关键词: 中美合作创新, 专利共有, 风险应对

Abstract: Sharing and utilization of intellectual property rights in cooperative innovation are focused issues in Sino-US scientific and technological cooperation, especially in the context of China-US trade friction. Among all the focused issues, patent co-ownership is a difficult point. The existing literature explores the characteristics of joint patents, main reasons and countermeasures for the legal risks of joint patents. However, it did not analyze risks caused by legal differences in different countries in cross-border scientific and technological cooperation. Based on the practice of US-China Clean Energy Research Center project, this article conducts a questionnaire research and adopts Pareto’s principle, identifies that risks caused by legal differences between the US and China are the main obstacles to Sino-US joint patenting. By comparing both countries’ provisions on patent law and principles in typical cases, this article analyzes the detailed legal risks Chinese participants faced in Sino-US cooperative innovation on joint patent filings, patent rights disposal and dispute settlement. Accordingly, this article establishes an overall mechanism for coping with legal risks of patent co-ownership between the US and Chinese entities, formulates risk handling principles such as making differences and risks clear, keeping the balance of interests and referring to international conventions, and proposes specific countermeasures and suggestions for strategic arrangements in agreement terms negotiation.By taking the US-China Clean Energy Research Center project(CERC) as a case, this article studies the major obstacles of co-owning patents in Sino-US cooperation innovation. Using questionnaires, face-to-face interviews and telephone interviews, it investigates the specific concerns of CERC Chinese participants on patent co-ownership with US counterparts. Analyzing by Pareto principle, it finds out that the legal differences between two countries caused difficulties in joint patent filing. Then, this paper compares legal stipulations and principles of co-ownership in these two countries. It sorts out relevant provisions in Chinese Patent Law, General Provisions of the Civil Law, Civil procedure law and the Supreme Court Judicial Interpretation, and compares to provisions in America Invents Act (AIA, 35 U.S.C.) and important principles in typical precedents such as Talbot. V. Quaker-State Oil Refining Co.; Schering Corp. V. Roussel-UCLAF SA; and Willingham V. Star Cutter Co.. From the aspects of “right to file a joint patent”, “right to disposal common interests” and “right to file a lawsuit”, it concludes the differences between these two countries. Further, it discusses the risks that may arise. For example, the “omitted inventor” system in US patent law enables US entities to file a joint patent application without Chinese co-inventor’s permission and raises the risk of interests damage for Chinese counterpart. According to Chinese Patent law, no sole license or exclusive license may be granted to a third party without permission of joint patentees. However, it is not limited in the United States. This may limit the implementation of patent right in China. In addition, Chinese law allows a party of joint patent holder to sue on its own. But the US law does not. It makes it more difficult for Chinese parties to claim their joint patent rights in the United States alone.Accordingly, this article proposes some countermeasures to deal with the above obstacles and risks. It establishes an overall mechanism for coping with legal risks of patent co-ownership between the US and Chinese entities. Then, it formulates risk handling principles such as making differences and risks clear, keeping the balance of interests and referring to international conventions. In addition, it proposes specific countermeasures and suggestions for strategic arrangements in agreement terms negotiation.First, in the case of filing a joint patent application, it suggests to stipulate in the agreement that, “It should be agreed that an application for a joint patent can only be filed if the parties in the United States and China jointly agree”. In addition, it may also be agreed that one party is responsible for completing the patent application and maintenance matters in its own country and paying the relevant expenses, another party shall provide necessary assistance, and then costs of the application shall be shared after the patent authorization result comes out.Second, when licensing joint patent right, both parties shall agree on the licensing type, income distribution and rights of disposal. It recommends stipulating that “In order to protect the interests of all parties, a co-owner may grant a non-exclusive license to the third party to implement the joint patent without the consent of other co-owners, but the third party shall have no competitive relationship with other patent co-owners. Besides, exclusive license, sole-license and sub-license shall be subject to the unanimous consent of all co-owners. In case of violation, the party who grants the above three type license shall pay for the losses incurred."Third,the internal disputes settlement method between co-owners shall be stipulated, and the external disputes settlement method for the occurrence of external infringement shall be clearly defined. In response to the infringement of joint patent rights by external third parties, it suggests to stipulate as follows: (1) A co-owner shall be allowed to file a lawsuit on its own, and other co-owners may waive the substantive rights without participating in the lawsuit, but shall not prevent the prosecution; (2) The party who files the lawsuit shall afford the costs of the lawsuit, enjoy the compensation received, or bear the loss.In summary, this article eventually establishes a legal-risk-coping mechanism with proposed agreement arrangements to reduce the risks raised by legal differences. It points out at the end that through this way, it could reduce legal risk, enhance mutual trust, and promote cooperative innovation and achievements sharing.

Key words: Sino-US cooperative innovation, patent co-ownership, risk prevention