Newsletter
In Disputes Over Patent Application and Ownership Rights, the Deciding Factor Should Be the Substantive Technical Contributions of the Persons Involved
Paragraph 2, Article 5 of the Patent Act states, “Subject to provisions of this Act otherwise prescribed or the covenants otherwise set forth in an agreement, the term ‘the owner of the right to apply for a patent’ shall mean an inventor, a utility model creator, a designer, or the assignee or successor thereof.” For inventions, utility models, and designs created during the performance of duties by a company employee, Paragraph 1 of Article 7 stipulates that the patent rights and patent application rights shall, in principle, belong to the employer, who shall compensate the employee appropriately; however, should there be an existing agreement providing otherwise, said agreement shall prevail. In situations where fund providers appoint another party to conduct research and development, Paragraph 3, Article 7 of the Patent Act explicitly states that “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. However, the fund provider shall be entitled to exploit such invention, utility model or design.”
Given that the nature of patent rights is similar to that of property rights under private law, if a dispute arises regarding the ownership of patent application and patent rights after the publication of the patent in question, the genuine owner of the rights to apply for them may choose to sue for unjust enrichment, infringement, non-performance of a debt, etc., and request the non-genuine patent applicant to return the patent rights in order to protect the former’s rights. (Reference: No. 2 of the Proposal and Discussion Results of the 2013 Judicial Yuan Intellectual Property Law Symposium on Civil Litigation and Related Issues.) In the Intellectual Property Court's Judgment of the 2018 Min Zhuan Shang Zi No. 13 on May 14, 2020, it is recognized that ownership is unclear when there is a dispute between parties over the ownership of patent application and patent rights and that this issue can be resolved through a decision. Therefore, a person who claims to be the genuine owner of the right to apply for a patent and files a lawsuit has the interest of declaratory judgment and is entitled to file a lawsuit.
The main point of contention in litigations over the ownership of patent rights is proving who the genuine owner of the patent application and patent rights is. In the aforementioned Intellectual Property Court's Judgment of the 2018 Min Zhuan Shang Zi No. 13, it was stated that in a dispute over the ownership of patent rights and the right to apply for a patent, the first thing to do is to confirm the results of the research and development during the collaboration of the parties involved, and then compare them with the technical feature of the patent in question to confirm whether the technical feature of the two is the same. If patent claims are found to be different, then it shall be determined whether the parties have made substantive contributions to the different parts of the patent in question. In accordance with the aforementioned standard, the Intellectual Property Court inspects the evidence submitted by the appellant and assesses whether they made technical contributions to all the technical features in the claims of the patent in question. Then the court determines if the right to apply for the patent and the patent rights belong to the appellant.
To prove ownership of these rights, the person who claims to be the genuine holder of the right to apply for the patent should provide relevant evidence, including research background, invention notes, drawings of the invention, records of invention ideas, e-mail correspondence, etc. The court evaluates the relevant facts and the history of the patent to conduct a comprehensive review and make a judgment. If the genuine owner of the right to apply for a patent engages in joint R&D with an agency, organization, or business entity, they must specify patent ownership in the cooperation agreement and state the scope of the joint R&D. For example, does it only include the technology’s method of preparation, or does it also include equipment and related machinery? Furthermore, they need to keep detailed R&D records to avoid disputes over patent application rights and ownership in the future.