The Taiwan Patent Act stipulates that where a patentee is not the “owner of the right to apply for a patent,” or where a right to apply for a patent is jointly owned but the patent application related thereto was not filed by all the joint owner(s), such circumstances constitute specific grounds for an invalidation action, which shall only be filed by an interested party. The aforesaid provisions apply to invention, utility model, and design patents (see Articles 71, 119, and 141 of the Taiwan Patent Act).
Who qualifies as an interested party? The Taiwan Patent Examination Guidelines state:
An interested party refers to a legally interested party whose rights or legal interests are directly affected by the right to apply for a patent at issue or the patent right at issue. The quintessential example is a person who is truly entitled to apply for the patent or a joint owner of the right to apply for the patent. Where an invalidation requester claims to be an interested party, the invalidation requester shall state the grounds and submit supporting evidence in the Patent Invalidation Request (Section 2.1.2, Chapter 2, Part V of the Taiwan Patent Examination Guidelines).
The Taiwan Patent Examination Guidelines further state:
For instance, where an invalidation requester claims to be the employer of the patentee and argues that the patent at issue is a creation made by an employee in the course of performing his/her duties and that the ownership of the right to apply for the patent should be vested in the employer, the invalidation requester shall state in the Patent Invalidation Request that the invalidation requester is an interested party and submit relevant document(s) of proof showing the existence of the employment relationship at the time the patent at issue was accomplished (Section 2.1.2, Chapter 2, Part V of the Taiwan Patent Examination Guidelines).
The substantiation of interested-party status constitutes a procedural requirement. Regarding substantive examination, the Taiwan Patent Examination Guidelines stipulate that an examination should be conducted to determine whether the invention or creation shown in the evidence submitted by the invalidation requester is “substantially identical” to the scope of the patent right at issue. For an invention or utility model patent, “substantially identical” means that there is no substantial difference between the technical features recited in the claims and the technical features disclosed in the invalidation evidence; this standard is met so long as the technical features recited in the claims of the patent at issue do not depart from the inventive concept, technical means, and effects of the invalidation evidence; and the literal wording and drawings of the two need not be identical in form (Section 4.3.1.1, Chapter 4, Part V of the Taiwan Patent Examination Guidelines).
However, the premise that “the literal wording and drawings need not be identical in form” must have its limits. How the burden of proof should be allocated in invalidation proceedings under such circumstances also remains to be clarified through judicial practice. In this regard, the Taiwan Supreme Administrative Court rendered Judgment (2025) Shang-Zi No. 454 in July 2026, offering an opinion worthy of attention.
This case concerned an invalidation dispute involving a utility model patent. The invalidation requester argued that it was the rightful applicant on the grounds that the creator was its former employee and that the disputed utility model had been created in the course of performing his duties. This standing issue was resolved in the requester’s favor, shifting the focus of the dispute to the substantive technical question of whether the invalidation requester could prove that the creator had made a substantial contribution to the creation of the disputed utility model during his employment with them. To this question, the Taiwan Intellectual Property Office (TIPO) answered in the negative, determining that the invalidation action was ungrounded. The invalidation requester subsequently filed an administrative litigation after going through the administrative appeal.
In the first-instance judgment, the Taiwan Intellectual Property & Commercial Court (IPCC) held that although the invalidation evidence submitted by the invalidation requester could prove substantial contributions to the majority of the elements in Claim 1 of the patent at issue, the invalidation evidence failed to disclose Element 1F (the roller driving device drives the roller to reciprocate in response to a sensing signal), and that the technical features of Element 1F involved a creation made by an external manufacturer as a third party. The court thus found a substantial difference between the two and rendered the judgment dismissing the invalidation requester’s action. Dissatisfied with the judgment, the invalidation requester appealed to the Taiwan Supreme Administrative Court.
Upon examination, the Taiwan Supreme Administrative Court held that the original judgment was contrary to law, vacating the judgment and remanding the case for retrial. The main reasons are as follows:
- Consistent with the provisions of the patent examination guidelines, identity in literal wording and drawings is not formally required: In determining whether a utility model patentee is not the owner of the right to apply for a utility model patent, TIPO and the courts shall examine whether there is any substantial difference between the technical features recited in the claims of the patent at issue and the inventive concept, technical means, and effects of the invalidation evidence. If there is no substantial difference and the patentee fails to present a reasonable creative process, thereby sufficiently demonstrating that the patentee is not entitled to apply for the patent, a disposition that the invalidation action is grounded shall be rendered, even though the invalidation evidence and the literal wording of the claims or the drawings of the specification in the patent at issue are not identical in form.
- Further articulation of the standard for determining “substantial contribution”: The Supreme Administrative Court pointed out in the judgment: In this type of invalidation action, “an inventor or creator must be a person who has made substantial contributions to the technical features recited in the claims, that is, a person who developed a conception with respect to the problem to be solved or the effect(s) to be achieved by the invention or utility model, and subsequently proposed concrete technical means capable of achieving that conception.” With respect to this case, the Supreme Administrative Court noted: The invalidation evidence showed that the registered creator of the patent at issue seemed to have engaged, during his employment with the invalidation requester, in developing the technology where an adjustable cylinder drives the sensor to reciprocate and causes the roller to oscillate laterally, achieving the effect of preventing wrinkles in ultrathin fabric; yet whether such technology corresponds to Element 1F awaits further inquiry.
- Failure by the patentee to present a reasonable creative process: Under circumstances where the invalidation requester had already presented the aforementioned evidence concerning “substantial contribution,” yet the patentee failed to provide a reasonable creation process for the technical features recited in the claims of the patent at issue, the court should not have hastily ruled against the invalidation requester.
Takeaways
This judgment shows that the core of examining the ownership of the right to apply for a patent lies in the “substantive nexus” between the technical features recited in the claims of the patent at issue and the inventive concept, technical means, and effects of the invalidation evidence, rather than fixating rigidly on formal discrepancies in the literal wording of the claims. When confronted with an allegation that the patentee is not the owner of the right to apply, the patentee bears the burden of explanation to account for a “reasonable creation process.” In day-to-day operations, in addition to entering into confidentiality undertakings, enterprises should implement sound management of on-the-job research and development (R&D) records, so as to adequately substantiate substantial contributions in the event of a dispute.