TIPS^®  Taiwan Intellectual Property Special

Invention made by the employee outside of the scope of the employment

Article 8 of Taiwan Patent Law provides that invention made by an employee outside of the scope of the employment belongs to the employee. However, if the invention is made by using resource or experience of the employer, the employer, after paying reasonable remuneration, may use/practice the invention for the business in which the employee is hired. The employee who makes invention outside of the scope of the employment should immediately give the employer a written notice about such invention. If the employer fails to object the nature of invention within 6 months after receiving such notice, he/she shall not assert that the invention is within the scope of the employment.

So far, this issue is not challenged at the court and it is not an issue that generally would be brought by the employees. Our conclusion currently is that remuneration to the issue of the employees' inventions is not as hot as it is in Japan. The issue is rarely raised. Up to now, it is still a general practice in Taiwan to have a clause in the employment agreement, which stipulates the ownership of the intellectual property, and most of the time, the ownership belongs to the employer, with or even without payment to the employees. According to the Taiwanese laws, such contractual provision governs.