柴公司的一个子公司,专利申请统一由上柴公司出面办理的缘故,双方共同签署的书面情况已证明了这一点。此外,两被告提供的图纸本身也不能直接证明涉案专利是由上柴公司工作人员完成。综合考虑以上因素,对两被告称原告不是涉案“喷油泵挺柱体滚轮锁簧装置”和“矩形截面柱塞弹簧喷油泵”实用新型专利的设计人的主张,不予认定。原告有权就涉案两项职务发明创造主张合理的报酬,伊维公司许可案外人电装公司实施上述专利并收取了使用费,应当依法从中提取一定比例作为报酬支付给原告。至于原告主张上柴公司承担报酬支付的连带责任的问题,签订涉案技术许可使用协议的是伊维公司,从中获取收益的也是伊维公司,上柴公司与伊维公司转让专利权是为了解决知识产权的归属问题,未许可其他人使用,原告也认可涉案职务发明是在伊维公司任职期间完成的,故对原告要求上柴公司承担连带责任的主张不予支持。
In court, Shanghai Diesel Company and EV Company provided a Supplementary Agreement on Refunds and the Technology Transfer Agreement on the P7 and PE Fuel Injection Pumps, arguing that EV Company and Denso Company have negotiated the weight of the patents at issue in the transferred technologies and, after the patents were declared invalid, the royalties charged from the licensed exploitation of the patents had been refunded to Denso Company. First, the weight of the patents at issue in the transferred technologies, as a key fact to be determined, was related to the determination of the amount of compensation claimed by Weng Like. However, the weight mentioned in the above Supplementary Agreement was contradictory to that in the Identification Report issued by the STCSC. The Supplementary Agreement between both defendants and Denso Company was not binding upon Weng Like, a third party, and could not directly serve as a basis for determining the facts of this case. The weight of the patents at issue in the transferred technologies should be subject to professional conclusion of the STCSC. Second, Article 47.2 of the Patent Law provided that: “A decision to declare invalidation of a patent shall have no retroactive effect on patent infringement judgments and rulings made and enforced by the people's courts, decisions on settlement of patent infringement disputes having been executed or enforced, and patent exploitation license contracts and patent transfer contracts having been performed, before the patent invalidation declaration. However, if the patentee has caused any losses in bad faith to others, the patentee shall compensate others for such losses.” Therefore, before the patents at issue were declared invalid, the exploitation of the patents at issue licensed by EV Company to Denso Company was effective. EV Company should pay compensation to the service inventor according to relevant legal provisions. EV Company claimed that it had rewarded Weng Like and provided corresponding receipts. On one hand, the rewards of EV Company to Weng Like were not compensation for the service inventor and the amount did not comply with provisions of Article 76 of the Detailed Implementation Rules. On the other hand, such rewards were paid to Weng Like before EV Company and Denso Company signed the Technology Transfer Agreement. Therefore, such rewards were irrelevant to the compensation claimed by Weng Like in this case. The aforesaid arguments of both defendants should not be supported. 庭审中,被告上柴公司、伊维公司提供《退款及关于的补充协议》,称伊维公司与电装公司已协商确定涉讼专利在转让技术中所占的比重,并且在专利权被宣告无效后,将此前收取的专利所涉之许可使用费退还给电装公司。首先,涉案专利在转让技术中所占的比重是本案需要认定的重要事实,关系到原告翁立克主张的报酬数额的认定,也与科咨中心出具的专业鉴定相矛盾,两被告与电装公司所签订补充协议内容,无权约束作为补充协议第三人的原告,也不能直接认定本案事实的根据,涉案专利在转让技术中所占的比重应当以科咨中心出具的专业鉴定为准。其次,专利法

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四十七条第二款规定:“宣告专利权无效的决定,对在宣告专利权无效前人民法院作出并已执行的专利侵权的判决、裁定,已经履行或者强制执行的专利侵权纠纷处理决定,以及已经履行的专利实施许可合同和专利权转让合同,不具有追溯力。但是因专利权人的恶意给他人造成的损失,应当给予赔偿。”因此,在本案涉案专利权被宣告无效之前,被告伊维公司与电装公司已经发生的专利实施许可行为是有效的,伊维公司仍需根据相关法律规定应向职务发明创造设计人支付报酬。此外,伊维公司认为其已经奖励了原告,并提供了相关单据,对于这个问题,一方面,伊维公司对原告的这些奖励,并不是向职务发明创造设计人支付报酬,其数额也不符合专利实施细则第七十六条的规定,另一方面,从这些奖励给付的时间来看,均在伊维公司与电装公司签约之前,与原告在本案中所主张的报酬无关。综上。对两被告庭审中提出的前述主张,均不予支持。
2. How to determine the method for calculating compensation if Weng Like was entitled: 二、关于第二个争议焦点。
On December 23, 2005, the two patents at issue were declared invalid. Since Weng Like had no evidence that the two patents were still legally valid, he could only require EV Company to pay compensation from the royalties charged from the licensed exploitation of such patents before they were declared invalid. 涉案两项专利权已于2005年12月 23日被宣告无效,在原告翁立克没有证据表明该两项专利仍处于有效法律状态的情况下,原告只能要求被告伊维公司支付专利权被宣告无效前基于专利许可使用费的收取所应提取的相应报酬。
As to the calculation base, first, an analysis of the relevant provisions of the Technology Transfer Agreement on the P7 and PE Diesel Injection Pumps indicated that the consideration for the sum collected by EV Company under this Agreement was the “technical information provided under Clause 3.1 of this Agreement and licensed exploitation under Article 2 of this Agreement.” However, the content of the “Technical Information” attached thereto was not entirely the direct carriers of the technologies of P7 and PE pump assemblies, the contract products. According to the weight determined in the Supplementary Identification Report issued by the STCSC, approximately 70% of the contract price collected by EV Company should be the royalties for the licensed fuel injection pump assembly technologies. Second, since the patents at issue were only a portion of the fuel injection pump assembly technologies, the amount relevant to the patents included in the royalties for the fuel injection pump assemblies should be determined according to the technical contribution rate of such patents in the P7 or PE pump. According to the identification conclusions of the STCSC, 5% of the royalties for the P7 pump assembly was income from the application of the patent titled “rolling wheel lock spring device of the tappet body for an oil spraying pump”, and 10% of the royalties for the PE pump assembly was income from the application of the two patents at issue. Third, the calculation base of compensation should be after-tax income. EV Company and Denso Company also agreed in writing that taxes should be paid by EV Company, the Licensor. The tax reductions and exemptions as alleged by Weng Like lacked evidence and should not be supported. In sum, the compensation for the patents at issue should be calculated on the basis of 70% of the after-tax income of EV Company received as agreed on and the technical contribution rate of the patents respectively in the contract products. Therefore, the net income after tax of EV Company from licensing Denso Company to use the patent titled “rolling wheel lock spring device of the tappet body for an oil spraying pump” in the P7 pump was 168,104.69 yuan, and that from licensing Denso Company to use the patents at issue in the PE pump was 753,433.86 yuan. 关于计算基数问题,首先,从《P7、PE型柴油喷射泵技术转让协议》相关条款分析,被告伊维公司依协议所收取的款项之对价为“根据本协议3.1款提供技术情报以及根据本协议第2条许可权利”,而协议附件中所列“技术情报”内容又不完全都是合同产品P7泵和PE泵总成技术直接对应之载体,依据科咨中心出具的补充鉴定结论所确定的比重,伊维公司收取的合同款项中的70%左右才是与喷油泵总成技术许可相关的使用费;其次,由于涉案专利只是喷油泵总成技术中的一部分,那么应当再依据专利在P7泵或PE泵中的技术贡献率来确定喷油泵总成技术的许可使用费中与专利相关的费用,根据科咨中心出具的鉴定结论,P7泵总成技术许可使用费中的约5%为该产品所应用专利“喷油泵挺柱体滚轮锁簧装置”对应的收益,PE泵总成技术许可使用费中的约10%为该产品所应用涉案两项专利对应的收益;第三,计算报酬的基数应为税后收益,且伊维公司与电装公司的协议中也约定税款由许可方伊维公司自行缴纳,原告提出的减免税情形缺乏证据予以佐证,不予采信。综上,涉案专利报酬的计算基数应将伊维公司收取的协议款项纳税后计算70%,结合专利在合同产品中技术贡献率分别计算。故伊维公司许可电装公司在P7泵中使用“喷油泵挺柱体滚轮锁簧装置”专利所获得的税后净收益为168 104.69元,许可电装公司在PE泵中使用涉案两项专利所获得的税后净收益为753 433.86元。
As to the percentage at which the compensation was drawn, Article 76 of the Detailed Implementation Rules only provided for a minimum percentage. However, the Several Opinions on Further Strengthening Work on Intellectual Property Rights in Shanghai provided that: “Enterprises shall further increase incentives to patent inventors and consciously protect their rights and interests. After transferring patented technologies or authorizing others to exploit patented technologies, the entities holding patents may draw not less than 30% of the after-tax income as compensation of the inventor or designer.” The Notice on Implementing the Several Supporting Policies for the Outline of the Medium- and Long-term Program for Science and Technology Development (2006-2020) in Shanghai provided that: “The rights and interests of patent inventors or designers shall be effectively protected. After transferring patents or authorizing others to exploit patents, the entities holding patents may draw not less than 30% of the after-tax income as compensation of the inventors or designers. If the entities holding patents are higher education institutions or scientific research institutions, they may draw not less than 50%. By reference to the aforesaid percentages, the patent inventors or designers may contribute their technologies for shares.” As the aforesaid provisions used the discretional word, “may,” the percentage could not be directly determined. Therefore, the compensation of the inventor or designer should be calculated after a full analysis of the facts of this case. Shortly after Weng Like filed this action, Denso Company applied to the Patent Reexamination Board for declaration of invalidation of the patents at issue. In court, Weng Like claimed that: the holders of evidence on which Denso Company relied were the defendants, Shanghai Diesel Company and EV Company, and there was a clear affiliation between the two defendants; the sales transaction between them could not deny the novelty of the patents at issue; and Denso Company illegally applied to the Patent Reexamination Board for declaring invalidation of the patents at issue in collusion with the two defendants. In the view of the court, the present civil action should not involve a trial of the aforesaid claim. However, within three months after EV Company received a review decision on declaration of invalidation of the patents at issue, EV Company failed to take any effective measures to remedy the patents at issue. The invalidation of the patents at issue directly caused the impossibility of Weng Like to continue to claim compensation from the economic benefits generated by the popularization or application of the patents at issue before their expiration. After fully considering the factors in this case, the court determined the drawing percentage as 30%. 关于提取比例问题,专利法实施细则七十六条的规定只确定了一个最低比例,上海市《关于进一步加强本市知识产权工作的若干意见》规定:“企业要进一步加大对专利发明人的激励,自觉维护专利发明人的权益。专利权的持有单位在专利技术转让或者许可他人实施后,可以在收益纳税后提取不低于30%,作为发明人或者设计人的报酬。”上海市《关于实施<上海中长期科学和技术发展规划纲要(2006-2020年)>若干配套政策的通知》规定:“切实保障专利发明人或设计人的权益。专利权所有单位在专利转让或许可他人实施后,可在税后收益中提取不低于30%作为发明人或设计人的报酬。其中,专利权所有单位为高校和科研院所的,可提取的比例不低于 50%。或可参照上述比例,实行发明人或设计人的技术入股。”前述规定使用了“可以”这样的指导性文字,均不能直接计算提取比例。因此,计算涉案发明人或设计人的报酬数额应当结合案情全面分析。原告翁立克提起本案诉讼不久,电装公司即向专利复审委宣告涉案专利权无效。原告在庭审时称,电装公司所依据的证据持有人应为被告上柴公司、伊维公司,而且两被告之间,存在明显的关联关系,双方发生的销售事实不足以否定专利新颖性,电装公司向专利复审委宣告涉案专利权无效是和两被告恶意串通的非法行为。法院认为,本案作为民事诉讼,对该部分内容不予以审理。但是,从伊维公司在收到涉案专利无效宣告请求审查决定后3个月内未能采取有效措施挽救专利权的消极行为来看,涉案专利的无效直接致使原告不能根据涉案专利在专利权期限届满之前继续被推广应用所产生的经济效益而主张报酬。综合考虑全案各项因素,将提取比例酌定为30%。
In conclusion, EV Company obtained net income after tax in the amount of 168,104.69 yuan from licensing Denso Company to exploit the patent of “rolling wheel lock spring device of the tappet body for an oil spraying pump” in the P7 pump and should pay 30% thereof, 50,431.41 yuan, as compensation; obtained net income after taxation of 753,433.86 yuan from licensing Denso Company to exploit the two patents at issue in the PE pump and should pay 30% thereof, 226,030.16 yuan, as compensation. The sum of compensation should be 276,461.57 yuan. 综上,被告伊维公司应当支付的数额是其许可电装公司在P7泵中使用“喷油泵挺柱体滚轮锁簧装置”专利所获得的税后净收益为168 104.69元计算30%,为50431.41元,以及许可电装公司在PE泵中使用涉案两项专利所获得的税后净收益为753433.86元计算30%,为226030.16元,两项之和为276461.57元。
Accordingly, on December 25, 2007, the No. 1 Intermediate People's Court of Shanghai rendered the following judgment: 据此,上海市第一中级人民法院于 2007年12月25日判决:
“1. EV Company shall pay compensation to Weng Like in the amount of 276,461.57 yuan drawn from the royalties charged from the exploitation of the “rolling wheel lock spring device of the tappet body for an oil spraying pump” numbered ZL01238898.X and “rectangular section plunger spring oil jet pump” numbered ZL01238896.3 licensed to Denso Company. 2. Other claims of Weng Like shall be dismissed. 一、被告伊维公司应从许可电装公司实施专利号为ZL01238898.X“喷油泵挺柱体滚轮锁簧装置”和专利号为 ZL01238896.3“矩形截面柱塞弹簧喷油泵”两项实用新型专利所收取的使用费中提取人民币276461.57元作为报酬支付给原告翁立克;二、原告的其余诉讼请求不予支持。
Of the case acceptance fee of 20,010 yuan, Weng Like shall pay 8,622 yuan, and EV Company shall pay 11,388 yuan. Of the technical identification fee of 52,000 yuan, Weng Like shall pay 12,000 yuan, and EV Company shall pay 40,000 yuan.” 案件受理费人民币20 010元,由原告翁立克负担8622元,被告伊维公司负担 11 388元;技术鉴定费人民币52 000元,由原告负担12 000元,伊维公司负担 40 000元。
BASIC FACTS 
Both Weng Like and EV Company appealed this judgment to the Higher People's Court of Shanghai. 翁立克与伊维公司均不服一审判决,向上海市高级人民法院院提起上诉。
Weng Like requested the court of second instance to revoke the original judgment and order EV Company and Shanghai Diesel Company to pay 2 million yuan as his service compensation for the licensed patent exploitation, mainly on the following grounds: (1) The Technical Identification Report and the Supplementary Identification Report issued by the STCSC were fundamentally unreliable and unreasonable. The contribution rate of the patents at issue, the “technical weight of the fuel injection pump assembly” in the patent transfer fee, and the “calculation base” of the service compensation as determined in the original judgment were erroneous in fact finding. The “constitution of technical contribution rates” proposed in the Technical Identification Report was based on neither factual investigation nor necessary technical analysis. The conclusion in the Supplementary Identification Report that “the technical weight of the P7 and PE pump assembly technologies in all technologies transferred under this Agreement is approximately 70%; and the weight of the management system in all technologies transferred under this Agreement is approximately 30%” lacked factual basis. The drawing percentage of 30% should apply only under general circumstances. Considering the actual circumstances of this case, it could be 50% or higher. (2) Whether there were tax payments or exemptions for the technology transfer fees (or royalties) at issue was not ascertained in the judgment of first instance, resulting in an incorrect calculation base. The facts found in the original judgment were unclear in this regard. (3) The original judgment held that there was "no legal basis" for Shanghai Diesel Company to assume joint and several liability for paying service compensation for the specified period, which was improper application of law. Before April 23, 2004, the patentee of the “rectangular section plunger spring oil jet pump” was Shanghai Diesel Company, and, before February 7, 2004, the patentee of the “rolling wheel lock spring device of the tappet body for an oil spraying pump” was also Shanghai Diesel Company. Shanghai Diesel Company should assume relevant liability for disputes over service compensation within the specified period according to law. (4) Due to the faults of EV Company and Shanghai Diesel Company, the patents at issue were declared invalid, causing losses of expected benefits. The “time range for calculating compensation” should extend to April 2011 when the patents at issue expired. 上诉人翁立克上诉请求撤销原审判决,判令上诉人伊维公司与一审被告上柴公司向其支付涉案专利许可使用费的职务报酬人民币200万元。主要理由是:第一,科咨中心出具的《技术鉴定报告书》与《补充鉴定报告书》根本不具可靠性和合理性,一审判决据以认定的涉案专利之技术贡献和涉案转让费中的“喷油泵总成技术之比重”及其职务报酬的“计算基数”完全属于认定事实错误。《技术鉴定报告书》提出的“技术贡献率构成”,既未经过事实调查,又未进行必要的技术分析。《补充鉴定报告书》中“P7泵和PE泵总成技术在协议所涉全部转让内容中的技术比重为70%左右;管理体系在协议所涉及全部转让内容中的比重为30%左右”的结论,没有事实依据。 30%的“提取比例”只是普通情况下所适用的提取比例,鉴于本案的实际情况,提取比例可以进一步提高至50%,甚至更高。第二,一审判决没有查清涉案技术转让费(提成费)是否纳税以及免税的情况,致使计算基数有误,属于认定事实不清。第三,一审判决认定要求上柴公司承担相应阶段职务报酬支付之连带责任的诉求“于法无据”,属于适用法律不当。2004年4月23日以前,“矩形截面柱塞弹簧喷油泵”的专利权人是上柴公司,2004年2月7日以前,“喷油泵挺柱体滚轮锁簧装置”的专利权人是上柴公司,上柴公司应当依法承担相应期间内职务发明报酬纠纷的相应法律责任。第四,因伊维公司与上柴公司的责任致使涉案专利权被宣告无效,造成预期利益损失,“计算报酬时间段”应延伸至涉案专利权的届满期限2011年4月。
EV Company requested the court of second instance to revoke the original judgment and render a new judgment according to law, mainly on the following grounds: (1) EV Company should not pay relevant compensation since the patents at issue had been declared invalid. (2) The drawing percentage as determined in the original judgment for compensation was improper. (3) In the original judgment, EV Company should pay 80% of the identification fee, which was improper. The identification fee should be allocated in proportion to liability. 上诉人伊维公司上诉请求撤销原审判决,并依法改判。主要理由是:第一,涉案专利权已经无效,伊维公司不应支付相关报酬。第二,一审判决报酬按30%提取不合理。第三,一审判决伊维公司承担80%的鉴定费不合理,应根据责任比例分摊。
Weng Like pleaded that the appeal grounds of EV Company lacked legal basis. (1) Weng Like agreed with the original judgment that EV Company should pay service compensation even if the patents at issue had been declared invalid. (2) There was a minimum guarantee and no ceiling for drawing service compensation from patent royalties. (3) In this case, the fault was attributed to EV Company and Shanghai Diesel Company, and EV Company should unquestionably assume the most of the identification fee. 上诉人翁立克答辩称:上诉人伊维公司的上诉请求没有法律依据:一、同意一审判决关于涉案专利权被宣告无效,但伊维公司仍需承担职务报酬的论述。二、专利使用费的提取是下有保底,上不封顶。三、本案过错在于伊维公司和上柴公司,伊维公司当然应当承担大部分鉴定费。
EV Company pleaded that: (1) The two identification reports were scientific and precise, with essentially accurate identification conclusions. (2) EV Company did not act in bad faith for the declaration of invalidation of the patents at issue, and the 30% drawing percentage for compensation was too high. (3) EV Company completely agreed with original judgment that Shanghai Diesel Company should not assume joint and several liability. The appeal of Weng Like should be dismissed for lack of legal basis. 上诉人伊维公司答辩称:一、两份鉴定报告是科学的、严谨的,鉴定结论是基本准确的。二、涉案专利权被宣告无效,并非恶意,按30%比例提取专利使用费比例过高。三、完全同意一审判决对上柴公司不应该承担连带责任的论述。上诉人翁立克的上诉没有法律依据,应当驳回。
Shanghai Diesel Company, which did not file an appeal, stated that it agreed with the defense of EV Company and had not been exempted from taxes. 一审被告上柴公司未提出上诉,陈述其同意上诉人伊维公司的答辩意见,并称自己不存在免税的情况。
In the trial on appeal, neither party submitted any new evidence. 二审中,各方当事人均未提供新的证据。
The Higher People's Court of Shanghai affirmed the facts found by the court of first instance. 上海市高级人民法院经审理,确认了一审查明的事实。
The Higher People's Court of Shanghai, the court of second instance, held that: 上海市高级人民法院二审认为:
1. The appeal grounds of Weng Like 一、关于上诉人翁立克的上诉主张。
The court of first instance employed STCSC to identify the technological issues involved in this case, which was legal in procedure. The identification experts arrived at conclusions based on their expertise and experience after hearing the opinions of all parties and consulting materials relevant to the identification provided by all parties. Therefore, the identification conclusions should be admitted. The argument of Weng Like that both the Technical Identification Report and the Supplementary Identification Report were unreliable and unreasonable should not be supported for his failure to provide sufficient factual and legal basis. According to the provisions of the Detailed Implementation Rules, EV Company had the obligation to pay not less than 10% of the after-tax royalties charged from the licensed exploitation of the patents at issue to Weng Like as compensation. The court of first instance determined the percentage as 30% after an overall analysis based on the actual circumstances of this case. This percentage was legal and reasonable and should be supported. Without providing any new evidence and other proper reasons, Weng Like's request for increasing the percentage to 50% or higher should not be supported. 一审法院委托科咨中心对涉案技术问题进行鉴定,程序合法,鉴定专家在充分听取各方当事人的意见、全面查阅了各方当事人提供的与鉴定相关的材料,并结合鉴定专家的专业知识与经验,所得出的鉴定结论应予以采信。上诉人翁立克称《技术鉴定报告书》与《补充鉴定报告书》不具可靠性和合理性,没有提供充分的事实与法律依据,不予支持。根据专利法实施细则的规定,上诉人伊维公司的义务是从许可实施涉案专利收取的使用费纳税后提取不低于 10%作为报酬支付给翁立克,一审法院结合本案的实际情况,全面分析,将专利使用费提取比例酌定为到30%,符合法律规定,说理得当,应予维持,现翁立克要求将提取比例提高到50%,甚至更高,既没有提交新的证据,又没有其他充分的理由,不予支持。
According to the provisions of the Notice of the Ministry of Finance and State Administration of Taxation on Several Preferential Policies for Enterprise Income Tax (No. 001 [1994] of the MOF and SAT), where the annual net income of an enterprise or public institution from technology transfer and technical consultation, technical services, and technical training related to technology transfer provided in the process of technology transfer was below 300,000 yuan, it shall be exempted from income tax thereon. However, such tax exemption should be conditioned upon a review by the tax authorities. According to the provisions of the Notice of the Ministry of Finance and the State Administration of Taxation on the Taxation Issues in Implementing the Decision of the CPC Central Committee and the State Council on Strengthening Technology Innovation, Developing High Technology, and Realizing Industrialization (No. 273 [1999] of the MOF and SAT), entities and individuals (including foreign-funded enterprises, R&D centers funded by foreign investors, foreign enterprises, and foreign individuals) shall be exempted from business tax on income from technology transfer and technology development as well as related technical consultation and technical services. However, such tax exemption must undergo certain approval procedures. When a taxpayer engaging in technology transfer and development applied for business tax exemption, the taxpayer should, on the basis of a written contract on technology transfer or development, undergo the determination procedure at the local provincial science and technology department, and then, on the basis of the written contract and the determination opinion of the science and technology department, undergo the approval procedure at the local provincial tax authority. In short, tax exemption required a taxpayer to undergo the relevant approval procedure. Weng Like did not provide evidence on such approval in both trials and only considered that the related tax payments and tax exemptions were not clear, based on which he requested an increase of the drawing percentage. This request of Weng Like lacked factual basis and should not be supported. 根据财政部、国家税务总局《关于企业所得税若干优惠政策的通知》(财税[1994] 001)的规定,企业事业单位进行技术转让,以及在技术转让过程中发生的与技术转让有关的技术咨询、技术服务、技术培训的所得,年净收入在30万元以下的,暂免征收所得税。但其前提条件是要经税务机关审核。根据财政部、国家税务总局《关于贯彻落实<中共中央国务院关于加强技术创新,发展高科技,实现产业化的决定>有关税收问题的通知》(财税字[1999]273号)的规定,对单位和个人(包括外商投资企业、外商投资设立的研究开发中心、外国企业和外籍个人)从事技术转让、技术开发业务和与之相关的技术咨询、技术服务业务取得的收入,免征营业税。但免税必须经过审批程序:纳税人从事技术转让、开发业务申请免征营业税时,须持技术转让、开发的书面合同,到纳税人所在地省级科技主管部门进行认定,再持有关的书面合同和科技主管部门审核意见证明报当地省级主管税务机关审核。综上,办理免税事项需要进行相应审核程序。上诉人翁立克一、二审均未提供相关审核方面的证据,只是认为纳税以及免税的情况未查清,但仅凭该点怀疑就要求增加专利使用费提取数额,没有事实根据,不予支持。
Weng Like claimed that Shanghai Diesel Company and EV Company should assume joint and several liability, in respect of which the court of first instance had fully expressed its opinion with accurate reasoning. Therefore, the claim of Weng Like that Shanghai Diesel Company and EV Company should assume joint and several liability should not be supported. 上诉人翁立克要求一审被告上柴公司应当与上诉人伊维公司承担连带责任,对于该项主张,一审法院已经进行了充分地论述,说理准确,应予维持,故对翁立克要求上柴公司与伊维公司承担连带责任的主张,不予支持。
Weng Like requested a percentage of the expected benefits and an extension of the “period for calculating compensation” to April 2011 when the patents at issue expired. In accordance with the Patent Law and the Detailed Implementation Rules, the share of the royalty for a patent as compensation of the inventor or designer should be a share of the realized benefits from the exploitation of the patent, excluding expected benefits. Therefore, this claim of Weng Like lacked legal basis and should not be supported. Weng Like argued that the patents at issue were declared invalid due to the fault of EV Company. Since this case was a civil action, such an argument was not within the extent of trial of this case, and Weng Like may settle such issues in a separate case. 上诉人翁立克要求对预期利益进行分成,将“计算报酬时间段”应延伸至涉案专利的届满期限2011年4月。根据专利法及其实施细则的规定,作为发明人或者设计人报酬的专利使用费分成,是对实施相应专利已经实现利益的分成,并不包括对期待利益的分成。故翁立克的该项主张没有法律依据,不予支持。翁立克认为涉案专利权被宣告无效系上诉人伊维公司的责任,但本案系民事诉讼,该部分内容不在审理范围之内,翁立克可另案解决。
2. The appeal grounds of EV Company 二、关于上诉人伊维公司的上诉主张。
The percentage of royalties as determined in the original judgment to be paid to Weng Like by EV Company was the amount before the patents at issue were declared invalid and was part of the realized royalties of EV Company from the licensed exploitation of the patents at issue. In this case, there were no losses caused to Denso Company by the patentee, EV Company, in bad faith. According to the provisions of the Patent Law, EV Company had no obligation to refund the royalties received before the patents at issue were declared invalid. Therefore, the appeal ground of EV Company for refusing to pay relevant compensation could not stand. 一审判决上诉人伊维公司支付上诉人翁立克的专利使用费分成,是涉案专利被宣告无效之前的专利使用费分成,这些专利使用费是伊维公司已经实现的涉案专利许可使用费,本案不存在专利权人伊维公司的恶意给被许可人电装公司造成损失的情形,根据专利法的规定,伊维公司并无义务返还被许可人电装公司在涉案专利权被宣告无效之前已经收取的专利使用费。伊维公司关于涉案专利权已经无效,伊维公司不应支付相关报酬的上诉理由不能成立。
EV Company argued that it was improper that it should assume 80% of the identification fees as determined in the original judgment. In the opinion of the court of second instance, the drawing percentage was properly adjusted based on the actual circumstances of this case and the allocation of the identification fee was determined at the court's discretion, which complied with law. Therefore, this appeal ground of EV Company was wrong and should not be supported. 上诉人伊维公司上诉称,一审判决中,由伊维公司承担80%的鉴定费用不当,法院认为,一审判决根据本案的具体情况,适当调整专利使用费分成比例,酌情确定鉴定费分配比例,符合法律规定,伊维公司该项上诉理由不成立,不予支持。
JUDGMENT 
In conclusion, the appeals of both Weng Like and EV Company lacked factual and legal basis and should be dismissed. On April 18, 2008, in accordance with Article 153.1(1) of the Civil Procedure Law of the People's Republic of China, the Higher People's Court of Shanghai rendered the following judgment: 综上,上诉人翁立克与上诉人伊维公司的上诉请求均没有事实根据和法律依据,应予驳回。据此,上海市高级人民法院依照 《中华人民共和国民事诉讼法》第一百五十三条第一款第(一)项,于2008年4月18日判决:
“To reject the appeals and sustain the original judgment. 驳回上诉,维持原判。
Weng Like and EV Company shall each responsible for half of the case acceptance fee of 5,446 yuan for the trial on appeal, that is, 2,723 yuan. 本案二审案件受理费人民币5446元,由上诉人翁立克与上诉人伊维公司各半负担人民币2723元。
This judgment shall be final.”

 本判决为终审判决。
 

     
     
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