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Invention made in the performance of duties under Article 7 II of the current Patent Act in Taiwan

[ October 2012 ] >Back

 

Patent
 
I. Invention made in the performance of duties under Article 7 II of the current Patent Act in Taiwan
   
 
The invention made in the performance of duties stipulated in Article 7 II of the current Patent Act in Taiwan shall mean the invention, utility model, or design completed by an employee in performing his/her job duties during the period of his/her employment.
 
In a recent decision made by IP Court (No.51 of 2011), the appellant argued that he was the deputy general manager of the appellee (hereinafter “the company”) but not an employee specializing in product research and development in the company. The two inventions he created were not for carrying out his contract signed with the company, so they could not be deemed as inventions made in the performance of his duties.  
 
As the deputy general manager of the company, even thought he knew well the contents and functions of all products developed by the company, his creations at most could only be deemed as the inventions relevant to the performance of his duties but not the so-called “inventions made in the performance of his duties”.  In addition, his creations were not parts of the business scope run by the company. The company shall pay him reasonable remuneration when requesting for the transfer of his two creations.
 
On the contrary, the company alleged that they not only hired the appellant to be responsible for the business management and marketing, but asked him to engage in research and development based on the work contract signed between two parties. The appellant knew well the contents and functions of all products developed by the company, so his creations were surely the inventions made in the performance of his duties and the patent rights thereof should be vested in the company.
 
Moreover, the appellant was the head of the research and development team so he directly involved in the research and development project of cells (hereinafter “the products in dispute”).  Since the information thereof was the trade secret of the company, what the appellant created by utilizing such confidential information during the period of his employment should be deemed as the inventions made in the performance of his duties for sure. Thus, the patent rights thereof should be vested in the company.  
 
In the IP Court’s opinion, the intention of Article 7 II of the current Patent Act was to balance the right and obligation between the employer and employee. The focal point thereof was that whether an invention made by the employee utilized the environmental resources provided by the employer and the work the employee actually involved, but was nothing to do with the professional title or the work duties listed in the contract.  
 
In addition, according to Article 277 of《Taiwan Code of Civil Procedure》, a party bears the burden of proof with regard to the facts which he/she alleges in his/her favor, except either where the law provides otherwise or where the circumstances render it manifestly unfair.  
 
The company alleged that the appellant’s creations were inventions made in the performance of his duties but could not submit sufficient evidence to prove such allegation or that the appellant’s creations utilized the environmental resources provided by the company.  On the contrary, some employees from the company witnessed that the appellant only managed the research and development team without actually involving in the research work and the company didn’t manufacture the products in dispute at the moment when the appellant created the two inventions. Therefore, the company’s request for the transfer to the appellant’s two inventions was inadmissible.
   
 
(Source: TIPO Newsletter issued on August 5, 2012)
   
II.  The definition of “being put to public use” of an invention prior to applying for patent under Article 22 I (1) of the current Patent Act in Taiwan
   
 
According to Article 22 I (1) of the current Patent Act in Taiwan, an invention may not obtain a patent if it has been published or put to public use prior to applying for patent.
 
In a recent decision made by IP Court (No.115 of 2011), the plaintiff filed an invalidation action against the patent No. I293096 entitled “connector for reducing vibration“ (hereinafter “the patent in dispute”) up to the TIPO based on the grounds that it violated Article 5, Article 22 I (1) and IV of the current Patent Act in Taiwan, but the invalidation action was dismissed by the TIPO after the examination. The plaintiff then appealed to the MOEA but unfortunately the MOEA affirmed the original decision made by the TIPO as well. So, the plaintiff continued the relief procedures by filing an administrative litigation to the IP court together with new evidence Nos.18, 19, 20 and 21. 
   
  The IP Court’s opinions:
  (1) Being published and being put to public use stipulated in Article 22 I (1) of the current Patent Act were different. When judging whether an invention has been published, it depends on the subject matters recorded in the public prints. As to being put to public use, it means the act of putting the technologies in use in public. The so-called “in public” means the substantial content of the technologies was accessible and known to the public. 
     
  (2) Although handing over the construction design was not a kind of being put to public use, in the process of construction of a building or a factory, the construction site was not closed. There were usually many persons in the construction site, such as engineers, construction laborers, supervisors, contractors and/or other persons, who might be accessible to and know the construction technologies as well. Since it’s hard to expect those people to keep confidential of such construction technologies, this kind of using state should be deemed as being put to public use.
   
 
In this case, around the construction site, it was constructed an open door and meshed fence which were enough to prove that non-specific people could see through the fence to know part of the construction on the site.  In addition, a witness testified that a hoist had to be used for installing a connector for reducing vibration. When the hoist lifted the connector for reducing vibration above the ground level, non-specific people could see the installation from outside of the construction site. 
 
Moreover, in the process of installation of the connectors for reducing vibration together with other construction, many people from the subcontractors were on the site as well. In addition, constructors sent to the site from the contractors and subcontractors varied from day to day. They were all able to hear and see the installation process of the connectors for reducing vibration, but no measure was taken to keep the confidentiality of the operation of such construction.  
 
The same witness further testified that the plaintiff was in charge of the supervision of the construction and the consultant appointed by the plaintiff might not sign a non-disclosure agreement (NDA) with the contractor. The patentee didn’t submit any evidence to prove that he requested for the duty of confidentiality from the constructors on the site either.
 
In conclusion, the evidence Nos.18, 19, 20 and 21 submitted by the plaintiff could prove that the patent in dispute had been put to public use.
   
 
(Source: TIPO Newsletter issued on August 5, 2012)

 

Trademark
 
I. The registration fee should be paid simultaneously while applying for reinstatement of rights for registration fees not paid within time limits
   
 
According to Article 32 III of the current Trademark Act which was entered into force on July 01, 2012, where an applicant has unintentionally failed to pay the fee within the period prescribed in the preceding paragraph, the applicant may pay double within six months from the day following the date on which the prescribed period expires, in which case the Registrar Office will publish the registration. However, this shall not be applied if an application for trademark registration filed or rights of a trademark obtained by a third party during such period would be affected.
 
Therefore, when receiving a request for reinstatement of trademark rights, the TIPO originally examined first whether a trademark application has been filed by a third party or a trademark application has been approved for registration by the TIPO during the period from the expiry of official deadline for the payment of registration fee to the date when the reinstatement of trademark rights was requested, and then informed the person who requested for the reinstatement of trademark rights to pay the registration fee in double if no such application existed. 
 
However, by doing so, it usually has exceeded the statutory period of six-month described in Article 32 III of the current Trademark Act when the registration fee in double should be paid. Consequently, the Legal Council Office of the TIPO informed that the registration fee should be paid simultaneously while requesting for reinstatement of trademark rights for registration fees not paid within time limits to avoid the time limits from going past.
   
 
(Source: Notice from the Legal Council Office of the TIPO)
   
II.
The TIPO announced the regulations about what kind of documents in foreign language should be accompanied by a full or excerpted Chinese translation thereof.
   
 
According to Rule 3 of the《Enforcement Rules of the Trademark Act》, the applications and documents submitted in relation to trademark matters shall be in Chinese. When the documents of proof are in foreign languages, the Registrar Office may give a notice to furnish a full or excerpted Chinese translation thereof if it deems necessary.
 
In order to make the aforesaid rule more specific, the TIPO announced on July 31, 2012 that when submitting the following documents of proof in foreign languages, a full or excerpted Chinese translation thereof should be furnished.
   
 
1 Power of Attorney
2 A certified copy for claiming priority based on a foreign application or an international exhibition
3 A copy of an assignment agreement or any other document submitted to prove the assignment of a trademark application
4 A copy of document submitted to prove a transfer or an abandonment of a jointly owned trademark application or the consent of all joint applicants for the transfer of the share of a joint applicant in such trademark
5 A copy of document for the consent of Co-existence for a Trademark Application in Taiwan under Article 30 I (10)~(15) of the Trademark Act
6 A copy of document submitted to prove the changes of particulars of a trademark registration (such as name of the registrant and its representative, address, representative of the joint applicants, name of licensee and pledgee) or the corrections of particulars of a trademark registration (such as name of the registrant and its representative, representative of the joint applicants, the trademark agent, name and address of licensee and pledgee.
7 A copy of document submitted to prove a trademark license or removal of a trademark license, trademark assignment and an establishment, change, or extinguishment of a pledge
8 A copy of document submitted to prove the consent of the licensee or pledgee to the abandonment of a trademark registration
9 A copy of document submitted to prove the consent of all joint proprietors to a license, sub-license, transfer, abandonment of, or establishment of pledge on the right in a jointly owned trademark or any transfer of or establishment of pledge on the share in a jointly owned trademark
10 A copy of document submitted to prove that the applicant of a certification mark is competent to certify another person’s goods or services
11 A declaration submitted by the applicant of a certification mark to state that he/she does not carry on a business involving manufacture and marketing of goods or provision of services of the kind certified
12 The documents submitted to prove a geographical certification mark or a geographical collective trademark being protected in the name and country of origin by a foreign juridical person, group or government agency, who files an application for registration of the geographical certification mark in Taiwan
13
A copy of document in foreign languages other than English
   
 
(Source: TIPO news published on July 31, 2012)
   
III.
The amendment of《Implementation Regulations for Customs Authorities to Suspend Goods Infringing on Trademark Rights》entered into force on August 02, 2012
   
  The《Implementation Regulations for Customs Authorities to Suspend Goods Infringing on Trademark Rights》was originally promulgated on September 15, 2004.  In order to match up to the amended Trademark Act entered into force on July 01, 2012, necessary revises have been made to the said regulations and implemented on August 02, 2012. 
   
  The main points of the revises made to the regulations are as following:
  1. Amending the number of article of the Trademark Act on which this regulation stands; (Article 1 of the amended regulations)
     
  2. In order to meet Customs requirements, the following regulations have been augmented:
     
    (1) the trademark right holder should submit the electronic files of information of infringing goods, such as samples, pictures, catalogues or photos of genuine and fake goods which may sufficiently identify the infringing goods; (Article 2 of the amended regulations)
       
    (2) Customs shall revoke the detention if within a period of twelve days after the applicant has been served notice of admission of the application, Customs has not been informed that proceedings claiming that the detained goods are infringing goods pursuant to Article 69 of the Trademark Act have been initiated by the applicant. Customs authorities may release the detained goods after retaining a representative sample. (Article 5 of the amended regulations)
       
    (3) Customs shall follow the procedures in accordance with applicable Customs Regulations on import and export articles clearance after retaining a representative sample of the detained goods if any of the following exists: (Article 8 of the amended regulations)
       
      i. Customs has revoked the detention based on Article 7 of this regulation;
         
      ii. the owner of detained goods has requested Customs to revoke the detention based on Article 6 of this regulation;
         
      iii. the trademark right holder has requested for revocation of the detention based on Article 73 I (4) of the Trademark Act.
       
  (Source: TIPO news published on August 06, 2012)
(http://www.tipo.gov.tw/ch/News_NewsContent.aspx?NewsID=6158)

 

 

 

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