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If Invalidation of a Patent is to be Sought based on the Issue of Ownership, Should Such Issue Be Resolved by a Civil Judgment Beforehand?
Taiwan's Patent Act clearly stipulates that when the registered patentee is not an actual owner of the right to apply for a respective patent, the interested party may request a cancellation action against the patent. On the other hand, the Taiwan Patent Examination Guidelines state
"the TIPO (Taiwan Intellectual Property Office) shall examine disputes concerning the rights to apply for patents only on the formality basis of the reasons and evidence provided by the petitioner of the cancellation action,"
"determination of private rights relating to ownership disputes involves investigation on matter of fact and is not governed by the TIPO; if interested parties have doubts or consider their rights and interests to have been infringed upon, they shall resort to judicial remedy for resolving said disputes," and
"where the petitioner of the cancellation action claims that the patentee has plagiarized its creation, they shall produce evidence such as decisions obtained from mediation, arbitration, or court procedures in accordance with relevant laws or regulations, since the foregoing dispute is not governed by the TIPO and involves matters of fact."
Accordingly, it seems unlikely that the TIPO will conduct a substantial factual investigation into a dispute over the ownership of patent application rights.
In past rulings, the IP Court (Intellectual Property Court) also expressed the opinion that civil courts are more capable of determining the ownership of patent application rights than the patent office. For example, a 2015 Min Zhuan Shang Zi No. 22 judgment rendered by the IP Court on November 26, 2015 states that
"except when accompanying documentary exhibits submitted by the petitioner of the cancellation action are sufficient to overthrow the existing utility model patentee as the owner of the right to apply for a utility model patent, the patent office does not usually get involved with such disputes in practice. Rather, the patent office requires the petitioner of the cancellation action to submit mediation, arbitration, or judgment documents with binding effect to apply for name change of the actual owner (see 2000 Pan Zi No. 1752 judgment rendered by the Supreme Administrative Court). Accordingly, if there is a dispute over the ownership of patent application rights, the parties concerned may file for civil action, after which, when the civil court determines the ownership of patent application rights, the actual owner thereof can apply to change the name of the owner by submitting the binding judgment to the TIPO."
However, the Supreme Administrative Court seemed to express a different position in its 2020 Pan Zi No. 325 judgment rendered on June 11, 2020.
In this case, both Party A and Party B are manufacturers of optical components, and the latter was the patentee of a relevant utility model patent (hereinafter the subject patent). Party A filed a cancellation action on the grounds that the subject patent, which was invented by third parties under employment of Party A, constituted Party A's trade secrets, and hence Party B did not have the right to apply for a utility model patent for it. The TIPO rejected Party A's request for cancellation, holding that the evidence produced by Party A was insufficient to demonstrate their application rights for the subject patent. Disagreeing with the TIPO decision, Party A subsequently filed an administrative appeal with the MOEA (Ministry of Economic Affairs), which was also rejected. Thereafter, Party A filed the foregoing administrative suit with the IP Court.
Party A prevailed in the first-instance judgment (2017 Xing Zhuan Su Zi No. 72 judgment, dated April 18, 2019). The IP Court ordered the defendant, the TIPO, to render a decision that "the cancellation against Claims 1 to 5 is established, and the patent rights thereto shall be revoked." In its judgment, the IP Court stated:
(1) The Patent Act only stipulates that cancellation based on the ownership issue shall be requested by an interested party, but does not require that only a party approved through civil suits to be the actual owner has the authority to initiate a cancellation.
(2) The main dispute concerning such kind of cancellation action is not whether Party A owns the right to apply for a patent, but whether Party B is the legitimate owner of the right. As the evidence submitted by Party A has already disclosed the main technical features of the subject patent, and Party B cannot prove its invention history, Party B shall therefore not be the legitimate owner of the patent application right.
Despite subsequent appeal filed by Party B, the Supreme Administrative Court sustained the IP Court's judgment in its 2020 Pan Zi No. 325 judgment:
"Regarding whether the registered patentee is not the actual owner of the right to apply for the utility model patent and thus said patent should be revoked, the petitioner of the cancellation action shall provide evidence specifying the creation history of said utility model patent. The patent office shall examine whether there is any substantial difference between the technical idea contained in the claim(s) of the subject patent and the creative conception, technical means and efficacy disclosed in the evidence. If there is no substantial difference therebetween, and the utility model patentee further fails to present a reasonable process for creating the technical idea contained in the claim(s) of the subject patent, it will be considered proven that said utility model patentee does not own the right to apply for a patent. In this case, even though the evidence submitted by the cancellation petitioner is not fully identical in form to the claim(s) or drawing(s) of the subject patent specification, the subject patent shall still be invalidated."