Substantial Contribution Factor in Determining Inventorship - Insights from a Recent Ruling by the Supreme Court

In Taiwan, unless otherwise specified in a contract or under special circumstances, the inventor, his assignee or successor in interest is generally considered to be the person entitled to file a patent application. Moreover, an invention made by an employee in the performance of his duties, the employer shall have the right to file a patent application and to the patent right conferred thereto. Here, the question arises that there is no further definition in Taiwan's Patent Act or Enforcement Rules regarding "who should qualify as an inventor.” Given this grey area, interpretations by the court may serve as a significant point of reference.

In 2020, Gauss Design Inc. (hereinafter referred to as Gauss) sent a cease-and-desist letter to the parent company of Wei Lian Electronic Technology Co., (hereinafter referred to as Wei Lian) and claimed damages  from patent infringement on the basis of a patent related to “a frame structure of a display device.”  As a defense, Wei Lian filed a “Declaratory Judgment” lawsuit and averred that it is, in reality, a co-owner of the patent at issue and this very fact should render moot the infringement accusation.  Upon trial proceedings, the Intellectual Property and Commerce Court ruled in favor of Wei Lian.  However, not being satisfied with the Ruling, Gauss appealed the case to the Supreme Court. 

The Supreme Court consented to the opinion of the Intellectual Property Commerce Court and dismissed the appeal filed by Gauss in July of this year substantially in view of the following findings:

The patent at issue is calling for a frame structure of a display device which at least comprises a metal backplate and a plastic frame wherein a side of the metal backplate extends downward to form a side edge;… the side edge has two side faces,… the plastic frame envelopes the side edge wherein the plastic frame, molded onto the side edge by injection molding, entirely envelopes both side faces of the side edge. A backlight module can be directly installed between the side edges enveloped by the plastic frame.

Although Gauss was the first to propose the concept of forming an “insert molding framework structure” which contributed to the thinning of the liquid crystal displays (LCM), it was not until after an employee of Wei Lian approached Gauss, discussing about the development of the related products and requested an evaluation of the insert molding frame structure that Gauss handed out updated drawings. In these drawings, apparently, the plastic frame did not entirely envelop the two lateral faces of the side edge of the metal backplate.

Thus, the employee of Wei Lian suggested two solutions, one of which was to "reduce the length of the bend portion of the iron part (corresponding to the metal backplate) by 0.5mm and simultaneously increase the length of the plastics in the middle frame by 0.5mm to fully encompass the iron part." This is the "entire enveloping” technical solution, and said employee provided detailed 3D drawings to Gauss for evaluation for two times, which clearly demonstrated the "entire enveloping” technique. 

From the submitted drawings, it is noted that the "entire enveloping” technique was indeed proposed by an employee of Wei Lian who presumably has made substantial modification to Gauss’ original design with “partial enveloping” technique. As such, said employee should be deemed a co-inventor and, in turn, his employer, Wei Lian, should be deemed a co-owner of the patent according to the Patent Act.

Obviously, both the Supreme Court and the Intellectual Property and Commerce Court agreed that a person who has made "substantial contribution” should refer to that who has engaged in creative thinking to solve a problem or achieve a specific effect in an invention and subsequently proposes concrete and achievable technical means.

The Intellectual Property and Commerce Court's opinion regarding "substantial contribution” was first disclosed in 2009, which remains unaltered over the years, as reflected in a number of precedents posted on the website of the IP Office. That is, when determining whether a person has made a substantial contribution to the invention claimed in a disputed patent, proposing a concept that includes theory and effects is insufficient; he should have proposed technical means that can accomplish the concept.

On a side note, that Wei Lian has submitted a preponderance of documents, including the records of the technical research and development process is a leverage in this lawsuit. As such, inventors are urged to, from time to time, record any specific implementation means they have thought of for a given technical concept. Only those which are documented and preserved can serve as evidence of “substantial contribution to the invention at issue” in the event of a patent dispute. Additionally, when collaborating with others or commissioning or being commissioned by others for product development, it is preferable to have clear contractual agreements in place regarding the ownership of the inventions to prevent future disputes.

The above contents are intended as general discussion of the subject matter only and shall not be deemed as legal advice to any particular case or issue.