Since the Taiwan Intellectual Property Office (TIPO) is planning to delete the provision in the Patent Act that “the ownership of the patent right may be grounds for a request for an invalidation action,” disputes over the actual ownership of the patent right would be resolved through civil litigation only.

Based on the provisions of Subparagraph 3, Paragraph 1 of Article 71 of the Patent Act, if the invention patentee is not the owner of the right to apply for an invention patent, an invalidation action may be filed with the Specific Patent Agency. However, based on the provisions of Paragraph 1 of Article 35 of the Patent Act, if an invalidation action is filed against a granted patent by the owner of the right to apply for a patent or by the joint owner(s) of the right to apply for a patent within two (2) years after the publication date of the patent concerned in accordance with Subparagraph 3, Paragraph 1 of Article 71, and where the said person or joint owner(s) newly files a patent application for the same invention within two (2) months after the day on which the invalidation decision revoking the patent has become final and binding, the filing date of the revoked patent shall be the filing date for the newly filed patent application. 

Currently, disputes over patent ownership are resolved through either patent invalidation or civil litigation. However, patent invalidation requires that the actual owner of the right must become aware of the fact that his/her invention has been applied for and patented by others within two years after the publication date of the invention patent and prepare evidence to file a request for patent invalidation. However, in practice, this deadline may be too short. In addition, disputes over the ownership of the patent right often involve disputes between individuals, and, unlike during court proceedings, it is difficult for the Specific Patent Agency to conduct substantive investigations to clarify the true ownership.

The “Draft Amendment to the Patent Act” sent by the Executive Yuan to the Legislative Yuan on March 9, 2023 has deleted the provision that the ownership of the patent right may be grounds for a request for an invalidation action and thus would require that ownership disputes are exclusively resolved through civil litigation. 

Based on the latest two versions of the draft amendments to the Patent Act that have been made public, the amendment to Article 10 of the Patent Act stipulates that if a dispute arises over the right to apply for a patent and the ownership of the patent right and an agreement is reached, the owner of the patent right concerned may file a request along with relevant document(s) of proof with the Specific Patent Agency for change of ownership of the right(s) involved. Document(s) relevant to any mediation, arbitration or court judgments rendered in accordance with other laws and regulations are also applicable to the application for change of ownership of the patent right. In addition, the newly added provision of Paragraph 2 of Article 69 of the Patent Act stipulates that if there is a dispute over the ownership of invention patents, and if the invention patent owner abandons the patent right before the dispute is settled through mediation, arbitration, or a court judgment, the patent abandonment will be invalid.

This would benefit the actual owner of the right because the time limit for filing a request for patent invalidation is deleted and the decision on ownership of patent right is handed over to the court. However, as the right of the actual patent owner to reapply for the invention patent application and simply transfer the patent right to the actual owner has been deleted in the draft amendments to the Patent Act, the draft amendments do not provide sufficient protection for the actual owner of the right because there is no opportunity for the actual patent applicant to file an application covering the desired scope of protection. 

Further, regarding the dispute over the right to apply for a patent and the ownership of the patent right, the Supreme Court recently ruled that due to the actual owner’s failure to submit a patent application to the TIPO, he was not the patent owner and the request to confirm the ownership of the patent right was groundless.

Moreover, in a document published on May 19, 2025, the TIPO stated that the draft amendment to Article 10 of the Patent Act clearly stipulates that the grounds for applying for a change in the ownership of the patent right in disputes over ownership of the patent right are not limited to employment relationships, and the draft amendment was adjusted in response to practical needs. The fact that the actual owner of the patent right may not be the applicant of the disputed patent application after changing the ownership of the patent right, and whether the effect of changing the ownership of the patent right is retroactive to the original acquisition or succession acquisition of the actual owner of the patent right at the time of registration, etc., are all related to the basis of the owner’s claim. The ownership of the patent application and the patent right have been clearly listed in the draft amendments and deciding such disputes and meeting practical needs in dispute resolution can been more widely applied on the basis of the draft amendments.

In short, although in the draft amendments to the Patent Act the TIPO aims to strengthen the right and interests of the actual owner of the patent right by deleting the invalidation grounds for the ownership of the patent right and replacing them with civil litigation, since relevant provisions are not clearly specified in the draft amendments to the Patent Act, whether the litigation requested by actual owners will be unaffected as claimed by the TIPO remains to be confirmed by the courts. However, in view of the abovementioned recent Supreme Court judgment and because the Patent Act lacks a clear definition, the relief procedures for the actual owner of the patent right may be affected due to different opinions of the courts.


References
[1] “Draft Amendment to Some Articles of the Patent Act” (2nd Draft) - Response to External Amendment Suggestions during the Notice Period https://www.tipo.gov.tw/tw/cp-86-1010905-f03d8-1.html.
[2] Announcement of the draft amendments to some articles of the Patent Act https://www.tipo.gov.tw/tw/cp-86-979687-69f9a-1.html.
[3] The version of draft amendments to some articles of the Patent Act was approved by the Executive Yuan on March 9, 2013 https://www.tipo.gov.tw/patents-tw/cp-862-920873-cc583-101.html.