TIPS^®  Taiwan Intellectual Property Special

The Recognition of “Invention Made for Hire” by the Patent Authority

Pursuant to Article 7 of the Patent Law, where an invention, or a new utility model or a new design is made by an employee in the performance of his job duties, the right to apply for patent or the patent right thereof shall be vested in his employer, and the employer shall pay to the employee a reasonable remuneration, provided that if there is any provision otherwise provided in an agreement, such provision shall prevail. And the “invention made for hire” shall mean the invention, new utility model or new design

which is completed by an employee in performing his job duties during the period of his employment. Moreover, where a fund-provider engages another party to make research and development, the ownership of the right to apply for patent and the patent right thereof shall be vested in the party as consented in the agreement between the two parties, or shall be vested in the inventor or creator if the eligible one is not named in such agreement; provided that in any case, the fund-provider shall be allowed to put such invention, new utility model or new design into practice (similar to shop right).

Since whether an invention is “made for hire” involves with the right to apply for patent and the patent right thereof, the following cases can be the reference with respect to the recognition of the competent authority:

1. In 88-Pan-3197 Administrative Court judgement, the Plaintiff claimed that the product at issue is invented for hire because he used to give the inventor written instruction to improve the product via facsimile. Under both parties’ contract, the Plaintiff paid cost to the inventor for tooling and sampling of patented product. However, the Court held that, lacking of any agreement to show the