TIPS^®  Taiwan Intellectual Property Special

TSAI, LEE & CHEN-P.2

employment between the Plaintiff and the inventor, the Plaintiff cannot assert the right to apply for patent pursuant to Article 7 of the Patent Law. Even though the Plaintiff has paid the inventor expenses, the payment itself cannot be an evidence to prove the existence of the employment relationship.

2. In 89-Pan-1752 Administrative Court judgement, the Court held that the Patent Authority has no right to decide the ownership of a patent, despite the Patent Authority will examine whether the applicant of a patent application is the person entitled to such application. This is because the Patent Authority only examines the formality rather than the reality. The Court further stated that, even if the employment relationship indeed exists, the invention made by the employee is not necessarily “made for hire” or made in the performance of the employee’s job duties. The Administrative Court held that whether or not the employer and the employee ever consented to the ownership of an invention shall be judged by the judicial court rather than the Patent Authority.

3. It should be noted that, the Supreme Court in 86-Tai-Shan-1356 judgement ruled that the relationship between a manager and the company is “trust” rather than “employment;” therefore, Article 7 of the Patent Law shall not apply. This judgement has great influence upon the intellectual property management of many companies. In order to avoid unnecessary dispute between the manager and the company with regard to whether an invention is made for hire, it is suggested that company should enter into an agreement with her employee/manager on the ownership of an invention or patent.