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Intellectual Property and Commercial Court

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2012 Min Zhuan Shang Zi No. 40

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Decision No. 2012 Min Zhuan Shang Zi No. 40
Date April 25, 2013
Decision Highlight

“Where an invention, a utility model or a design is made by an employee in the course of performing his/her duties, the right to apply for a patent and the patent right thereof shall be vested in his/her employer and the employer shall pay the employee reasonable remuneration; where there is an agreement providing otherwise, such agreement shall prevail.”“The so-called "an invention, a utility model or a design made by an employee in the course of performing his/her duties" as set forth in the preceding paragraph shall mean the invention, utility model, or design completed by an employee in the course of performing his/her duties during the period of employment.” These are expressly provided in Article 7 Paragraph 1, Paragraph 2 of the Patent Act. Therefore, the so called "invention made in the performance of duties" is related to the duties during the employment. The employee is hired to participate or work on the invention related to the employer’s product development, manufacturing research, etc., under the employment agreement. The invention, utility or design patents obtained by the employee is due to the equipment, expense, resource, environment, etc., provided by the employer. The invention created by the employee is consideration for the employee's salary, use of facilities provided by the employer, or group efforts. Therefore, Patent Act stipulates that “where an invention, a utility model or a design is made by an employee in the course of performing his/her duties, the right to apply for a patent and the patent right thereof shall be vested in his/her employer”. Its legislative intent is to balance the relationship between obligations and rights of employer and employee. The point is that whether the patented invention was created by the employee through the usage of resource and environment provided by the employer. Whether or not the employee holds patent right to the invention has nothing to do with the employee’s job title, nor does it have anything to do with the employee’s job description included in the contract. Instead, it depends on the employee’s actual participation in the invention, and whether the patented invention was made due to the resource and environment provided by the employer.

Keywords

Invention made in the performance of duties

Relevant statutes Article 7 Paragraph 1, Paragraph 2 of the Patent Act Amended and Published on 2011, Dec, 21
  • Release Date:2020-11-13
  • Update:2020-12-07
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