ALIPO IP ATTORNEYS

Newsletter Jun 10, 2016

Criteria of Joint Creator for Utility Model in Taiwan

Legal Context   

A person substantially contributes to partial claims of a utility model in Taiwan shall be considered as a joint creator, instead of the creator of the utility model patent.

Facts   

The appellant claims that the appellant mentions to the company of the appellee (hereinafter as “A Company”) that a glasses product (hereinafter as “Product”) produced by the appellant is with issues of high-cost and assembling difficulties. The appellee makes a suggestion after examining the Product about a solution of “substituting the screws with foldable temples passing through latch and through the lens and positioned by hooking”, which achieves easily-assembling and cost-lowering advantages. However, the appellant filed and acquire a utility model patent titled as “Glasses” (hereinafter as “Patent”) in Taiwan which includes such technical features in some of the claims thereof.
The appellee claims to be the creator of the utility model patent. The appellant claims that the designers of the company of the appellant (hereinafter as B company) have already create the relative technical features prior to the appellee. Also, the design draft of the Product draft is provided to the A company for Product examination after being submitted inside the B company. Furthermore, the technical feature aforementioned claimed to be suggested by the appellee fail to overcome the targeted technical issues of claim 1 and claim 10 of the utility model patent, namely achieving effects of “preventing the temple unit from detaching” and “limiting the rotation angle of the temple unit”. In other word, the suggestion made by the appellee fails to substantially contribute to claim 1 and claim 10 of the Patent.

Decision   

According to Patent Law, the creator shall make substantial contribution to the technical features of the patent. The so called “substantial contribution” shall provide concepts for resolving the targeted issues of the utility model patent and contribute to the completion of the concept for resolving the issues. After the examination upon the evidence and the deponent provided by the appellee, the design variations of “substituting screws” and “using foldable temples passing through latch” are not proven to be the creation of the appellee. Also, such two technical features are included by claim 1 to claim 9 of the Patent and indeed the relative measures for resolving the targeted issues of the Patent. Therefore, the appellee shall not be considered as the creator of the Patent.
However, according to Patent Law, when the creation scope of a utility patent is provided in plurality, a creator does not necessarily make substantial contribution to all the claims. In other word, when a person a joint creator. Based on the examination, the appellant fails to prove that the technical feature of “passing through the lens to be positioned by hooking” is not created by the appellee, and the feature of “positioned by hooking” is partially disclosed by claim 1 to claim 17. Such technical feature is considered as the creation of the appellee, and the appellee indeed makes substantial contribution to parts of claims of the Patent. Therefore, the appellee is allowed to be listed as a joint creator.

Remarks   

When recognizing if a person is an inventor/creator of a patent, the primary step is to identify that which technical measures in the claims are necessary features for efficiently resolving the targeted issues of the patent. If such technical measures are simply known arts or able to be achieved by simple improvements that do not substantially contribute to the effects and functions of the patent, the person created such measures are not considered as an inventor/creator. Further, an inventor/creator does not necessarily contribute to all the claims of a patent. If a person makes substantial contribution of one or several claims of a patent, he/she is allowed to be listed as a joint invention/creator of the patent.

Resource:

TIPO

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