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Patent |
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I. |
Criteria for Determining the Patent Right of an Invention Made in the Performance of Duties |
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The appellant (Hereinafter “Company A”) claims that the Appellee (hereinafter “Individual B”) worked as R & D personnel in Company A from May 2003 to April 2014. Based on the written agreement, the right to apply for a patent and the patent right of any invention made by Individual B in the performance of duties shall be vested in Company A. In 2012, Individual B once participated in developing a new version of electrical circuit of a Nebulizer product and finished the draft of the said electrical circuit (Evidence 6); however, Individual B did not submit the said draft to the R & D team but turned in his resignation. Four months later, the other Appellee (hereinafter “Company C”) filed and obtained the patent right related to the said electrical circuit of the Nebulizer product and reported Individual B as the inventor of the said invention.
After comparing Evidence 6 and the main technical features of the invention at issue, it is obvious that the circuit structure of Evidence 6 and the invention at issue is almost the same. During Individual B’s employment in Company A, Individual B indeed was aware of the technical problem that the invention at issue aims to solve because of performing his duties. That is to say, Individual B has already accomplished the technical solution adopted to solve the problem of the invention at issue when he still worked in Company A. Therefore, the said technical solution adopted to solve the problem should belong to Company A. Company C should assign the patent right of the invention at issue to Company A. Company C and Individual B should be jointly liable for damages.
Company C and Individual B argued that Evidence 6 cannot prove that Individual B has already made any substantial contributions to the technical features of the invention at issue during his employment in Company A. Also, the contents of the invention at issue and Evident 6 are not substantially identical.
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IP Court’s viewpoints: |
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The Intermediate judgment of the Intellectual Property Court determined as follows: |
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1. |
The dispute of the attribution of the patent right between the employer and the employee relates to that when an employee is engaged for R & D work, but files a patent application later in his own name and obtains the patent right, to whom the patent right should belong. The attribution of the patent right is to protect the R&D results (technical invention or improvement) made through the utilization of the employer’s resources by the employee in the course of performing his/her duties, so the right to apply for a patent and the patent right thereof shall be vested in his/her employer. |
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2. |
If the technical contents of the claims in a patent application filed by the employee are identical with the R & D results made when the employee performs his/her duties, it is sufficient to deem that the patent is an invention made in the performance of duties. If partial claims are the same, but partial claims are different, when the different parts are technical improvement which is made by the employee himself, then it should not be deemed as an invention made in the performance of duties. If the different part only refers to the ordinary skill in the art or prior art, it should not claim the patent right because it does not have any technical contribution. If the content of other technical features isthe same as the R & D results made by the employee in his duties, it will be deemed as the invention made in the performance of duties. In other words, the patent right should belong to the employer. |
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3. |
Because Evidence 6 has already disclosed the technical contents of claims 1, 7, 8 and 9 of the invention at issue, and the technical contents of claims 2~6 and 10 of the invention at issue belong to ordinary skill in the art and have no contribution to the invention at issue, the circuit of Evident 6 and the invention at issue should be substantially identical. |
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4. |
The technical problem to be solved by the invention at issue and the problem which Company A wishes to solve for his product are the same or related problem. Individual B is the person with ordinary technical skill in the field and his duties are also related to solve the technical problem to be solved by the invention at issue. Thus, it is sufficient to deem that Individual B has already been aware that the technical problem to be solved by the invention at issue is related to the problem which Company A wishes to solve during his employment.
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Source: https://www.tipo.gov.tw/public/epaper/113/ePaper113_ep11062.htm#663681 |
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II. |
The Comparison between the WIPO Guidance on Design Application and the Present Design Examination Practice in Taiwan |
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WIPO has published a document entitled “Guidance on Preparing and Providing Reproductions in Order to Forestall Possible Refusals on the Ground of Insufficient Disclosure of an Industrial Design by Examining Offices” (hereafter referred to as “the WIPO Guidance”) on August 10, 2016, which indicates that “the examining offices may refuse the registration of an industrial design on the ground that the reproductions contained in the application are not sufficient to disclose fully the industrial design”. The WIPO Guidance provides the following three guidelines for the applicants to avoid the potential refusals on the ground of insufficient disclosures:
1. To provide a sufficient number of views
2. To provide explanations on the omitted views
3. To provide disclaimers on the disclaimed parts of the product.
With the intention to help applicants to avoid potential refusals when applying for an industrial design in WIPO’s member states or in Taiwan, we provide herewith the comparison between the WIPO Guidance and the present examination practice in Taiwan regarding the criteria for sufficient disclosures of an industrial design.
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1. Comparison regarding “providing a sufficient number of views” |
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Implementations in the WIPO Guidance |
Examination Practice in Taiwan |
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(A) Six Views from Six Different Directions
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For a three-dimensional product, providing merely six views will be regarded as insufficient disclosures in Taiwan. A perspective view is required for a three-dimensional product.
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(B)Two Perspective Views Showing All Surfaces of the Product
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Two perspective views showing all surfaces of the product will be regarded as sufficient disclosures in Taiwan. |
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For filing a design application of a three-dimensional object in Taiwan, a perspective view is required, and the six views should be prepared. Certain views of the six views can be omitted if it fulfills the condition to omit views. Alternatively, two perspective views showing all surfaces of the product can also be used to file a design application of a three-dimensional product. Generally, whether there is a sufficient number of views is determined on whether the provided views sufficiently disclose the product instead of on the number of the views. Depending on the different situation, the applicant can choose to file a design application with different number of views to achieve the sufficient disclosure. |
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2. Comparison regarding “providing explanations on the omitted views” |
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Implementations in the WIPO Guidance |
Examination Practice in Taiwan |
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(A) The view of one side and another view of the opposite side are identical
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If “left-side view” and “right-side view” are identical or symmetrical, either view can be omitted in Taiwan. |
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(B) The view on the back and the bottom has no ornamentation
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For a plane surface without any design features, it is also allowed to omit the view in Taiwan. |
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Based on the Examination Guidelines on Design Patent in Taiwan, it is allowed to omit the view of “a plane surface without any design features”, which is similar to the WIPO Guidance. However, please note that in Japan, even if a view merely represents a plane surface having no ornamentation of a product, it is still not allowed to omit the view, which is different from the practice of WIPO and Taiwan.
Under the present examination practice in Taiwan, it is also allowed to omit “views that represent the parts of the product which will not be noticed in use”. For examples, the bottom view of a machine tool, a motorcycle or an automobile can be omitted with the explanation in the description that “the bottom view of the object will not be noticed by a common user in purchase or in use and has no design feature and is thus omitted. ” However, this kind of omission of the view is limited to the bottom views of large products such as a machine tool, a motorcycle or an automobile and may not be applied to other objects.
For views that are identical or symmetrical, the present examination practice in Taiwan is the same as the WIPO Guidance and the practices in Japan and in the US, which allows the views to be omitted with the explanation of the omitted views.
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3. Comparison regarding “disclaimers on the unclaimed parts of the product” |
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As shown in the following table, if the product to be protected in a design application is a closet but the back side of the closet is not disclosed and no related explanation is provided, the determination differs in different countries as to whether the undisclosed view (the back side of the closet) will be deemed as the unclaimed part and being excluded from the range of protection. For a design application in Taiwan, in such case it will be regarded as a whole design application and the undisclosed view (the back side of the closet) will be deemed as insufficient disclosures instead of as a partial design. Thus, in Taiwan, after an Office Action is issued for the insufficient disclosure because of lacking views, the applicant can have more alternatives. A conversion from the whole design into the partial design is acceptable as long as it fulfills the regulation of amendments. Alternatively, it is also acceptable to supplement the lacking view on condition that it will not go beyond the disclosure of the application as filed.
Comparatively, in the US, for the above described closet design, the part that is not disclosed in the views and without any explanation in the description will be regarded as the unclaimed part of the design and thus the back side of the closet will be excluded from the range of protection even if the back side of the closet is not drawn in dot lines. Thus, it is essential for applicants to notice this contrasting difference in the determination of the unclaimed part of the design between the practice in US and the practice in Taiwan.
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Examination Practice in the US |
Examination Practice in Taiwan
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The back side of the closet is not disclosed and it will be regarded as partial design in the US. |
As all of the views are in solid lines, it will be regarded as a whole design application in lack of a back view in Taiwan. |
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Source: https://www.tipo.gov.tw/public/epaper/113/ePaper113_ep10498.htm#630442 |
