Newsletter
Company Payment of Patent Application Fees and Annual Fees Are Irrelevant to Judgment of Service Invention
Disputes over patent ownership often arise between companies and R&D personnel. Such disputes can involve disagreement over whether the invention is a service invention, and whether any specific agreements exist governing patent ownership between the two parties (for example, whether one party applies for the patent in the name of the other party).
Article 7, Paragraphs 1 and 2, of the Taiwan Patent Act expressly stipulate that a "service invention" refers to an invention created by an employee in the course of their duties. The right to apply for a patent and the patent right thereof shall be vested in the employer, who shall remunerate the employee reasonably. If an agreement is in place providing otherwise, such agreement shall prevail. Consequently, upon dispute over patent ownership between companies and R&D personnel, the first thing is to determine whether the invention under dispute is a "service invention." If the company can prove that the invention indeed is, then the right to apply for a patent and patent rights thereof shall be vested in the company in principle.
With regard to the question of whether a company having paid for patent application and annual fees can serve as evidence for a service invention, opposing views have been presented. According to 2020 Min-Zhuan-Su No. 107 Civil Judgment rendered by the Intellectual Property Court on February, 26, 2021, the facts—such as the company's payment of application fees and annual fees, and the employees' application for and acquisition of the patent at issue during their period of employment—are not necessarily relevant to the question of whether the invention was created by employees in the performance of duties. What the company should offer is the R&D information with regard to the patent at issue. The judgment further elaborates that, if the company is to make relevant claims and there exists an agreement between the company and employees governing use of the employee's name for patent registration, the company should offer relevant evidence accordingly.
Therefore, in terms of management, a company should diligently preserve all evidence related to the actual tasks and R&D efforts by employees utilizing company resources and facilities. If the company has made any arrangements with employees, a written record thereof is critical to furnish favorable evidence in the event of disputes over patent rights.