Chen Yi-Chih, Chen Hung-Chih 2
Intellectual Property (IP) Management is a subject of recent focus in Taiwan . More than 1 million patents have been filed in Taiwan and each year, Taiwan dedicates NT $80 3 trillion in research and development. The estimated cost for IP prosecution, maintenance, litigation, conciliation, compensation and authorization amounts to NT $200 trillion (U.S.$6.5 trillion) 4. Even though many enterprises have gradually recognized the importance of intellectual property, the situation has not significantly improved based on the statistics stated above. Observation shows that only few enterprises in Taiwan have taken active steps to manage their IP and it was only after facing infringement lawsuits and tremendous amount of loyalty payments, most companies started to realize the important of IP management.
Two main causes are believed to have negative impact on the lacking and ineffectiveness of most Taiwanese enterprises' IP management:
Therefore, it is critical to assist these enterprises to develop and implement an effective IP management strategy under which the full potential of their IP can be utilized and the maximum value of the enterprises' IP can be realized.
The Intellectual Property Office of the Ministry of Economic Affairs recognized the importance of governmental role to address this issue. Since 2003, it has collaborated with the Institute of Information Industry to work on a project for developing a standardized IP management system. In 2005, the project was handed over to the Industrial Development Bureau which then carried on the development and promotion of the Taiwanese Intellectual Property Management System (TIPS). Taiwanese enterprises 5 are able to use TIPS as a basis to establish their own comprehensive IP management systems. Based on our experiences in promoting TIPS and the feedbacks from those enterprises which have followed the TIPS's guidance to establish their IP management systems, we are pleased to find that TIPS is capable of assisting enterprises to develop a comprehensive IP management system. The system no only meets an enterprise's operational needs but also can be continuously improved owing to its adoption of the PDCA management cycle 6.
On December 9, 2004, The Ministry of Economics, in recognition of the needs to assist Taiwanese enterprises to better manage and more fully utilize their intellectual property, organized a “Taiwanese IP Management Standardization and Promotion Summit”. In order to establish a consensus on IP management among Taiwanese enterprises and to encourage the enterprises to implement an internal IP management system, the Taiwanese government positioned TIPS as an industry standard.
In 2006, The Industrial Development Bureau (IDB) of the Ministry of Economic Affairs (MEA) established a TIPS promotion program and revised the 2004 draft of the Intellectual Property Management System Standard to become the Taiwan Intellectual Property Management System (TIPS). The industrial experts' opinions and comments were gathered and used to amend the draft, TIPS was then formally announced 7 on March 23, 2007 and consequently promoted. In hopes to protect Taiwanese enterprises and to improve their market competitiveness, IDB initiated extensive promotion program, encouraging Taiwanese enterprises and organizations to establish a convenient, efficient, and low-cost IP management system by following the TIPS's guidance
The main characteristic of TIPS is the incorporation of the PDCA (Plan-Do-Check-Action) model from the ISO 9001:2000 Quality Management System. By adopting this model, not only the challenges of IP management can be resolved, but the whole system can also be continuously improved.
Since TIPS shares the ISO's characteristics of being credible, comprehensive, and easily adaptable, TIPS and be easily integrated into the ISO standards within an enterprise such that the conflicts between these two systems will be minimized and it will only require minimum organizational structural changes and implementation costs. If an enterprise has already implemented ISO, implementing TIPS becomes more easily and efficient.
In addition, TIPS emphasizes the concepts of using “process-oriented approach” and “systematic management” 8. Enterprises can merge their existing infrastructures and TIPS to establish a convenient, effective and efficient IP management system to reduce losses caused by IP infringement. Enterprises may also strengthen their market competitiveness and increase profits through royalty income.
TIPS includes nine chapters. The first four chapters cover Summary, which describes the background of TIPS; Scope of Application and Terminologies. Clause 0.3.1 9 of TIPS states that the purpose of TIPS is to promote the utilization of IP management as one of the means to maximize an enterprise's profits. Rather than an individual or a specific department, protecting IP assets is the responsibility of all employees within the enterprises. In addition, the establishment of an IP management system is essential regardless of the scale, product or service provided by an enterprise. Clause 1.2 of TIPS clearly provides that TIPS is applicable to all enterprises, despite their types, scales, products and services provided. Therefore, TIPS is not designed solely for large enterprises. It can be applied to all kinds of organizations which include but not limit to a company, a specific department/division within a company, a laboratory or a project team.
Before establishing TIPS, the government recognized that an enormous amount of resources is required to establish an IP management system. Therefore, the ISO9001:2000 quality management framework was adopted and TIPS was developed based upon the ISO's management principles. By incorporating IP managing strategies into an enterprise's operation goals and internal activities, the IP management system is no longer just a risk management system but a system that is closely aligning to the overall operations of an enterprise.
Since it was found that many domestic companies implemented ISO9001:2000 Quality Management System solely for compliance purposes, people are skeptical about its effectiveness. In fact, if one understands the rigorous formulation processes behind the quality management system and its principles, one would recognize that an enterprise's IP management system can be significantly improved by adopting the management characteristics of ISO Quality Management System.
The main characteristics shared between TIPS and ISO are outlined as follows:
Since TIPS shares the above mentioned characteristics of the ISO Quality Management System, it not only can reduce the risks of infringing the IP rights of the others, but also can assist an organization to achieve its operational goals provided that the organization has designed relevant processes pursuant to the requirements of TIPS and has thoroughly implemented the designed processes. Using TIPS's external evaluation mechanism 10, enterprises implementing with TIPS can prove to their customers and external stakeholders that they have the capability to manage and maintain their IP.
If an enterprise follows TIPS to establish its IP management system, its expected benefits include the followings:
The Taiwanese government hopes that enterprises can systematically manage their IP through the implementation of TIPS. In other words, following TIPS's guidance, the Taiwanese enterprises should establish an IP management system that incorporates the usage of the PDCA management cycle (Plan-Do-Check-Action) and process management approach and such system must be built by taking into account the enterprise's business operation strategies and objectives. Enterprises should have clear processes and related rules for handling all IP related issues. For example, prior to filing a patent application, there should be a plan for the ways to acquire the targeted IP and prior art research shall be conducted. Based on the search results, enterprises can then decide whether they would like to internally develop the targeted IP or to seek licensing opportunities. Effective IP management processes shall be able to answer the following questions:
The following section aims to explain how Taiwanese enterprises can establish or modify their current IP management system to achieve its full potential:
All employees within an organization shall participate in order to realize the most benefits out of the IP management system. Leadership responsibilities, roles and responsibilities allocation, training and education programs and the subsequent auditing processes on the performance of operation shall be clearly defined and planned. Establishing a successful IP management system shall not be the sole responsibility of the legal department. During the implementation stage, the following personnel should participate and complete the related tasks:
Establishing a systematic IP management system requires the participation of all employees and it requires reengineering of the existing processes. It is not an easy task to be established and planned solely by the legal department. All other departments within an enterprise shall participate and offer their suggestions. The followings are the recommended stages for implementing an IP management system:
Stage | Tasks | Description | Responsibility | Remark |
1. Preparation | 1). Review of current status | Understand resources available and the status of operation | Data collection; define roles and responsibilities | |
2). Establish implementation team | Identify team members and team leader | Confirm organizational structure for implementation | ||
3). Set goals and establish all management programs | Evaluate current situation to formulate IP management policy, and define measurable goals. Processes planning shall be made by taking into account the management responsibility, resource management, product development, and performance analysis and improvement. This helps to identify the position of a process within the overall IP management system and its inter-relationships between the processes themselves. | Provide evaluation report; organize IP management deployment document | Documentation: IP Management Manual à Procedures à Guidelines à Records | |
2. Training and Education & System Integration | 4). Relevant training and education | Understand the direction, method, and spirit of standardization. | Participated by the implementation team and management representatives. | |
5).Drafting documentation | Decide documentation framework, format, table of contents, numbering principles, and appoint editors and the completion date. | Management team assigns tasks | ||
6). Establishing documentation | Drafting and revising procedural documentation | Internal discussion and review | IP management principles (refer to prior text) | |
Define the scope and content of standard format. Appoint editors and the completion date. | Establish standard format as an example before documenting | |||
Prepared IP management manual to aid employees and customers to understand the organization's IP management system | Implementation team and management team | |||
3.Implementation | 7). Provide training & education specifically for the internal audit personnel | Explain the purpose of auditing and execution details | Participated by Internal audit committee | Prepare checklist for auditing to be used by auditing personnel |
8). Conduct system implementation and internal audits | Execute documentation processes for the management system and conduct internal audits and review the performance | Implementation, review, correction and prevention. Participated by all employees | ||
9). Conduct overall examination of the intellectual property management system | Implement IP management system | Participated by all members of the implementation team |
Chapter five through chapter eight of TIPS define the core of the guidelines which cover the basic requirements of IP management requirements; top management's responsibilities; resource management; the acquisition, protection, maintenance and exploitation of IP, as well as performance evaluation and improvement. To facilitate Taiwanese enterprises' understanding of TIPS and how to use it to establish a comprehensive IP Management system, we provide the following main steps of establishing an IP management system based on the TIPS's requirements:
In the era of knowledge economy, the abilities of most domestic enterprises to manage tangible assets have gradually matured (ex. ERP system). However, the abilities to manage intangible assets which include intellectual property have yet to be developed. Management systems in most domestic enterprises are fragmented. For example, legal departments are only responsible for contract reviewing tasks; R&D staff has limited IP knowledge. The importance of IP is often overlooked and most enterprises do not see that intellectual property management is the responsibility of every employee. As a consequence, the Taiwanese government establishes and promotes TIPS to encourage domestic enterprises to adopt a systemic approach of managing their intellectual property and TIPS is also provided as a tool to assist enterprises to establish a sound intellectual property management system.
The purpose of implementing TIPS is not to request enterprises to establish a separate management system. In order to maintain efficiency and competitiveness, an enterprise has to have an integrated management system to support its core operations and also to meet the requirements of different management system standards. Eliminating overlaps of the requirements between different quality management systems is an inevitable trend. TIPS incorporates IP management with the ISO 9000 quality management system, which is capable of simplifying the complicated IP management tasks into an effective and standardized IP management system.
TIPS helps an enterprise to establish a systematic process for managing its IP. Through competitive analysis, market trend analysis, and periodic IP management operations review, a company can revise and amend its IP management policies and goals and continually improve its IP management system. For example, sales departments shall collect market trends, competitive information and shall also consciously avoid acquiring materials that may raise infringement concerns. Human resource departments shall focus their efforts in providing IP education and training. Finance departments shall evaluate the costs required for maintaining the existing IP rights and inform the R&D departments to conduct relevant review at the appropriate time. R&D departments shall conduct prior art search before a new research project is commenced.
TIPS offers a simple, efficient, and low-cost management system which assists an enterprise to establish an IP management system that aligns to its business goals and operation activities. We hope that by promoting and encouraging domestic enterprises to adopt and implement TIPS, Taiwan can strengthen its international competitiveness and sustain the growth of its economy and the whole society.
1.Taiwan Intellectual Property Management System (TIPS). The Ministry of Economics Affairs combined the IP management principles and the PDCA (Plan-Do-Check-Action) model used in ISO9001:2000 quality management system to create TIPS. The adoption of PDCA model helps organizations to establish a systematic and effective IP management system which can be continuously improved.
2. Chen Yi-Chih is a Section Manager at the Science and Technology Law Center ; Chen Hung-Chih is a legal Researcher at the Science and Technology Law Center .
3. Data Source:
http://www.atmt.org.tw/html/modules/news/article.php?storyid=135&PHPSESSID=cab6428078a0435c5af1b2e7bbe2b121 (last visited: 08/11/2007 )
4. Data Source:
http://www.cyberone.com.tw/ItemDetailPage/PDAFormat/PDAFContent.asp?MMContentNoID=36372(last visited: 08/11/2007 )
5. “Enterprise” as defined in TIPS includes company, corporate, school, research institute, a specific department or a project team is also included.
6. TIPS was developed based on the PDCA (Plan-Do-Check Action) model, a typical ISO management process which requires continuously monitoring, evaluating, analyzing and improving the whole system.
7. The TIPS guidelines can be found at: http://www.tips.org.tw/public/public.asp?selno=236&relno=236
8. Refer to article: New Philosophy of Intellectual Property – Use ISO Quality Management to establish a systematic IP management in Intellectual Property Journal, issue 74, 02/2005.
9. http://www.tips.org.tw/public/public.asp?selno=236&relno=236 (last visited: 08/12/2007 )
10. The guidelines of TIPS also serve as the requirements for certification purpose. The Industrial Development Bureau of the Ministry of Economic Affairs will issue a certificate to an organization if such organization has implemented an IP management system satisfying the requirements of TIPS.
The Introduction to the Trade Secret Management System Standard 2024/02/06 The “Trade Secret Management System”, released by the Science & Technology Law Institute of Institute for Information Industry on March 1, 2023, is a standard to guide organizations developing a systematic trade secret management system in alignment with relevant regulations and their operation objectives. Its aim is to assist the organizations reducing the risks of trade secret leakage while improving organizational competitive advantages. The Trade Secret Management System standard provides a framework for organizations to design, implement, and continuously improve their trade secret management performance. As defined in Article 2 of the Trade Secrets Act, "trade secret" could be any method, technique, process, formula, program, design, or other information that may be used in the course of production, sales, or operations, meeting following requirements: 1. It is not known to persons generally involved in the information of this type; 2. It has economic value, actual or potential, due to its secretive nature; and 3. Its owner has taken reasonable measures to maintain its secrecy. The Trade Secret Management System standard comprises a total of 10 chapters. The following is a brief overview of each chapter: Chapter 1: This chapter indicates the standard is applicable to all organizations regardless of their types, sizes, and the products or services they provide. It mentions that the organization can determine their management approached to meet the requirements of the standard. Chapter 2: This chapter provides the definitions of specific terms used in the standard. Chapter 3: This chapter introduces the top management’s responsibility to ensure the establishment, continuous appropriateness, completeness, and effectiveness of the trade secret management system. Chapter 4: This chapter requires the organization to define the scope of its trade secrets and ensure the defined trade secrets can be identified. This chapter also requires organization set up the permission to restrict access to personnel who need to know or use the trade secrets. Chapter 5: This chapter introduces the organization shall control the use of trade secrets, including actions such as copying, destruction, etc. Additionally, organization shall preserve the records of the aforementioned use of trade secrets and detect if any abnormal usage exists. Chapter 6: This chapter discusses measures the organization shall take for internal personnel control. These measures include regular training on trade secret-related requirements, signing of confidentiality agreements, and various management actions the organization should take throughout the processes of personnel recruitment, employment, and departure. Chapter 7: This chapter demonstrates the organization’s management of environments, equipment and internet involving its trade secrets. It requires the implementation of access control measures for places where trade secrets are stored or processed. It also stipulates controls on the use of record media and devices which can access trade secrets, as well as controlling the transmission of trade secrets via network. Chapter 8: This chapter introduces the management measures the organization shall take when interacting with other parties. These measures include signing non-disclosure agreement (NDAs) with the party who will access trade secrets and requiring such party not to hold the trade secrets once the corporation ends. Chapter 9: This chapter introduces that the organization shall establish a trade secret dispute resolution procedure to prevent or mitigate damages to the organization caused by disputes. Chapter10: This chapter outlines the supervision and the improvement of the trade secret management system of the organization. Organizations can follow the standard to build their own trade secret management system based on the Plan-Do-Check-Act (PDCA) concept. The trade secret management system would include defining trade secrets to be managed, establishing protocols for the use of trade secrets, managing employees, controlling of internet, devices and environment related to trade secrets, regulating external activities, developing trade secret dispute resolution procedure, and regularly monitoring the effectiveness to improve trade secret management performance. This standard could serve as a benchmark for the organization or third parties to evaluate compliance with expected trade secret managements.
A Survey Study on the Intellectual Property Management amongst Taiwanese CompaniesJ. Kitty Huang Chien-Shan Chiu Background In order to provide insight into intellectual property (IP) awareness, the status quo as well as potential hardship and demands arise over IP management, STLC was commissioned by IDB (Industrial Development Bureau) to conduct a survey study in June 2010. In this article, we provide briefings on the contents, research methodology and major findings of this study. About the research The survey questionnaire was sent by means of emails or posts to a total of 1000 business establishments randomly generated from the registration data facilitated by the Ministry of Economic Affairs. This was also the first time that such a survey has been envisaged on such a comprehensive scale, covering businesses located around Taiwan with the aim being to produce an in-depth analysis into IP management in various industries including manufacturing, precision machineries, photonics, bio-medicals, info-techs, semiconductors etc. Sixty-five percent of the respondents have less than fifty employees and the overall response rate achieved was 13.1%.1 A continuing need to strengthen IP awareness is required The first section of the questionnaire dealing with IP awareness gauged respondent companies IP knowledge and understanding through a series of questions relating to IP law and practice. When asked whether formal registration was necessary to obtain a range of intellectual property rights (IPRs), over 70% of companies replied with correct answers, namely patents, designs and trademarks. However, through other questions at a more advanced level, the responses revealed a general lack of knowledge in IP law and hence a continuing need to strengthen IP awareness is required. For instance, overall 70% of companies know that obtaining patents will require formal registration, yet surprisingly even of these over 50% incorrectly thought the manners of patent utilization, such as making products, will not result in infringing others IPRs. This result arguably suggests that respondents are in the main unaware that a patent does not give the patent owner the right to exploit the patented invention himself, but rather, he has only the “exclusive right” to stop others from doing so. For another instance, whilst 32% of respondents inaccurately thought that a formal registration is required to obtain copyrights, nonetheless this does not equate to the result being a near 70% of companies have a full and correct knowledge in regard to copyright. When faced with a slightly more obscure question of who would own the copyright in commissioned work (such as website creation) in the absence of a contract, 26% of companies didn’t know and 30% answered incorrectly. On the same token, though only 10% of respondents erroneously believed that trade secrets would require a formal registration, when asked whether the company’s client list may be a trade secret, the number of correct replies (61%) drops sharply when compared to the previous one. Though intended as a question to discriminate at the upper levels of trade secret awareness, the replies are more likely to reflect a lack comprehension of the subject among Taiwanese companies. The important message arise from the overall scales in the first section of the survey is that the need for IP awareness promotion and enhancement amongst companies in Taiwan still exists. Lack of IP expertise is a major barrier In the second section of the questionnaire companies were asked a series of questions which were intended to measure the status quo through the extent of IP management practices. Perhaps one would agree that the issue of perceptions of the importance of IP to a company is greatly linked to how effective it manages them. When asked to indicate reasons as to why IP is important to their business, the replies were rather polarized. The two most popular reasons were “means to differentiate from competitors” (33%) and “to prevent infringement” (30%). The distinction between the two is clearly that the former reason is relatively active and strategic whilst the latter is perceived to be passive and defensive. On the other hand, “to retrieve the cost of R&D” (4%) and “to attract more investors” (5%) are least likely to be seen as the reasons why IP is important to them. The results may suggest that generally speaking, Taiwanese companies tended not to utilize their IP to generate revenues nor correlate them with the business strategies, but rather, see them more of a shield to avoid infringement. Companies were asked what IPRs they own and the most common ones are trademarks (21%) and utility patents (20%), with invention patents (14%) being the third on the rank. In contrast only 2% of respondent companies own copyrights. While such result may be attributed to the overall structure of the industry, it may also link to the observation that most companies not merely lack the comprehension of copyrights but may also not be aware of owning such IPR. Furthermore, it is also surprising to find that 45% of respondents do not own any IPRs. The absence of IPRs within these companies is perhaps a key indication of poor awareness and inactive management of IPRs amongst many Taiwanese companies. To measure the extent of IP management is not easy as the intensity of it differs both by sector and by size. Therefore, the task is achieved through 9 questions designed on the concept of PDCA (plan-do-check-act) process which would allow the respondents to review and find out any inadequacy in their IP management as they proceed. One would expect that those companies with effective IP management would take care to evaluate the various IPRs required at different time intervals. Whilst all of the answer choices are considered to be “important timings”, for example “when planning for new skills/products/business” and “when further investment in IP would enhance defense (such as infringement prevention); yet the results revealed that over 60% of the companies did not perform such evaluation at whatever timing. This may suggest that in general, companies in Taiwan are inadequately concerned with the evaluation process within their management of IP. Such a result may consequently make them ignoring means to prevent infringement (such as checking competitors’ IPRs and prior-art search) or pay attention to regulation updates. Effective IP management indisputably requires certain monetary inputs. Companies were asked whether they have regularly spent on obtaining and maintaining IPRs the firm owns, and remarkably only about 36% of respondents answered this question. In addition the companies were asked about how much they spent on “application fees”2,“incentives offered to inventors”, “spending on HR” and “other expense”. Only a paltry 6% of all respondent companies spent on all the abovementioned categories and mostly up to the amount of NT$100,000 (roughly USD$3300) per each. Linked with the spending on IPRs is perhaps whether companies have designated staff responsible for managing IPRs or have a separate IP department. Again, 70% of respondents replied negatively to this question and only 10% of some larger companies (with over 200 employees) have specific personnel or department designated to assume this responsibility. The results may indicate a general lack of expertise in managing IPRs as a barrier to leveraging full value of them as well as making proper legal decision in the event of IP related disputes Companies were asked how to protect their IPRs through a variety of methods of protection though the majority (over 72%) didn’t implement any of them. The most highly identified method being “protect core skills by patents”, however, only 35% of companies adopted such protection. Furthermore, roughly 76% of the companies did not conduct training in IP issues for employees, and over 75% did not attempt to assess the efficiency of their management of IP. The explanation to the above is conceivably a general lack of IP expertise due to inadequate monetary inputs as well as perceived high costs for IP specialists within the company. The results ultimately reflect an inefficient execution of IP management in the massive Taiwanese companies. Most companies have only limited resources The final aspect of IP management that has been surveyed is the hardships occurred and accordingly the resources sought to solve them. When asked what are the major difficulties in the process of managing IP, the most common answers were “high expenditure on filing and maintenance” (18%), “lack of professional advice” (15%) and “regulatory complexity” (15%). These results are arguably all related to the facts already discussed in the afore-mentioned paragraphs. In general, the survey revealed that most companies have only limited resources and therefore highly demand external aids such as government funding or projects to help soften the hardships and improve their management skills. Accordingly, “unifying resources for enhancing IP management through a mutual platform” (22%) and “facilitate industry peer networks” (21%) being the most popular resources sought. Furthermore, 14% of the respondents indicated their urge to receive “on-site expert assistance”, and a remarkable 90% of the respondents have never been aware of the TIPS (Taiwan Intellectual Property Management System) project, which is one initiated by the government to help companies set up a systematic IP management system. As a result, efforts to promote the TIPS project should be further devoted as the initial step to assist companies strengthen their IP awareness and management skills. Conclusion The results of the survey present the status quo of IP management amongst the companies in Taiwan which is proportionally consistent with their IP awareness as well as hardships and resources sought. The present study shows what one might expect, that is larger companies tend to be more IP aware and have greater resources to manage their IPRs, whilst the rest of others (especially SMEs) are in the main inadequately aware of IP, which is crucial to enhance active IP management within and throughout their firms. While various resources are highly demanded, perhaps the government should firstly take steps to promote that awareness within and throughout their organizations. Linked with this is the second important point which is that further promotion of the TIPS project should be aimed at not only enhancing IP awareness but also assisting companies to better manage their IPRs. IP management is essential to preserve IP created by companies and the TIPS system would enable companies to foster and strengthen key aspects of IP management such as conduct training in IP issues for employees, evaluate various IPRs required, etc. Some of the complementary measures as such expert consultations and TIPS networks or seminars would also help to alleviate some of the hardships encountered in the process of managing IP. On the other hand, like the “Survey on Business Attitudes to Intellectual Property” being conducted yearly in Hong Kong since year 2004, it is suggested that the present survey research or the alike to be continually carried out to assist promoting IP awareness within Taiwan industry. Finally, we would like to thank everyone who contributed to this survey research and hope that it provides valuable insight into the goals originally proposed. 1.The survey resulted in 157 replies from which 26 of them were nullified by false or incomplete answers. 2.Application fees” include fees occurred from exploring inventions up to application and maintenance, which also include attorney fees.
Discussion on the Formation of Taiwan’s Network of Intellectual Property Collaboration System in light of Japan’s ExperienceBackground Taiwan industries have been facing an increasing pressure from the competitive global market. To assist the Taiwan industries, the Government has approved the “National Intellectual Property Strategy Guideline” (the “Guideline”) on 17 October 2012. The Guideline stipulates six major strategies and twenty-seven relevant enforcement criteria in relation to intellectual property (“IP”). The six major strategies are as follows: (a) creation and utilization of high-value patents; (b) enforcing cultural integrity; (c) creation of high agricultural value; (d) support free flow of IP for academics; (e) support system of IP trade flows and protection; and (f) develop highly qualified personnel in IP. Under the “innovation of high-value patents” strategy, the relevant enforcement criterion, being “establishing academia-industry collaborative system for IP management”, is to support the Taiwan’s current and future technology development program on R&D planning, IP management and technology commercialization. In other words, this enforcement criterion can greatly improve the ambiguity and inadequacy of Taiwan’s research infrastructure which have caused inefficient research operation. Furthermore, this enforcement criterion can also improve network collaboration between organizations on IP management, allowing more efficient process for managing IP and thus achieving the purpose of “creation and utilization of high-value patent”. In light of the above, this article studies Japan’s practice on integrating the IP network resources and improving their IP management under the University Network IP Advisors Program (“IP Advisors Program”). University Network IP Advisors Framework Outline A. Policy background, goals and methodology National Center for Industrial Property Information and Training (“INPIT”) initiated the IP Advisors Program and commissioned Japan Institute for Promoting Invention and Innovation (“JIII”) to implement and carry out the new policy in year 2011. Prior to the implementation of the new policy by JIII, INPIT has assisted with establishing proper IP management systems for more than 60 Japanese universities by dispatching IP experts and advisors (“IP Advisors”) to each of the universities during 2002 to March 2011. After the implementation of the initial policy, review has suggested that by expanding the network collaboration, such as establishing intervarsity IP information sharing system within their university networks, the universities can fully aware of and identify technologies that were created by them and are beneficial to the industrial sector. In addition, expanding the network collaboration can also help the universities to quickly develop mechanisms that will enable them properly protect and utilize their acquired IP rights. Accordingly, after 2011, the initial policy has expanded its scope and became the current IP Advisors Program. Japan is expected to improve its nation’s ability to innovate and create new technologies. To attain this goal, Japan has identified that the basis for industry-academia-government R&D consortiums is through obtaining information on universities’ and other academic organizations’ research technologies and IP so that Japan can appropriately place these universities in the appropriate wide-area network. This will allow the universities within the wide-area network to establish IP management policy to properly protect and utilize their IP rights. The current IP Advisors Program is conducted through application from the universities in established wide-area network to JIII. Upon review of the application, JIII will then dispatch the IP Advisor to the applicant university of that wide-area network. IP Advisors not only can provide solutions to general IP related problems, they can also provide professional advice and service on how to establish and operate IP management system for all the universities within the wide-area network. B. IP advisors’ role In principle, IP Advisors are stationed to the Administrative School or Major Supporting School within the wide-area network. IP Advisors can be dispatched to other member schools (“Member Schools”) or provide telephone inquiry service by answering IP related questions. In other words, IP Advisors are not stationed in any Member Schools to manage their IP management affairs, rather, IP Advisors advise or instruct the IP managers of the Member Schools on how to establish and utilize IP management system based on the Member School’s infrastructure. The contents of IP Advisors roles listed are as follows: (a) Assist with activities within the wide-area network. 1. assist with establishing information sharing system between universities within the wide-area network; 2. assist with solving region-based or technology-based IP problems; 3. provide inquiry service for planning activities within wide-area network; and 4. provide inquiry service on other wide-area networks activities planning. (b) Provide services for Member Schools (Type 1) with undeveloped IP management system. 1. investigate or analyze the available IP management system in the Member Schools; 2. assist with drafting a plan to establish IP management system (through an assisting role) and provide instructions or advices accordingly; 3. direct personnel training (i.e. provide education on invention evaluation, assessment on applying for patent and contracts); 4. advocate different regimes of IP; and 5. collect relevant information on new developing technologies. (c) Provide services for Member Schools (Type 1) with developed IP management system 1. investigate or analyze the available IP management system in the Member Schools; 2. provide advices or instructions on the application of IP management department; 3. provide advices or instructions for solving IP management problems; 4. direct personnel training (i.e. provide education on invention evaluation, assessment on applying for patent and contracts); 5. advocate different regimes of IP; and 6. gather relevant information on new developing technologies. (d) Provide services for Member Schools (Type 2) 1.Share and exchange information through network conference. C. Recruitment process and criteria JIII adopts an open recruitment process without a set number of allocated IP Advisor positions. Working location is based in Member Schools of wide-area network in Japan. In principle, IP Advisors are stationed in Administrative Schools or Major Supporting Schools within the wide-area network and can only provide telephone inquiry service or temporary assignment for assistance to the Member Schools (Type 1). However, it is noted that IP Advisors do not belong to any specific university within the wide-area network, they are employed by JIII under an exclusive contract. Based on 2013 example, IP Advisors’ employment contract started from 1 April 2013 and expires on 31 March 2014. IP Advisors’ salary and travelling expenses are paid by JIII. However, expenses for Members School (Type 1) establishing a working environment and any other disbursements should be paid by the Member School (Type 1). Furthermore, under the implementation of the current policy with respect to IP Advisors who are unable to comply with the new criteria, previous contract is considered as a non-periodical contract for the IP Advisors to continue to station in the university. However, if IP Advisor is stationed in a specific university, it must be limited to a maximum of 3 years. Due to the IP Advisors’ work, they must comply with the privacy law and keep any obtained information confidential. D. IP advisors’ qualification 1. Require a high level of professional knowledge on IP management system IP Advisor candidates must have relevant experience working in the industry with IP management system department, operation planning department, R&D department (collectively refer as “IP Management Related Departments”). 2. Have relevant experience in directing trainings in IP Management Related Departments IP Advisor candidates must have the ability to train personnel in IP Management. 3. Can provide IP strategies based on the demands. IP Advisor candidates must have the ability to plan and utilize IP strategies to achieve optimal outcomes in R&D base on the circumstances and needs of different universities. 4. Have referral from the supervisors. IP Advisor candidates who are currently employed must be able to obtain a referral from their current positions’ supervisor, IP manager or personnel from higher up. IP Advisor candidates who are current unemployed must be able to obtain a referral from their previous employment. E. IP advisors’ selection process Based on JIII’s “University Network IP Advisors Adopted Standards” (“Adopted Standards”), IP Advisors are selected first through written application followed by interview. After a comprehensive assessment, all qualified candidates will be compared based on their compatibility of the essential criteria and other non-essential criteria, and finally selecting the most suitable candidate for the wide-area network. F. Application criteria for IP advisors services 1.Common requirements for Member Schools of wide-area network (a) must be an university or educational organization pursuant to the School Education Act (No. 26 of 1947) and must be able to conduct research and have set number of entry students and graduates per year;and (b) university must have developed IP related technology or design. 2. Criteria for wide-area network (a) Must have minimum of 3 and maximum of 8 Member Schools (Type 1) and 10 or less Member Schools (Type 2) combined, and have Member School (Type 1) entering wide-area network; (b) Must clearly state the nature of network as region-based or technology-based; (c) With Administrative School as base, the network must have collaborative system to plan network events; (d) Administrative School must be able to propose and carry out network events which can benefit Member Schools (Type 1) and the society through annual business plan. (e) Must be capable to provide indirect assistance to IP Advisors who are limited by time and region such that there is a proper environment to conduct wide-area network events. 3. Entry requirement for Member Schools (Type 1) (a) Must include in the university’s policy that they will become a Member School (Type 1) in the network and provide assistance to IP Advisors accordingly; (b) IP management and IP utilization system must be clearly implemented; (c) must clearly state the scope of responsibility in relation to the collaboration with the Administration School; (d) Propose and carry out an annual business plan which can improve IP management and utilization system to a certain level on their own; and (e) Has the facility to allow IP Advisors to provide assistance and service. 4. Entry requirement for Member Schools (Type 2) (a) Must include in the university’s policy that they will become a Member School (Type 2); (b) Same as paragraph F(3)(b) in this article; and (c) Same as paragraph F(3)(c) in this article. G. Current status quo The original aim was to establish the initial IP Advisors Program to assist with university’s IP management system by dispatching IP Advisors to 60 and more universities from 2002 to March 2011. The current wide-area university network IP Advisors Program started on April 2011. Since then, JIII has dispatched IP Advisors to 8 wide-area networks. In addition, IP Advisors have also been dispatched to wide-area network with art and design colleges/universities. During year 2011, IP Advisors has achieved and completed several IP management policies as follows: 7 IP policies, 3 academia-industry collaboration policies, 2 conflicting interest policies and 2 collaborative research policies etc. Recommendation This article is based on a legal perspective view point, taking Japan’s IP Advisors Program as a reference to provide the following recommendations on the topic of network for academia-industry collaboration in Taiwan. A. Separate levels of collaboration base on needs Using Japan’s policy as an example, universities within the wide-area network require different content of services tailored to each university individually, and the universities can be categorized into two types of member schools based to the content of services. Accordingly, it is recommended that the Government should consider a similar approach to the Japan’s policy when establishing IP management alliance and forming network of IP management system. For instance, design different levels of content and collaboration, and thus expand collaboration targets to gradually include major legal research institute, technology transfer centre for universities, and IP services in northern, center and southern area of Taiwan. This will allow collaboration of these organizations to coordinate IP programs such as IP northern, application and utilization with ease. B. Emphasis on the idea of establishing and maintaining IP basic facilities Based on Japan’s past experience, it is recommended that before expanding IP Advisors related policy to solve regional IP problems, universities must first be assisted to improve their own IP management system, which has taken Japan almost 10 years to improve their universities’ IP management system. From the current IP management system policy, it can be observed that the establishment of IP management system has a certain relevant importance. Furthermore, there is an emphasis on IP Advisors’ experience in training IP managers. Accordingly, it is recommended that the Government in future planning of network IP collaborate system should set short term and long term goal flexibly, such that the basic IP facilities within the members of the network can develop continuously. For example, short term goal for a legal research institute can be growing to a certain size for it to adjust or implement IP related policies. As for longer term goal, it can be a requirement to set up a unit or department to operate and manage IP. C. Expanding the definition of ‘Networks” Taiwan and Japan are high populated country on an island with limited land. Thus, if Taiwan and Japan insist on maintaining the geographic position for networking concept and adopting such concept on the regional economics for cluster effects, then it is difficult for Taiwan and Japan to compete with American Silicon Valley or other overseas universities. In light of the above, on establishing network of IP collaborative system, the Government should take reference from Japan’s practice in 2012 and combine same industry such as medicine industry or art industry in the definition of network. This will accelerate the integration of IP experience, information, and operation management capability within the network of same industry. Conclusion In conclusion, in order to establish academia-industry IP collaboration system and efficiently improve Taiwan’s IP management system in research organizations, first must focus on various policies tailored for different levels of collaboration so that it can be integrated and expand the integration of IP resources such that there is a good foundation to develop IP basic facilities. Following the establishment of good IP foundation, it can then be further develop to more complex IP programs such as IP landscape, planning and strategizing etc.
Taiwan Intellectual Property Survey Report 2023Taiwan Intellectual Property Survey Report 2023 2024/06/27 Innovation & Intellectual Property Center, Science & Technology Law Institute (STLI), Institute for Information Industry has conducted the survey of “The Intellectual Property Survey Report” to listed companies since 2012. The Intellectual Property Survey Report 2023 on Taiwan's Listed and Over-the-Counter Companies was released in February 2024. Among the 331 publicly listed companies surveyed in 2023, the information technology sector had the largest representation, accounting for 44% (145 companies). This was followed by the manufacturing sector at 27% (90 companies), the pharmaceutical and livelihood sector at 18% (58 companies), and the industrial and commercial services sector at 11% (38 companies). Data source: Innovation & Intellectual Property Center, Science & Technology Law Institute (STLI), Taiwan Intellectual Property Survey Report 2023. Fig. 1 types of industry Based on the survey result, three trends of intellectual property management for Taiwanese enterprises have integrated with detail descriptions as below. Trend 1: Positive Growth in Intellectual Property Awareness and Intellectual Property Dedicated Department/Personnel, Budget and Projects 1. Taiwanese enterprises believe that intellectual property plays an important role More than 70% of companies believe that intellectual property can enhance product/service value, help profitability, and protect research results/core competitiveness. Specifically, 72% believe that intellectual property can enhance product/service value and help profitability, and 78% believe it can protect research results/core competitiveness. Additionally, 65% of companies believe that intellectual property can protect and enhance brand value, and 65% believe it can reduce the likelihood of disputes and infringements with others. Data source: Innovation & Intellectual Property Center, Science & Technology Law Institute (STLI), Taiwan Intellectual Property Survey Report 2023. Fig.2 The benefit of intellectual property for the company 2.Taiwanese enterprises maintain investment in the dedicated department and full time personnel for intellectual property 33% of listed companies set up full time personnel for intellectual property and over 32% of those have established dedicated department to handle its business that is higher than 35% in 2023. Data source: Innovation & Intellectual Property Center, Science & Technology Law Institute (STLI), Taiwan Intellectual Property Survey Report 2023. Fig.3 Department or personnel for intellectual property by year 2. Taiwanese enterprises plan budget for intellectual property each year 79% of enterprises have invested a certain amount of funds this year in acquiring, maintaining, and managing intellectual property. By industry, the information technology and pharmaceutical/livelihood sectors have a higher proportion of investment in related expenses, both exceeding 80% Data source: Innovation & Intellectual Property Center, Science & Technology Law Institute (STLI), Taiwan Intellectual Property Survey Report 2023. Fig. 4 fixed budget for intellectual property each year Trend 2: Taiwanese enterprises are willing to disclose their intellectual property information to the public, which can have a positive impact on the company. 1. Enterprises have a positive attitude towards disclosing intellectual property information. 72% of enterprises believe that disclosing intellectual property helps external parties objectively assess the company's value and competitiveness. This is followed by highlighting brand value (52%) and improving the internal management and control of intellectual property. By industry category, 77% of manufacturing companies believe it helps external parties objectively assess the company's value and competitiveness, which is higher than other industries. In the business services sector, 81% believe it helps highlight brand value, a significantly higher proportion. Data source: Innovation & Intellectual Property Center, Science & Technology Law Institute (STLI), Taiwan Intellectual Property Survey Report 2023. Fig. 5 Benefits of disclosing intellectual property management information for enterprises 2. The main channels for public disclosure are company annual reports, sustainability reports, and intellectual property management plans The proportion of companies disclosing intellectual property plans in annual reports reaches 72%. Additionally, approximately 39% and 38% disclose in sustainability reports or intellectual property management plans, respectively. The proportion disclosed in company marketing and promotional materials is 29%, while the proportion in English-language sustainability reports is 20%. Data source: Innovation & Intellectual Property Center, Science & Technology Law Institute (STLI), Taiwan Intellectual Property Survey Report 2023. Fig. 6 Channels for publicly disclosing corporate intellectual property management information Trend 3: Taiwanese enterprises use various types of intellectual property rights to protect their core competitiveness. 1. Trade secrets are considered crucial by enterprises but are less commonly owned forms of intellectual property Enterprises consider trademark rights, invention patents, utility model patents, and trade secrets to be more important, each with an importance score above 4. Design patents and copyrights are considered somewhat less important, each with an importance score of 3.8. However, there is a gap between the importance and the ownership rates of some types of intellectual property. The importance and ownership rates are consistent for trademarks, with an importance score of 4.5 and an ownership rate of 88%. Patents have an importance score of 4.7 and an ownership rate of 70%. Trade secrets have an importance score of 4.6 and an ownership rate of 49%. Copyrights have an importance score of 3.8 and an ownership rate of 30%. Data source: Innovation & Intellectual Property Center, Science & Technology Law Institute (STLI), Taiwan Intellectual Property Survey Report 2023. Fig. 7 Owned and Importance of Various Intellectual Properties 2. The priority of using intellectual property rights varies across different industries Patents are used to protect important assets by the largest proportion of companies, about 86%. This is followed by trademarks at 77%, trade secrets at 66%, and copyrights at 33%. By industry, the order is consistent in information services, manufacturing, and pharmaceutical/livelihood industries: patents, trademarks, trade secrets, and copyrights. In the business services sector, the order is trademarks, trade secrets, patents, and copyrights. Data source: Innovation & Intellectual Property Center, Science & Technology Law Institute (STLI), Taiwan Intellectual Property Survey Report 2023. Fig.8 which type of intellectual property rights do companies use to protect important assets The complete survey report can be accessed in the Taiwan Intellectual Property Management System (TIPS) website. The download link is https://www.tips.org.tw/body.asp?sno=BGCHDC#460