01.15.2021
Pending Amendment to Article 101 of the Taiwan Patent Act
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BY MENG-HSUEH KU
Amendment
Currently enforced Article 10 (Agreement on ownership)
Where an agreement has been reached by an employer and its employee regarding a dispute over attribution of right(s) as set forth in Articles 7 and 8 of this Act, the employer or employee concerned may file a request along with relevant document(s) of proof with the Specific Patent Agency for change of ownership of the right(s) involved. The Specific Patent Agency may, as it deems necessary, notify the parties involved to submit document(s) relevant to any mediation, arbitration or court judgment rendered in accordance with other laws and regulations.
Pending Amendment to Article 10
Where there are disputes over the right to apply for a patent or the ownership of patent rights, the parties concerned may file a request, together with a final and binding verdict of the court or relevant document(s) that are sufficient to prove ownership of the right, with the Specific Patent Agency for change of ownership of the right(s) involved.
The Specific Patent Agency may, as it deems necessary, notify the parties involved to submit document(s) relevant to any mediation, arbitration or court judgment rendered in accordance with other laws and regulations.
Objective
The currently enforced Article 712 Paragraph 1, Item 3 of the Taiwan Patent Act concerns violations of joint applications and impersonations of owners of the right to apply for a patent as grounds for invalidation, and these grounds both belong to disputes over the right to apply for a patent and ownership of patent rights.
According to a judgement of the Supreme Administrative Court 89 (2000) Pan Zi No. 1752, although, based on the information submitted by the applicant, the Specific Patent Agency considers that the applicant has the right to apply for a patent and then approves, there is no legal basis for the Specific Patent Agency to make a judgment if disputes have arisen regarding ownership of the right to apply.
In addition, according to a judgment of the Intellectual Property Court 101 (2012)
Min Zhuan Shang Zi No. 2, although whether an application is granted a patent by the Specific Patent Agency is a matter of public law within the discretion conferred by law based on patent regulations and professional knowledge, before the application is pending at the Specific Patent Agency, who is the genuine patentee and who can file an application often involves relationships under civil law or disputes between private parties, and the clarification of such disputes about rights and interests often may not be determined by the Specific Patent Agency.
For this reason, the pending amendment removes these grounds for invalidation, and stipulates that disputes over patent application rights and ownership of patent rights should be settled by civil litigation.
Disputes concerning patent application rights and ownership of patent rights often involve various relationships under civil law or disputes between private parties, such as employment, contracting, inheritance, impersonation, plagiarism, or funding in research and development, etc. where the employment relationship is only one of the disputes over ownership of patent rights.
The currently enforced regulation is expected to be amended to address such issues.
1 Notice to Amend Article 10
https://topic.tipo.gov.tw/patents-tw/cp-751-884440-8199b-101.html
https://topic.tipo.gov.tw/patents-tw/dl-276565-9f8c8722bcc14dbb9e035c88fa12e539.html
2 Patent-Act 2019: https://www.tipo.gov.tw/en/dl-125160-e1872caf01df4cbb89dbe8109894d3e0.html
Amendment
Currently enforced Article 10 (Agreement on ownership)
Where an agreement has been reached by an employer and its employee regarding a dispute over attribution of right(s) as set forth in Articles 7 and 8 of this Act, the employer or employee concerned may file a request along with relevant document(s) of proof with the Specific Patent Agency for change of ownership of the right(s) involved. The Specific Patent Agency may, as it deems necessary, notify the parties involved to submit document(s) relevant to any mediation, arbitration or court judgment rendered in accordance with other laws and regulations.
Pending Amendment to Article 10
Where there are disputes over the right to apply for a patent or the ownership of patent rights, the parties concerned may file a request, together with a final and binding verdict of the court or relevant document(s) that are sufficient to prove ownership of the right, with the Specific Patent Agency for change of ownership of the right(s) involved.
The Specific Patent Agency may, as it deems necessary, notify the parties involved to submit document(s) relevant to any mediation, arbitration or court judgment rendered in accordance with other laws and regulations.
Objective
The currently enforced Article 712 Paragraph 1, Item 3 of the Taiwan Patent Act concerns violations of joint applications and impersonations of owners of the right to apply for a patent as grounds for invalidation, and these grounds both belong to disputes over the right to apply for a patent and ownership of patent rights.
According to a judgement of the Supreme Administrative Court 89 (2000) Pan Zi No. 1752, although, based on the information submitted by the applicant, the Specific Patent Agency considers that the applicant has the right to apply for a patent and then approves, there is no legal basis for the Specific Patent Agency to make a judgment if disputes have arisen regarding ownership of the right to apply.
In addition, according to a judgment of the Intellectual Property Court 101 (2012)
Min Zhuan Shang Zi No. 2, although whether an application is granted a patent by the Specific Patent Agency is a matter of public law within the discretion conferred by law based on patent regulations and professional knowledge, before the application is pending at the Specific Patent Agency, who is the genuine patentee and who can file an application often involves relationships under civil law or disputes between private parties, and the clarification of such disputes about rights and interests often may not be determined by the Specific Patent Agency.
For this reason, the pending amendment removes these grounds for invalidation, and stipulates that disputes over patent application rights and ownership of patent rights should be settled by civil litigation.
Disputes concerning patent application rights and ownership of patent rights often involve various relationships under civil law or disputes between private parties, such as employment, contracting, inheritance, impersonation, plagiarism, or funding in research and development, etc. where the employment relationship is only one of the disputes over ownership of patent rights.
The currently enforced regulation is expected to be amended to address such issues.
1 Notice to Amend Article 10
https://topic.tipo.gov.tw/patents-tw/cp-751-884440-8199b-101.html
https://topic.tipo.gov.tw/patents-tw/dl-276565-9f8c8722bcc14dbb9e035c88fa12e539.html
2 Patent-Act 2019: https://www.tipo.gov.tw/en/dl-125160-e1872caf01df4cbb89dbe8109894d3e0.html
