When there is a dispute over patent ownership, even if the plaintiff can prove themselves to be the true inventor, can the court declare them as the patentee? Or can the court order the defendant to transfer the patent rights to the plaintiff? The Intellectual Property and Commercial Court took an opposing view in its 111(2022)-Min-Chuan-Su No.46 Judgment issued on July 20, 2023.

 

In this case, defendant A was originally an employee of the plaintiff (B Company). After leaving the company in 2019, defendant A worked for defendant C Company. Subsequently, defendant C Company, with defendant A as the inventor, applied for the patent at issue with the Intellectual Property Office ("IPO") in 2020 and obtained the patent right for said patent. The plaintiff thus claimed that defendant C Company used their technical information to apply for the patent at issue and requested the court to declare the plaintiff as the patent applicant and owner. The plaintiff also requested to have the patent at issue transferred to it from defendant C Company based on Article 179 of the Civil Code on unjust enrichment.

 

The court determined that the content of the claims of the patent at issue is substantially similar to the technical content in which defendant A was involved in research and development during his employment with the plaintiff B Company. It was also found that defendant A was aware of and had contact with the aforementioned technology during his employment with plaintiff B Company. It is therefore considered that defendant A's conception of the patent invention is derived from the said technical content, and thus the technology is an invention completed by defendant A and plaintiff B Company's employees during their employment, in accordance with Article 7 of the Patent Act. Therefore, the plaintiff's request to declare its status as the "applicant" of the patent at issue is reasonable and should be allowed.

 

However, the plaintiff's request for declaration of the patentee and transfer of the patent rights was rejected by the court, on the grounds that "patent rights" are approved by the patent authority in the exercise of administrative power, and the court should not exercise administrative acts on behalf of the patent authority (refer to the Supreme Court 109(2020) Tai-Shang No. 2155 Civil Judgment). In other words, the patentee must apply to the IPO for the patent, and only after substantive or formal examination and approval by the IPO can the patent rights be obtained.

 

As the plaintiff did not obtain the patent right from the IPO in accordance with the law, nor explain the legal provisions by which it can directly obtain the patent right of the patent at issue, the court deems that its direct claim to declare itself as the owner of the patent right is not justified and should not be allowed. Moreover, since the plaintiff is not the patent right holder of the patent at issue, it cannot be determined that the damages it suffered are related to the disputed patent right, and therefore the plaintiff cannot request the return of the disputed patent right in accordance with Article 179 of the Civil Code.

 

In the 110(2021)-Tai-Shang No. 585 Civil Judgment issued on July 4, 2023, the Supreme Court also elaborates on the "patent right" as the exclusive authority of the patent authority to approve the patent application, which is based on the exercise of administrative power. Therefore, the true inventor who has not been approved by the patent authority does not automatically obtain the patent right for creating a specific technological concept. In the event of a dispute over the ownership of the patent right, the true inventor should, in accordance with Article 35, Paragraph 1 of the Patent Act, file an invalidation action within 2 years after the publication date of the patent, based on the grounds specified in Article 71, Paragraph 1, Item 3, i.e., that the patentee is not the applicant for the invention patent. After the invalidation decision revoking the patent has become final and binding, the same invention can be applied for a patent within 2 months, with the filing date of the revoked patent as the filing date for the newly filed patent application.

 

Therefore, according to current practice, in cases of disputes over the ownership of "patent rights," the true inventor should refer to the Patent Act and pay special attention to relevant provisions and time limits. However, the current draft amendment to the Patent Act proposes to remove Article 71, Paragraph 1, Item 3 (on the grounds that the IPO is unable to judge disputes over private rights and that they should be resolved through civil litigation). If the amendment is passed, substantive disputes involving the ownership of "patent application rights" will be returned to the courts for resolution. However, it is worthwhile to observe the subsequent legislative dynamics and the courts' responses to whether the existing practical position regarding the "patent rights" involving the exercise of administrative rights will still be maintained.