According to Article 7 II of the Patent Act, where a fund provider engages another party to conduct research and development, the ownership of the right to apply for a patent and the patent right in connection with the outcome of such research and development shall be vested in the party as mutually agreed upon in an agreement between both parties, or such right shall be vested in the inventor, utility model creator or designer in the absence of such covenant in the agreement. However, the fund provider shall be entitled to exploit such invention, utility model or design.
In the case of No.29 year of 2013, a decision made by the IP Court, the Defendant is the fund provider and the Plaintiff is the party engaged by the Defendant to conduct researches and development of the product at issue. For starting the project, the Defendant signed a Statement to the Plaintiff and according to Article 7 of the Statement, the copyrights, trademark rights, patent rights and all relevant intellectual property rights derived from this project should be vested in the Plaintiff. The Plaintiff also granted the Defendant the exclusive possession of the trade in the commodity thereof. Therefore, the patent rights and the relevant intellectual property rights derived from this project should be vested in the Plaintiff based on such Statement in despite of the facts that it was the Defendant to provide fund or bring up the idea of the project.
However, the Defendant ignored the Statement they signed to the Plaintiff, and surreptitiously sought for patent protection of the research achievements by filing a utility model application which was granted as Patent No. M406889.
Due to the mutual agreement between two parties and the legal relationship of the tort and the unjust enrichment, the Plaintiff has the legitimate right to claim the return of the patent right (Patent No. M406889) from the Defendant via a recordation of assignment.
Source: TIPO Newsletter issued on June 05, 2014
(http://www.tipo.gov.tw/public/epaper/113/ePaper113_ep8170.htm#521617)
Delivered by: JAW-HWA INTERNATIONAL PATENT & TRADEMARK & LAWOFFICES
TAIPEI, TAIWAN
http://www.jaw-hwa.com.tw
