According to Article 7 of the Patent Law, the employer in principle owns the right to file a patent application for an invention made by an employee and to the resulting patent. As for what is considered an employee invention, Article 7 merely states that it is one that is completed by the employee in the performance of his work during the employment period.
In a lawsuit where the issue is whether or not an invention is one made by the employee in the performance of his work, the IP Court ruled, in the first instance, that the patent-in-suit is related to an employee invention.
The case went to appeal. In the second instance, the IP Court revoked the decision and ruled that the patent-in-suit is not related to an employee invention, primarily in view of the following: (1) the employee was only 33 days on the job when the employee entrusted a patent agent to file the patent application, and the employer failed to prove that the employee had used the resources or environment provided by the employer in the development of the invention; (2) the email correspondence between the parties show that the employer paid for the filing costs not because the invention was made in the course of employment; and (3) there is not any contract showing that the invention should belong to the employer, and the employer did not pay the employee a suitable compensation in addition to normal salaries.
The ruling of the second-instance IP Court is obviously in favor of the employee.
It is worth noting that several statements in the second-instance decision, as summarized below, have been adopted by the IP Court as important decision notes:
While it is mandated in the Patent Law that an employer is entitled to the right to file a patent application for an invention, a utility model or a design made by an employee in the performance of his duties and to the resulting patent, the so-called invention completed in the course of employment must be related to the work the employee is hired to do. The spirit of the provision is to balance the rights and obligations between the employer and the employee, and the key factor in the determination of invention ownership is whether the completed invention involves use of the resources and environment provided by the employer and what the employee actually does in the employer’s company. Neither the title of the employee nor the job description specified in the employment contract is relevant. Moreover, in view of Article 277 of the Code of Civil Procedure which provides that a party asserting facts in favor of himself bears the burden of proof and if the party with the burden of proof fails to produce evidence proving the truth of the asserted facts, the Court shall not rule in favor of said party even though the other party is unable to present proof of facts that constitute a defense or the presented proof is flawed.