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Against Whom Shall an Action of Declaratory Judgment Confirming a Patent Right Ownership Dispute Be Initiated?
According to the beginning of Paragraph 1 of Article 247 of the Taiwan Code of Civil Procedure, “an action for a declaratory judgment confirming a legal relation may not be initiated unless the plaintiff has immediate legal interests in demanding such judgment.” The so-called immediate legal interests in demanding such declaratory judgment means that the existence of the legal relationship is unclear, so the plaintiff subjectively believes that his legal status is uncertain, and the uncertain status can be removed by the declaratory judgment. However, a legal relationship is confirmed by the court's judgement but the uncertain status still remains it would be difficult to recognize ththe immediate legal interests in demanding such declaratory judgment. In the 2020 Min Zhuan SuZi No. 76 civil judgment rendered on July 31, 2020, the Taiwan Intellectual Property Court (IPC) denied the action of declaratory judgment initiated by the plaintiff for confirming patent right ownership because the IPC considered that the plaintiff chose a wrong defendant to file the lawsuit, the plaintiff would not gain any legal interest in demanding the declaratory judgment even if the plaintiff wins the lawsuit.
In this case, the plaintiff alleged,
When the defendant performed his duties as a general manager of the plaintiff, the plaintiff's employees developed a kind of fitness equipment. According to Article 7 of the Taiwan Patent Act, both the patent right and the patent application right for an invention, a utility model or a design made by an employee in the course of performing his/her duties, shall be vested in his/her employer, here the plaintiff in this case. However, the defendant applied for the patent of the fitness equipment in his own name in several countries, including Taiwan. Later on, the defendant further licensed a third party, Company A, to exploit the patented invention at dispute, which in turn caused Company A to issue a to the plaintiff, alleging that the fitness equipment sold by the plaintiff had infringed the patent right of the patent at dispute.
Hence, the plaintiff initiated an action of declaratory judgment against the defendant and requested confirmation that the patent right and the patent application right of the patent at dispute are vested in the plaintiff.
At the trial, the IPC determined that the legal status is uncertain in the plaintiff’s subjective belief: who owns the patent right, the plaintiff, the defendant or Company A? Nevertheless, as the plaintiff in this case only initiated an action of declaratory judgment against the defendant, the effect of the said declaratory judgment would only be valid for the plaintiff and the defendant, not for Company A. Even if the foregoing declaratory judgment were rendered by the court and became final and binding, the plaintiff the Company A could still argue the ownership of the patent at dispute. he plaintiff cannot remove his uncertain legal status concerning the patent right by the said declaratory judgment against the defendant. Therefore, the action of declaratory judgment initiated by the plaintiff shall be denied because the plaintiff did not have immediate legal interests in demanding such judgment, and this case was ruled as being without merit and hence denied.