Substantial contribution factor in determining inventorship: insights into key ruling in Taiwan
Chiu-ling Lin of Saint Island International Patent & Law Offices explains the threshold for an inventor making a substantial contribution after a Taiwanese Supreme Court decision in a patent infringement case
In Taiwan, unless otherwise specified in a contract or under special circumstances, the inventor, their assignee, or their successor in interest is generally considered to be the person entitled to file a patent application. Moreover, if an invention is made by an employee in the performance of their duties, the employer shall have the right to file a patent application and to the patent right conferred thereto. Here, the issue arises that there is no further definition in Taiwan's Patent Act or its Enforcement Rules regarding who should qualify as an inventor. Given this grey area, interpretations by a court may serve as a significant point of reference.
Gauss v Wei Lian patent infringement dispute
In 2020, Gauss Design Inc. (Gauss) sent a cease-and-desist letter to the parent company of Wei Lian Electronic Technology Co. (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 defence, Wei Lian filed a declaratory judgment lawsuit and averred that it is, in reality, a co-owner of the patent at issue and this fact should render moot the infringement accusation. Upon trial proceedings, the Intellectual Property and Commerce Court ruled in favour of Wei Lian. However, Gauss appealed the case to the Supreme Court.
The Supreme Court consented to the opinion of the Intellectual Property and Commerce Court and dismissed the appeal filed by Gauss in July 2023, substantially in view of the following findings:
The patent at issue involves a frame structure of a display device that 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; and
The plastic frame envelops the side edge and the plastic frame, moulded on to the side edge by injection moulding, entirely envelops 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 moulding framework structure”, which contributed to the thinning of liquid crystal displays, it was not until after an employee of Wei Lian approached Gauss, discussing the development of related products, and requested an evaluation of the insert moulding 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 the employee provided detailed 3D drawings to Gauss for evaluation twice, 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 made a substantial modification to Gauss’s original design with a partial enveloping technique. As such, the 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, the Supreme Court and the Intellectual Property and Commerce Court agreed that a person who has made a ‘substantial contribution’ should refer to someone 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.
Considerations for inventors regarding potential patent disputes
The Intellectual Property and Commerce Court's opinion regarding a substantial contribution was first disclosed in 2009, and has remained unaltered over the years, as reflected in a number of precedents posted on the website of the Taiwan Intellectual Property 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; they should have proposed technical means that can accomplish the concept.
On a side note, that Wei Lian submitted a preponderance of documents, including the records of the technical R&D process, was a point of leverage in the lawsuit in question. As such, inventors are urged to, from time to time, record any implementation means they have thought of for a given technical concept. Only those that are documented and preserved can serve as evidence of a 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.