When disputes over patent ownership arise, the court's judgment is frequently based on whether each disputing party’s role in the invention constitutes a substantial contribution. In the Supreme Court (104) Tai-Shang-Zi No. 2077 Civil Ruling, the Supreme Court explained the concept of substantial contribution, stating, "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, merely implements the conception of the inventor(s), solely proposes tentative ideas, gives guidance or inspiring opinions on subject matter, or purely takes charge of organizing, leading, and preparing the work during the invention process, such person has failed to create the specific content of an invention and shall be deemed as neither an inventor nor a joint inventor."

 

During the patent application process, if a patent applicant conducts additional relevant experiments to overcome doubts of the Intellectual Property Office (hereinafter referred to as the "IPO") regarding the invention's effectiveness or inventive step, and if such applicant is granted the patent after submitting the experimental data, even though the original concept of the invention applied for was not entirely contributed by the patent applicant, whether such applicant is determined, based on such supplementary experiments, to have made a partial substantive contribution to the scope of the patent is a matter of dispute. The Intellectual Property and Commercial Court (hereinafter the "IP Court"), in the (114) Min-Juan-Su-Zi No. 36 judgment dated April 22, 2026, provided a noteworthy interpretation to the question at issue.

 

In the abovementioned case, the Plaintiff claimed to have independently developed, in 2021, an anti-allergy product containing native Taiwan Makauy (hereinafter referred to as the "Disputed Product"). At that time, the Defendant was seeking raw materials for anti-itch products. Accordingly, the Defendant inquired with the Plaintiff through a third party. The Plaintiff then provided the third party with samples of the Disputed Product, along with information on its main components and their proportions. The third party subsequently forwarded such materials to the Defendant. Subsequently, the Defendant changed the name of the Disputed Product and, without the Plaintiff’s consent or authorization, filed a patent application for the renamed product with the IPO and was granted the patent (hereinafter referred to as the "Disputed Patent").

 

After becoming aware of such situation, the Plaintiff considered that the composition formula, core technology, and research and development process of the Disputed Product provided to the Defendant are identical to the composition components and extraction amounts covered by the patent claims of the Disputed Patent, with the only difference being the product name. Therefore, the Plaintiff asserted that it had made an independent and substantive contribution to the Disputed Patent and was the rightful patent applicant. Consequently, the Plaintiff filed a suit with the IP Court seeking confirmation, primarily claiming sole ownership of the patent application rights, or alternatively, joint ownership between the two Parties.

 

In the (114) Min-Juan-Su-Zi No. 36 judgment, the IP Court first clarified that the determination of the right to apply for a patent is based on whether the inventor or creator has made a substantial contribution to the technical features described within the scope of the patent application. After conducting a detailed comparison of the components of the Disputed Product and those of the Disputed Patent, the court concluded that the core ingredients of both include Makauy (also known as wild pepper), clove, sandalwood, and mint. (The Disputed Patent substitutes prickly ash and spicy mint (different species within the same genus) for the prickly ash and mint used in the Disputed Product.) Although the proportions are not exactly the same, they still fall within the ranges defined by the Disputed Patent. Thus, the IP Court recognized that the Plaintiff had indeed made a substantial contribution to the Disputed Patent.

 

However, the IP Court also acknowledged that the Disputed Patent was initially rejected by the IPO during the preliminary examination stage due to a lack of efficacy test data, resulting in a finding of insufficient inventive step. Subsequently, the Defendant submitted a "Human Efficacy Evaluation Test Report" (hereinafter the "SGS Test Report") with its request for reexamination, thereby satisfying the previously unmet inventive step requirement, resulting in the patent eventually being granted. The IP Court determined that the SGS Test Report constituted a human trial involving substantive considerations such as trial design, experimental procedures, and efficacy evaluation, rather than merely administrative or auxiliary tasks. The SGS Test Report was thus deemed an indispensable part of the Disputed Patent. Furthermore, the IP Court rejected the Plaintiff’s claim that the Defendant merely commissioned another company to prepare the SGS Test Report based on data provided by the Plaintiff, holding that such contribution related to an already completed invention and did not constitute a substantive contribution.

 

Ultimately, the IP Court determined that the Plaintiff made a partial substantive contribution to the key components and certain proportions of the technical features claimed in the Disputed Patent, thereby qualifying as a co-inventor of the patent. However, the Plaintiff did not make any substantive contribution to the human efficacy test data required for the patent application. Therefore, the IP Court ruled that the patent application rights of the Disputed Patent should be jointly owned by both parties.

 

Based on the above, while the first conceiver indeed has made a substantive contribution, if the completeness of the invention relies on supplementary experiments or critical evidence provided by another party, both parties should jointly hold the rights to the patent application.