The Intellectual Property Court rendered the 102-Min-Zhuan-Su-72 Civil Decision of June 19, 2014 (hereinafter, the "Decision"), holding that the key to determining whether an invention is completed during the performance of job duties lies in whether the employee researched and developed the invention with the resources and environment provided by the employer. This should be based on the employee's actual duties and whether the resources and environment provided by the employer for such duties are used for the patent so researched and developed.
According to the facts of the case, Individual A originally worked as the President of Fu Chen Chang Technology Co., Ltd. (hereinafter, "Fu Chen Chang") and was in charge of the research and development for the business of the company. Fu Chen Chang asserted that during his employment, Individual A incorporated a company named Wei Tung Technology Co., Ltd. (hereinafter, "Wei Tung"), of which he was the legal representative and which operates the same scope of business as Fu Chen Chang. In addition, Individual A stated during a shareholders' meeting of Fu Chen Chang that his research and development team would be withdrawing from the research, development, design and operations of the company, after which he completed the invention he researched and developed during his employment and applied for a patent under his own name, thus infringing the patent application rights and patent rights of Fu Chen Chang. In his defense, Individual A contended that he completed the invention in his off hours and did not use the resources of the company.
Under Article 7, Paragraphs 1 and 2 of the Patent Act, the right to apply for patent and the patent right for an invention, utility model or design completed by employees during the performance of their job duties shall vest with the employer, and the employer shall pay appropriate compensation to the employees unless otherwise stipulated under an agreement. The invention, utility model or design completed during the performance of job duties set forth in the preceding paragraph refers to an invention, utility model or design completed by employees through work performed under an employment relationship.
It was pointed out in this Decision that an invention completed during the performance of job duties is necessarily linked to the nature of the employee's work, i.e., work conducted, participated or executed in connection with the product development or production research or development pursuant to the agreement between the employee and the employer. As such, an invention, utility model or design completed by the employee using the employer's equipment, expenses, resources and environment should be deemed as a form of consideration with the employer's payment of salaries and the utilization of its facilities. The key to the determination lies in whether the environment or resources provided by the employer are used for the patent researched and developed by the employee and has nothing to do with the actual job title or even with the job descriptions stipulated in any agreement. Instead, the determination should be based on whether the resources and environment provided by the employer are used for the work the employee is actually involved in at the company and for the patent researched and developed by the employee.
As to whether the subject patent in this matter was completed by Individual A during this performance of his job duty, the Decision held that Fu Cheng Chang's evidence was insufficient to demonstrate that the Individual A completed the invention during the performance of his job duty. Therefore, Fu Chen Chang's complaint was groundless and rejected.