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Determination of Ownership of the Right to Apply for a Jointly Developed Patent


Hsiu-Ru Chien/Yu-June Tseng

According to Article 7, Paragraph 3 of Taiwan's Patent Act, "When a fund provider appoints another party to conduct research and development, the ownership of the right to apply for a patent and the patent right in connection with the outcome of such research and development shall be vested in the party as mutually agreed upon in an agreement between both parties, or such rights shall be vested in the inventor, utility model creator or designer in the absence of such agreement."  Regarding a scenario in which no agreement between a fund provider and an appointed counterpart is made on the ownership of the R & D results that are actually jointly completed by both parties, the Intellectual Property Court expressed its judicial view in the 108 Min-Zhuan-Shang-Zi No. 5 civil case judgment of December 12, 2019, in which ownership of the right to apply for a jointly developed patent shall be vested.
 
The plaintiff in said case claimed to have been appointed by the defendant to conduct an R & D project entitled "The Study on the Design and Development of the Ultrasonic Suspended Load Concentration and Flow Velocity Measuring Instrument for Reservoir."  No agreement was made between the parties on the ownership of resulting patent application rights.  Ultimately, the defendant proceeded to file a patent application with the Taiwan Intellectual Property Office and obtained an invention patent for the aforesaid research results.  As a result, the plaintiff filed a civil lawsuit in the Intellectual Property Court, requesting that the Court find said patent right to be jointly owned by both parties.  The plaintiff won the lawsuit (disclosed by the aforesaid judgment) in the Intellectual Property Court of Second Instance finally and bindingly.
 
The Intellectual Property Court first expounded in its judgment the principle of determining ownership of the patent right:  "The inventor has made substantial contribution to the technical features recorded in the scope of the application for patent.  The one who has made substantial contribution refers to the person who has made creation for the purpose of invention, and ideas about the problems to be solved or the effects to be achieved by the invention, and then to propose specific and achievable technical means to fulfill the conceptions.  While it is not necessary for an inventor to claim contribution to each claim in the disclosure, they can express their intent as a joint inventor as long as they have contributed to at least one claim therein" (refer to the Supreme Court's 104 Tai-Shang-Zi No. 2077 civil case judgment.)
 
The plaintiff claimed that the core technology of the patent in dispute was developed by its employee, presenting evidence such as research record books and e-mail correspondence with the defendant.  The Court held that the employee of the plaintiff made a substantial contribution to the invention and conception of the claims in dispute after perusing the evidence.  Although the plaintiff could not prove that the employee had substantially contributed to the other claims, the employee could at least be listed as a joint inventor of the patent.  Moreover, as the employee's substantial contribution to the invention was made as part of their duties at the plaintiff's company, the Court accordingly adjudicated that rights to the patent at dispute shall be jointly owned by the employer, namely the plaintiff, and the defendant according to the principle defined in Article 7 of Taiwan's Patent Act: "Where an invention, a utility model or a design is made by an employee in the course of performing his/her duties, the right to apply for a patent and the patent right thereof shall be vested in his/her employer."
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