Disputes over patent ownership often arise among several people engaged in joint research and development (R&D) when only some of these people are registered as inventors and patent applicants during the patent application process. When these disputes occur, how should a person whose legitimate rights and interests have been infringed prove that they are a joint inventor of the patent at issue?

 

Regarding the determination of the inventor(s) of a patent in dispute, the Intellectual Property and Commercial Court (hereinafter referred to as the "IP Court") previously provided the following criteria: "An inventor refers to a natural person who actually engages in the research and invention of a patent. This person must have substantially contributed to the technical features recorded in the claim(s). Where a patent contains several claims, an inventor thereof is not necessarily required to have contributed to each of the claims. Instead, an inventor who has contributed to only one or several of the claims can still be indicated as a joint inventor. A 'person who has substantially contributed' refers to someone who has performed mental creation to complete an invention. Such a person forms conceptions of the problem to be solved or the efficacy to be achieved by the invention and proposes a specific technical means that can achieve said conceptions" (see IP Court 2013 Min-Zhuan-Shang-Zi No. 23 Civil Judgment).

 

As the Supreme Court further elaborates, "A joint inventor must prove that they have substantially contributed to the conception of the claim(s) in a patent with clear and convincing evidence. If a person simply provides ordinary skill in the art or explains the relevant art to the inventor(s) without a specific conception of the portfolio of the patent application as a whole or if a person merely implements the conception of the inventor(s), or even in the case that a person solely proposes tentative ideas; gives guidance or heuristic opinions on subject matter; or purely takes charge of organizing, leading, and preparing the work in the process of invention, such a person has failed to create the specific content of an invention and shall be deemed as neither an inventor nor a joint inventor" (see Supreme Court 2015 Tai-Shang-Zi No. 2077 Civil Ruling). 

 

Consequently, in judicial practice, determining who an inventor is often involves comparing the "technical features recorded in the claim(s) of a patent" and the "evidence of creation prior to the patent application" presented by the person(s) claiming to be the joint inventor(s) (hereinafter referred to as the "requester(s)"). Where the technical features involved are disclosed through the evidence of creation presented by the requester(s), the requester(s) may be determined to have substantially contributed to said technical features. To illustrate this point, an IP Court civil judgment rendered on January 12, 2023 determined that the requestor was a joint inventor of the patent involved because the Court recognized that several e-mails submitted by the requestor indeed contained technical plans related to the technical features of the patent. The Court consequently arbitrated that the requestor had substantially contributed to the claims in the patent (see IP Court 2022 Min-Zhuan-Shang-Zi No. 24 Civil Judgment). 

 

However, where the court determines that the evidence submitted by the requestor (regardless of whether this evidence is online chat records, meeting minutes, e-mails, technical documents, etc.) records content that is irrelevant to or significantly different from the technical features involved and is not a creation of the patent in dispute used to solve a problem or achieve efficacy, the requestor may not be allowed to claim that they are a joint inventor. This is because the aforesaid evidence may fail to prove that the requestor has substantially contributed to the patent in dispute (see IP Court 2022 Min-Zhuan-Shang-Zi No. 16 Civil Judgment).

 

Accordingly, where a joint invention is involved, each substantial inventor thereof should properly preserve their evidence of creation related to the technical content of the patent. This evidence will prove useful in supporting the facts of substantial contribution in the event of disputes over patent ownership.