How to Identify An Invention, or A Utility Model or A Design Made by An Employee Under The Performance of His/Her Job Duties

Company B hired Employee A for carrying out a research and development project. Company B alleged that the research achievements from the project should belong to the company because they offered the research facilities and environment.  The sale of the patent rights deriving from the research achievements to a third party made by Employee A had caused damages to Company B. Thus, Company B claimed damages from Employee A based on Article 184 I of Civil Code.

On the contrary, Employee A alleged that he/she accomplished the patent before working for Company B so it had no connection to the performance of his/her job duties.

The patent at issue has nothing to do with the performance of Employee A’s job duties.
Company B claimed that Employee A filed the patent at issue when he/she was engaged in the company and they had paid the application fees and revised fees on behalf of Employee A. However, the period from Employee A’s employment in Company B to the filing date of the patent at issue was quite short, and Company B did not pay all expenses for the patent filing. Thus, it was unable to identify that the patent at issue was made under the performance of Employee A’s job duties in accordance with Company B’s allegation.

Company B further claimed that the patent at issue had been revised many times during Employee A’s engagement in the company so the patent hadn’t yet been finished before Employee A worked for the company.  However, the revisions made to the patent at issue never enlarged the scope of the specifications or drawings of the original patent application as filed. The content of the patent at issued as published had been included in those of the original patent application as filed, so the technology as disclosed in the patent at issue had been finished before Employee A worked for Company B.

The claim of damages made by Company B to Employee A based on Article 184 I of Civil Code is unsustainable.
Company B was unable to prove that the patent at issue was an invention made under the performance of Employee’s job duties in Company B. Thus, Company B’s claim of damages based on Article 184 I of Civil Code was unsustainable.

Source: TIPO Newsletter

description of a patent applicationDelivered by: Sandy WANG (Ms.) / Senior Partner
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