Nevertheless, there has been ongoing debate over what type of civil litigation should be brought for disputes over patent ownership. For example, the Judicial Yuan's Intellectual Property Law Seminar in 2013 concluded that a plaintiff is allowed to request the transfer of patent rights, while the Judicial Yuan's Intellectual Property Law Seminar in 2012 held a completely different view. In recent judgments rendered by the Intellectual Property and Commercial Court ("IP Court"), the IP Court held that the plaintiff shall be only allowed to bring a declaratory lawsuit confirming the ownership of patent application right.

 

The Judgment No. 112-Min-Chuan-Su-Tzu-40 rendered by the IP Court on March 20, 2024 first elaborates the definition of the patent applicant, which refers to the inventor or creator. The "inventor" refers to the person who actually conducts research and invents, while the "creator" refers to the person who actually conducts research and creates utility models. Both the inventor and the creator must have made substantial contributions to the technical features recorded in the patent claims. They must have conceived the idea for solving the problem or achieving the effect of the invention or utility model, and then proposed specific technical means to achieve that idea. The IP Court further categorized common causes of action over patent ownership, including plagiarism of creations, or violation of patent ownership agreements. The facts to be proved are different for different causes of action. However, the common fact to be proved is whether the creation claimed by the claimant is substantially the same as the patent in dispute. The term "substantially the same" should not be limited to the formal written or expressed content being the same. If the claimed creation is something that a person having ordinary skill in the art ("PHOSITA") can determine to describe the same subject matter, or if the difference does not go beyond the content of the claimant's technical means to solve the technical problem or achieve the effect, it should still be considered "substantially the same." This includes novelty, the prior art effect of earlier applications, and the situation where the technical means for solving the problem or achieving the effect are not substantially impacted based on the use of commonly used or well-known technology, or based on the selection of the ordinary skills. However, it does not include non-obviousness. In addition, when determining whether the claimed creation and the patent in dispute are substantially the same, it is necessary to carefully examine and determine the similarities and differences between the technical content owned by the claimant and the technology recorded in the patent claims.

 

Subsequently, the IP Court, based on the above-mentioned standards, carefully assessed each claim to determine whether the claimant made a substantial contribution. Finally, it was confirmed that the claimant only made a substantial contribution to certain technical features. Therefore, it was determined that the claimant should co-own the patent application right with the defendant, and the patent application right was confirmed to be jointly owned by both parties. However, regarding the claimant's requests for "confirmation of the ownership of the patent right" and "transfer of the patent right," the IP Court cited the Supreme Court's Civil Judgment No. 109-Tai-Shang-Tzu-2155, and held that the patent was applied for by the defendant to the TIPO, and then the patent right was granted to the defendant after examination and approval by the TIPO. The TIPO did not grant the disputed patent right to the plaintiff. Therefore, the plaintiff cannot request for confirmation of the ownership of the patent right or request for transfer of the patent right.

 

Similar views were also adopted in the Judgment No. 112-Min-Chuan-Su-Tzu-26 rendered by the IP Court on May 8, 2024, which confirmed the claimant as the patent applicant for the design patent. However, it also cited the Supreme Court's Civil Judgment No. 109-Tai-Shang-Tzu-2155, which held that the TIPO did not grant the disputed patent right to the plaintiff, and therefore, the plaintiff cannot request for confirmation of the ownership of the patent right or request for transfer of the patent right.

 

The above two judgments of the IP Court have recognized that the claimant can only request confirmation of the ownership of the patent application right. Both such judgments are silent on the issues related the ownership of the patent right or transfer of the patent right. However, Chapters 11 and 19 of the TIPO's Patent Examination Guidelines respectively provide that "in case of dispute over the ownership of the patent application right, and where the patent application right holder is confirmed through mediation, arbitration, or judgment procedures" and "in case of dispute over the ownership of the patent right, and where the patent right holder is confirmed through mediation, arbitration, or judgment procedures," relevant evidence may be submitted to apply for a change of the right holder's name through assignment registration. In other words, the TIPO seems to believe that the patent right holder's name can be changed through the declaratory judgement of confirming the ownership of the patent right. Such opinion appears to differ from the aforementioned judgments' refusal to address the ownership of patent rights. It is worth observing to see how this will develop in practice.