The IP Strategy of Collaboration during COVID-19 Pandemic in Taiwan
1. IP strategy during COVID-19 pandemic
Since the end of 2019, the coronavirus disease called “COVID-19” has become a global pandemic. World Health Organization (WHO) has announced that COVID-19 a Public Health Emergency of International Concern (PHEIC) on Feb. 12, 2020. WHO also announced that the new corona virus pandemic is requiring substantial efforts to enable regular information sharing and research, the global community should demonstrate solidarity and cooperation. Dr. Mukhisa Kituyi, the Secretary-General of United Nations Conference on Trade and Development (UNCTAD), pointed out that Collaboration is the engine of global science under COVID-19 pandemic. Global community should take the experience of Ebola outbreak in 2014-15, through global collaboration can provide opportunities both to create new knowledge and to increase the impact of research by diffusing existing knowledge, quickly and at all levels. Both “openness on data” and “open science in real time” are the key factors of improving collaboration under the crisis.
Chesbrough (2020) noted that the pandemic stimulating innovation in management of intellectual property, such as initiatives like “Open COVID Pledge” encourages companies and universities to release intellectual property for fighting against COVID-19. The IP strategy based on “Open Innovation” concept can go much further, to play an important role in recovering after the crisis. There are two international famous cases in Taiwan, “National face mask production team” and “Face mask map” helped Taiwanese people to overcome the crisis lack of masks during the pandemic. Both cases show the importance of open innovation in facing the crisis, and contain the concept of IP strategy based on collaboration.
2. National face mask production team
Because over 80% of face masks rely on imports, Taiwanese government was aware of the lack of masks when the epidemic began. Since the first COVID-19 case in Taiwan was confirmed on Jan. 21, surgical face masks were sold out in a very short time. The government banned the export of masks on Jan. 24 for controlling the shortages, but it was still a big problem that the production lines at that time could not afford the demand of Taiwanese people. Therefore, how to obtain a large number of mask production lines in a short time and ensure the supply of raw materials had become the primary issue. The government invested NT$200 million (US$6.66 million) and recruited over 100 technicians to form the team named “National face mask production team”. The national team is composed of volunteers from industry and research institutions, especially from Taiwan Machine Tool and Accessory Builders' Association (TMBA).
From Feb. 5 to Mar. 5, the national team completed an estimated half a year’s workload including 62 mask production lines. And the team immediately started the second phase of work to meet the extremely large domestic demand for masks, finally they completed 92 mask production line 6 weeks and continue to assist the government in anti-counterfeiting masks. The key factor for the team to complete such a large amount of work in a very short time is not only the selfless dedication of team members but they effectively utilize and share their advantages in their own industrial field. These team members are “Hidden Champions” of global supply chain, after understanding the composition and principle of each part of the mask production line, they immediately began to assign the work and contributed their skill, know-how and experience of machine tools and accessories for mask-producing collaboration.
3. Face mask map
In additional to the national face mask production team case, the “face mask map” is another successful case of collaboration during the epidemic in Taiwan. In the beginning of the epidemic, Taiwanese people rushed to buy surgical face masks, resulting in insufficient supply of domestic masks. The government implemented face mask purchase controlling such as limiting three per day and later only two per week through the National Health Insurance Administration (NHIA). According to the rationing system, people can buy surgical face masks at NHIA-contracted pharmacies near their home. But in fact, due to the face mask distribution information was not disclosed, people often have to go to many pharmacies to buy masks. Thus, people spontaneously developed “face mask map”, combined with pharmacy locations on Google Maps and the data of inventory quantity in each pharmacies, to help people know where to buy surgical face masks.
Taiwan’s Minister without Portfolio Audrey Tang was in collaboration with Taiwanese software engineers to develop a “real-time map” of local face mask supplies through connecting pharmacy locations on Google Maps and the data of mask inventory quantity in NHIA’s database. With the support of the NHIA database opened according to the license terms compatible with Creative Commons (CC) 4.0, the platform contains over 100 programs and applications was successfully created by public-private collaboration. This platform is jointly maintained by the open community, each member of the community can actively report the updated version information of the applications. Even if the platform has retired due to the implementation of “Name-based Mask Distribution System 3.0”, the successful experience of public-private collaboration platform through “open data” and “open source software” becomes an important foundation of future development.
4. Collaborative IP strategy for crisis management
In different from the traditional IP strategy that emphasizes on excluding others from implementing the patents, the collaborative IP strategy pays more attention to the potential of community co-creation. In the face of the crisis of the epidemic, people are willing to share their IP, know-how and experience to gain more time to fight the epidemic. The collaborative IP strategy can implement the concept of open innovation through knowledge sharing, and flexibly use various IP resources in the face of crisis. Especially in the face of a crisis like COVID-19 that has never been dealt with, the collaborative IP strategy can effectively collect the knowledge and creativity of the community. Cases of “National face mask production team” and “Face mask map” can be used as models for collaboration in the face of crisis, and even continue to be used for recovery after the epidemic.
The open innovation theory supports open, flexible and highly interactional “creative networks”. At the same time, the collaborative IP strategy serves as a means to implement the open innovation theory. Even though many open communities’ IP strategy such as “free and open source software” or “creative commons” do not originate from the open innovation theory, the theory can still provide guidance for collaborative IP strategies in times of crisis. The collaborative IP strategy should not be limited to the sharing of patents, copyrights or trademark rights but include the skill, know-how, experience and idea, which is able to effectively organize community collaboration and innovation in the face of crisis.
Mukhisa Kituyi, COVID-19: Collaboration is the engine of global science – especially for developing countries, World Economic Forum, May 15, 2020, https://www.weforum.org/agenda/2020/05/global-science-collaboration-open-source-covid-19/ (last visited Oct. 20, 2020).
 Henry W. Chesbrough, To recover faster from Covid-19, open up: Managerial implications from an open innovation perspective, Industrial Marketing Management, Apr. 16, 2020, available at https://doi.org/10.1016/j.indmarman.2020.04.010 (last visited Oct. 26, 2020).
Central News Agency, How a team of technicians is helping Taiwan triple mask production, Taiwan News, Mar. 25, 2020, https://www.taiwannews.com.tw/en/news/3903970 (last visited Oct. 30, 2020).
Keoni Everington, Taiwan platform includes over 100 apps showing mask availability in stores, Taiwan News, Feb. 27, 2020, https://www.taiwannews.com.tw/en/news/3882111 (last visited Oct. 30, 2020).
Ali Jazairy, Impact of Collaborative Innovation on IP and Future Trends in IP, Les Nouvelles, 47, 224 (2012).
Antitrust Liability to the Conduct of “Refusal to License” of the Standard Essential Patent 2022/07/19 The notion of Standard Essential Patent（SEP）emerges in the era when manufacturers seek ‘‘compatibility’’ and ‘‘interoperability’’ of their products. The concept of SEPs is proposed to help manufacturers ‘‘talk’’ to each other so the collective manufacturers enjoy the advantage of economies of scales. Meanwhile, the compatibility and interoperability derived from SEPs enhance the consumers’ valuation of the product which creates the ‘‘network effect’’ of the products. There is a long-debated issue in the field of SEP—to what extent shall the SEP holders license their patents in the various level of the supply chain. This issue has much to do with the ‘‘FRAND commitment’’, and is worthy of further analysis. I. SEP and FRAND Commitment The concept of SEP is—when any certain patented technology is selected by the ‘‘Standard Setting Organization’’（SSO）as the commonly used standard, such the patented technology is categorized as a SEP. The SEP holder therefore enjoys stronger ‘‘market power’’ because market participants have no choice but to use the SEP and are required to seek license from the SEP holders. Therefore, to prevent the SEP holders from abusing their market power, SSOs usually require SEP holders to make the FRAND commitment; that is, to license on ‘‘fair, reasonable and non-discriminatory’’ terms. Once the SEP holder breaches the commitment, the SSOs might exclude that technique from the standard. II. “License to all”or“Access to all”issues under FRAND Commitment The FRAND commitment, by textual reading incorporates the wording of ‘‘non-discriminatory’’, and can infer two co-related yet debatable concepts—the ‘‘License to all’’ or ‘‘Access to all’’ arguments. The ‘‘License to all’’ argument holds that all participants in the supply chain retain the access to the specified SEP, while the ‘‘Access to all’’ argument, on the contrary, contends that FRAND commitments don’t necessarily ask SEP holder to license to all practitioners, but when a SEP holder is going to license, he must license on FRAND terms. According to observations, there is a common phenomenon in the SEP licensing practice—most SEP holders tend to license only to the End-Product manufacturers rather than to the manufacturers of the ‘‘Smallest Saleable Patent Practicing Unit’’（SSPPU）. What the SEP holders expect through ‘‘refusal to license’’ to the SSPPU manufacturers are to maximize the potential royalties. Cases inclusive of the Qualcomm case and the Continental case have shown such practical tendency, and only when the SSOs can well define the definitions of FRAND commitments might the issue be truly settled. There are some End-Product manufacturers that consider it ‘‘discriminatory’’ and against the FRAND commitments if the SEP holders refuse to negotiate with SSPPU manufacturers requesting to be the licensee. On the other hand, some consider it inappropriate for the End-Product manufacturers to refuse all negotiations when the SEP holder requests it to be the party to the licensing negotiations. III. The ‘‘refusal to license’’ and the derived Anti-Trust Issue As generally admitted, a firm has no general duty to deal with others; however, there are times when SEP holders’ ‘‘refusal to deal∕license’’ behaviors can constitute wrongful monopoly under Sherman Act section 2. The U.S. judicial practices have categorized three main ‘‘refusal to deal∕license’’ behaviors as wrongful monopoly under Sherman Act section 2; they are: 1.dominant firm forces its customers not to do business with new competitors of that firm, or the dominant firm will terminate business with the customer; 2.dominant firm tries to abandon or alter an existing relationship; 3.dominant firm refuses to provide access to ‘‘essential facility’’ (the equipment or techniques that is indispensable when others would like to compete in the relevant market with the dominant firm). As SEP can be categorized as an ‘‘essential facility’’, this paper will only focus on the third category. The ‘‘Essential Facility Doctrine’’ is—when any monopolist withholds an essential facility and refuses to provide his competitors with the access to the said essential facility, a wrongful monopoly due to the Facility holders’ ‘‘refusal to deal∕license’’ is constituted. According to the leading case—the MCI case, four factors are to be proved by the plaintiff when seeking resort to ‘‘Essential Facility Doctrine’’; they are:（1）the monopolist’s control of an essential facility;（2）the inability of a competitor to duplicate that essential facility;（3）the monopolist’s denial of access to that essential facility to a competitor;（4）the feasibility of providing the essential facility to the competitor by the monopolist. As we can shortly conclude here, if a SEP holder constitute wrongful monopoly because of his ‘‘refusal to license’’ behavior, the perquisite is that the SEP holder would like to join in the ‘‘competition’’ in the relevant market himself. IV. Conclusion—the commonly seen ‘‘refusal to license’’ behavior of SEP holders doesn’t constitute wrongful monopoly As mentioned before, ‘‘competition’’ serves as the prerequisite for the ‘‘Essential Facility Doctrine’’; thus, some SEP holders’ refusal to license to SSPPU manufacturers behaviors—such as Qualcomm in the Qualcomm case and Nokia in the Continental case—are not in accordance with ‘‘Essential Facility Doctrine’’ and do not constitute wrongful monopoly. Qualcomm and Nokia chose not to license to SSPPU manufacturers merely because they want to earn more royalties by licensing to End-Product manufacturers; they didn’t make this choice because themselves would like to compete in the SSPPU markets. However, since there is no clear definition of FRAND yet, whether the SEP holders have truly breached the FRAND commitment remains unsolved puzzle and shall retain to SSO’s clearer definition and the Court’s further rulings. FTC v. Qualcomm Inc., 969 F.3d 974 (9th Cir. 2020). SEP holder Qualcomm would only like to license to the cellphone OEM manufactures rather than to other chips manufacturers. Continental Automotive Systems, Inc. v. Avanci, LLC, et al, No. 20-11032 (5th Cir. 2022). SEP holder Nokia and a licensing platform—Avanci (that Nokia had joined) would only like to license to car manufacturers rather than to Telematics Control Unit（TCU）manufacturers. Japan Patent Office [JPO], GUIDE TO LICENSING NEGOTIATIONS INVOLVING STANDARD ESSENTIAL PATENTS (2018), https://www.jpo.go.jp/e/support/general/sep_portal/document/index/guide-seps-en.pdf(last visited July 19, 2022). See United States v. Colgate & Co., 250 U.S. 300 (1919);Pacific Bell Telephone Co. v. linkLine Communications, Inc., 555 U.S. 438 (2009); Aerotec Int'l v. Honeywell Int'l, 836 F.3d 1171 (9th Cir. 2016) ANDREW I. GAVIL, WILLIAM E. KOVACIC & JONATHAN B. BAKER, ANTITRUST LAW IN PERSPECTIVE: CASES, CONCEPTS AND PROBLEMS IN COMPETITION POLICY 630-654 (2002). See Lorain Journal Co. v. United States, 342 U.S. 143 (1951) See Image Technical Services, Inc. v. Eastman Kodak Co., 504 U.S. 451 (1992); Aspen Skiing Co. v. Aspen Highlands Skiing Corp., 472 U.S. 585 (1985) MCI Communications Corp. v. American Tel. & Tel. Co., 708 F.3d 1081 (7th Cir. 1983)South Korea’s Strategy for Reinforcing Protection of Corporate Trade Secrets-Trade Secret Protection Center
Preface In order to increase the strength of addressing issues on the infringement of intellectual property for small and medium enterprises, Korean government launched Consultative Committee for Intellectual Property Policies, leading by Presidential Council on Intellectual property and conducting with Ministry of Culture, Sports and Tourism, Korean Intellectual Property Office and Ministry of Justice, to discuss how to reinforce efficiency on handling infringement of intellecual property and work on policy for intellectual property protection. Korean government has considered trade secret as the core of corporations; however, corporations think little of it. For this reason, Korea Institute of Patent Information’s Trade Secret Protection Section, in charge of the Trade Secret Protection Center, works to avoid the outflow of business skills and trade secrets, to improve trade secret protection system, to raise awareness of trade secret protection and develops South Korea as an intellectual property power. This article aims to briefly introduce the standard management system, the diagnosis of corporate trade secret and the Trade Secret Certification Service which are schemed out by the Trade Secret Protection Center. Explanation on Major Strategies Trade Secret Diagnosis & Standard Management System In an attempt to offer a diagnosis of current problems about trade secret management in corporations for drawing up suggestions for improvements, the Trade Secret Protection Center sets up a series of questions based on the five categories: organization policy management, document access management, staff management, physical management and information technology management. There are in total 32 questions with detailed sub-questions for knowing if corporations have set up regulations and if the regulations are followed; if the regulations are not followed, if they have strategy to tackle with violation. For example, the question for internet management is to examine on how corporation manages intranet and extranet. Some possible policies are to make them separated, to do authority control or to do nothing. Here is the procedure for diagnosis: 1.Preparation Employees are asked to gather information regarding trade secret management and improvement opinions by a questionnaire. 2.Diagnosis Get the result of how well corporation has done for trade secret management by analyzing the questionnaires. 3.Plan Come up with solutions according to diagnosis. 4.Action Provide suggestions with different levels of work. Level Description A (above 81 point, Excellent) Well-formed trade secret management and great operation B (71-80 point, Good) Limited strategy with law protection for trade secret outflow C (61-70 point, Average) Weak strategy with a lack of law protection for trade secret outflow, management needed D (41-60 point, Fair ) Poor law protection for trade secret outflow, management needed badly F (below 40 point, Poor) High Risk of trade secret outflow The Trade Secret Protection Center will examine and offer staff training periodically in an effort to improve following aspects: 1.Corporation Management (1)Avoid crucial information outflow (2)Systemize issue handling and information authentication process 2.Organization Culture (1)Convey the importance of information protection (2)Decrease the incoordination among departments due to protecting key information (3)Build trade secret protection culture 3.Staff (1)Provide long-term training for trade secret protection (2)Build up ability of trade secret protection The trade secret diagnosis is considered as a way to make trade secret the key intangible asset in corporations and even to increase the competitiveness and to create profits. In addition to the trade secret diagnosis, the Trade Secret Protection Center further provides immature business with the standard management system which contains services with trade secret registration, level distinguishments, authority control, staff management, contract management and certification service. The primary goal of the standard management system is to help with production and maintenance of trade secret certification before issue occurs. When issue happens, the system is right here to submit certification of trade secret and guarantee to the court that nobody can access trade secrets except the possessor of the trade secret and the institution. In other words, the system is intended for following goals: 1.Efficientize Trade Secret Management Save time, money and manpower. Manage trade secret and related information efficiently. 2.Raise Awareness of Trade Secret Protection Among Employees Strengthen awareness and application of trade secret protection by using this system as daily work process 3.Link to the Trade Secret Certification Service Prove the original document of trade secret with the time stamp of ownership for judicial evidences. 4.Link to Information Security Solution Cooperate with various information security solutions, such as trade secret control and outflow block. Trade Secret Certification Service The Trade Secret Certification Service which is built to link to standard management system is put into practice in 2010 by Korean Intellectual Property Office. This service operates by taking the hash values from trade secret e-documents and combining them with authorized time values from trusted third-parties, thereby creating time stamps. Time stamps are then registered with the Korea Institute of Patent Information to prove the existence of original document of trade secrets, as well as and their initial dates of possession. A legal basis is built for the Trade Secret Certification Service in 2014. Amendments of Unfair Competition Prevention and Trade Secret Protection Act indicate registration and proof of the Trade Secret Certification Service and explain that an institution with more than 3 qualified staff and required facilities is eligible to be a Trade Secret Certification Service institution. The Trade Secret Certification Service is characterized by the following properties: 1.Block Trade Secret Outflow Radically Instead of the trade secret itself, this service only asks for hash value of e-records and the authorized time of ownership which make it more secure for corporations to manage trade secrets rather than maintaining under a third-party. 2.Various Electronic Records Available Various types of electronic records are available in this service, such as documents, pictures and video files which could contain production process, laboratory notebook, blueprint, marketing records, financial records, selling information and customer information and contracts. 3.Institution with Credibility It is inevitable that any piece of information could be leaked out; hence trade secret management should be executed by credible institution. For example, corporation can ask the Trade Secret Certification Service Institution to register an original document for a blueprint and get a certification. Then, the corporation can ask for new registration for modified blueprint as well. When issue occurs, the certification would be the proof of original document and time of ownership. As the Trade Secret Certification Service Institution gets legalized, the evidence of original document of trade secrets and initial dates of possession would get more convincible in court. Conclusion The trade secret diagnosis plays an essential role in understanding the level of trade secret management in corporations. The standard management system further provides with improvement and solution for trade secret protection based on diagnosis. In addition, legalized Trade Secret Certification Service also levitates the burden of proof on corporation. South Korea’s experience in trade secret management could be a good example for Taiwan to follow.Utilizing TIPS 1 to Establish a Comprehensive Intellectual Property Management System
Chen Yi-Chih, Chen Hung-Chih 2 I. Foreword 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: Taiwanese enterprises have not taken proactive measures to handle IP management issues and IP management is only viewed as a mechanism to prevent IP infringement. Taiwanese enterprises have not sought ways to proactively and strategically use their intellectual property as a tool to yield profit. Due to limited professional knowledge and resources, Taiwanese enterprises do not know how to manage and exploit IP generated within their companies . 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. II. The Introduction of TIPS A. The Origin and Overview of TIPS 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. B. The Foundation of TIPS 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: The effectiveness of an IP management system can be evaluated through clear policies and goals Chapter 5 of ISO 9001 ： 2000 discusses Management's Responsibility. It states that top management should establish an enterprise's mission, vision, policies and goals, otherwise known as Visionary Leadership. An enterprise should consider its stakeholder's needs, understand the gap between its current status and the ideal state when setting its mission, vision, policies and goals. It should also decide its operational goals by considering available resources and the external environment. Traditional way of IP management only focuses on the operational and managerial processes. Strategic issues such as strategic planning and mission/vision planning are often forgotten, which often leads to a disconnection between strategy and actual operations. The concept of setting clear policies and goals used in ISO Quality Management shall be adopted to manage IP. That is to say, clear policies and objectives should be defined by the top management followed by detailed processes and steps required to realize the goals. Clear operational processes and responsibility help to achieve IP management goals ISO9001:2000 states that quality issues are caused by process, not product and process issues are caused by management since processes are carried out by people. Therefore, all personnel who is involved in carrying out the processes (in other word, all the employees within an organization) shall have the responsibility to improve quality. This concept applies to IP management as well. It is an incorrect general belief that IP management is merely for damage control or risk prevention. It is also an incorrect belief that an IP management is the sole responsibility of the legal department that other departments have no roles to play in enhancing the added-value of IP. For enterprises intending to utilize IP to enhance its competitiveness, some suggestions as listed below should be taken into account when planning their IP strategies: Set IP management as one of the company's operational goals. Organize a team to implement the IP strategy and to determine the processes required to achieve the IP goals. Clearly identify roles and responsibilities for personnel involved in all levels of IP management. Identify tasks required to be documented. Ensure the employees understand the linkage between their assigned tasks and the corresponding organizational goals. Through careful considerations of planning the organizational goals, processes and the expected outputs derived thereupon, enterprises can determine whether the processes so planned are necessary, appropriate, and effective . Consequently, minimizing the resources required to be invested into IP management. Monitoring, evaluation, and corrective actions can help to ensure the effectiveness of an organization's IP management processes Clause 8.2.1 of ISO9001:2000, “customer satisfaction”, emphasizes that customers own the right to evaluate. In the case of IP management, customers are basically the enterprise itself, therefore the performance is evaluated based on whether the set organizational goals can be achieved. It has been observed that many companies implemented the ISO Standards purely for the purpose of obtaining ISO's certification and do not consider whether the processes implemented are, in the practical sense, effective or efficient. Under this circumstance, the enterprises would not gain any actual benefits, despite that the requirements of ISO standards are met. The goal of process management is to improve the process efficiency, effectiveness and adaptability. Clause 8.2.3 of the ISO9001:2000 discusses Monitoring and Measurement of Process and Clause 8.2.4 talks about Monitoring and Measurement of Product. They state that an organization should establish a mechanism to monitor, evaluate, and understand the organization's internal and external customers' needs. This mechanism can also help to determine whether the organization can meet or exceed the expectation of its customers (in terms of processes, products, and/or services), which is also a critical element in establishing a systematic IP management system. If the result of evaluation does not meet expectation, there is a problem. In order to prevent the problem from reoccurring, prevention is the best. The concept of prevention is to design measures to avoid the occurrence of hidden problems. Unexpected problems are inevitable to occur even if preventive measures have been taken. We should analyze the impact of the problems occurred and propose counter measures to minimize their impact. The efficiency of IP Management relies on continuous improvement There are always opportunities to improve any process. Clause 8 of the ISO9001:2000 discusses Measurement, Analysis and Improvement which includes continuous improvement processes. Clause 8.2 Monitoring and Measurement, Clause 8.3 Control of Nonconformity, and Clause 8.4 Analysis of Data discuss the issues surrounding monitoring, measurement, analysis and control of nonconformity. Clause 8.5 discusses Improvement, which covers action taken to address the causes of identified issues. There are many issues that may be identified after analysis which cannot be resolved at once. Clause 5.1 of ISO 9001:2000 Management Commitment requests that the top management team be responsible for setting policy and goals, and providing resources needed to achieve the goals. By introducing ISO9001:2000 measurement, analysis, and improvement methodologies into the IP management system, it is believed that enterprises can thus effectively manage their IP and achieve a win-win scenario with their customers. C. The expected benefits of Implementing TIPS 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: Enhancing market competiveness and increasing the added-value of an organization An IP management system that is designed to meet the specific needs of an organization shall play a significant role in achieving the organization's operational goals. Take a fitness equipment or an automobile parts manufacturer as an example, if the manufacturer owns the IP rights (ex: new design patent or trademark) embodied within the products, it is expected that the manufacturer can profit more than a purely OEM company which does not own its own brand. This is because the IP rights embodied within the products could provide significant added-value beyond what an OEM company can offer. Increasing customer's ordering intent The guidelines of TIPS also serve as the requirements for certification purpose. A government certified IP management system will ease concerns over trade secret protection and thereby promote cooperation and trusting relationships between the suppliers and the buyers and between research collaborations which consequently would foster better research results and potentially more purchasing orders. Minimizing resource wasting and actively creating profits Most small and medium enterprises in Taiwan do not have adequate labor and financial resources to develop a comprehensive IP management system. It is the hope of the government that a simple, effective, and low-cost IP management system can be established which tailors to the specific needs of every enterprise by adopting the TIPS framework. Once enterprises are capable of systematically manage their IP, it is expected that the IP generated and their exploitation can really match the enterprises' requirements and expectations, so that no resource is wasted to produce unwantable IP. The enterprises may further increase their profits by licensing or assigning their IP rights. Fostering an organizational culture that values the importance of intellectual property and the ability to continuous improve Establishing IP management policies, coupled with ongoing IP management seminars and education and training programs for new employee would enhance the awareness of the importance of IP management to the organization among the employees. The employees may further change their attitudes from passively complying with the policies to actively participate the system such as paying particular attention to potential IP risks and offer suggestions for process improvement. One company which implemented TIPS commented that the regular and ad hoc audits requirement and the necessity of assigning roles and responsibilities as required by TIPS assist it to identify problems concerning management issues. Corrective and preventive actions can be rapidly taken to address the problems identified, allocate the liabilities and improve the whole system. As a consequence, the IP management system can be effectively carried out to ensure that the planned objectives are met. It was found that most companies do not have internal audit and continual improvement programs to detect the hidden problems concerning management. Enhancing risk management and the capability to respond Currently, the fundamental and most important goal for an enterprise's IP management is to reduce the risks of infringement. Enterprises which have implemented TIPS found that TIPS is capable of enhancing data sharing across the departments which allows the IP department to detect potential risks at the earliest time. Further, the establishment of risk management mechanism and processes in response to infringement allegations as required by TIPS helps to institutionalize an enterprise's management system in handing legal risks. III. A holistic approach to IP management 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: Whether records are stored property? Who should conduct the audit? Whether the current system meets the IP management policy or goals? What are the roles and responsibilities? The following section aims to explain how Taiwanese enterprises can establish or modify their current IP management system to achieve its full potential: A. Roles and Responsibilities for Implementation 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: Executive management team (Management executives, ex. CEO, President, COO) a. Establish IP management policy and goals; b. Communicate the importance of compliance to the IP management policy; c. Evaluate and review the effectiveness of the IP management system; and d. Ensure the readiness of the resources available for establishing the IP management system. IP Management System Representatives (Managers who have decision-making authority, ex. EVP, VP) a. Ensure that the required processes for the IP management system are established, implemented, and maintained; b. Report to the executive management team on the performance and improvement needs for the existing system; and c. Ensure employees understand the IP management policy and goals. Department Representatives (All department representatives) a. Execute tasks assigned by the IP management system representatives; b. Execute action items reached by the steering committee meetings; c. Ensure the achievement of IP management goals, and d. Responsible for the Maintaining and improving the IP management system. B. Steps of Implementation Plan 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 C. Implementation 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: Define the company's IP management goals Enterprises that would like to establish an IP Management system have to understand their unique features and future operation strategies to evaluate the needs for managing their IP. Clauses 4.1, 5.2, and 5.3.1 of TIPS stipulate that the management team has the responsibility to set clear IP management policy and goals. For example, one policy can be to increase R&D efficiency and the goal can be to reduce the product development cycle by 10%. Defining appropriate IP Management policies can help to establish a IP management system that meets an enterprise's practical needs. It can also be used as basic principles for formulating IP strategies and subsequently the implementation processes of IP management system. The management team should utilize intranet or bulletin boards to inform its employees of the organization's IP management policies, goals, and relevant responsibilities assigned to each department. This will help employees to understand their roles and responsibilities and the importance of their participation in achieving the organization's goals. Develop required processes for achieving enterprise's IP management goals The ultimate purpose of establishing an IP management system is to maximize profits and to minimize losses. To ensure successful acquisition of targeted IP, companies should plan and develop processes and operating procedures based on their needs and business development strategies. During this stage, companies should focus on the followings in order to meet TIPS's requirements: Understand statutory and regulatory requirements concerning IP The management target of TIPS is intellectual property, which includes trademark, patent, copyright, trade secrets and etc. Different IP acquisition approaches apply to different IP targets. Complying with Clause 7.1, companies must firstly understand all the statutory and regulatory requirements before a plan is made for the acquisition of targeted IP. For example, according to the relevant legislations in Taiwan, once a work is created, the authors obtain the copyright in the work. However, the right to patent or trademark can only be acquired through registration. Evaluate options for acquiring the targeted IP Enterprises shall evaluate different options (i.e. self-development, purchase or outsourcing) for acquiring their targeted IP by taking into account of their business operation objectives and the characteristics of their products as the methods of acquiring IP will influence the subsequent processes concerning the protection, maintenance and exploitation of the acquired IP. Clause 7.2 of TIPS requires enterprises to implement processes regarding to the evaluation of the options for acquiring the targeted IP. Clause 7.3.5 further requires enterprises to set up an assessment procedure for every IP application and suggests to incorporate an invention incentive program. Define roles and responsibilities After completing the feasibility study concerning various options to acquire the targeted IP, enterprises have to decide whether to establish an IP management specialized department (ex. legal or IP department) and to define clear roles and responsibilities based on the company's scale and resource available. Companies should pay particular attention on preparation work, such as conducting patent or trademark prior art search, to avoid wasting of resources and voided applications. If enterprises outsource IP management related activities to external bodies, Clause 7.4.1 of TIPS requires them to have a clear knowledge of the service quality provided by the outsourcing bodies and to establish a controlling mechanism over the outsourcing activities (ex. evaluation → outsourcing → contract → periodic evaluation…etc.). Special attention has to be paid to the contractual terms concerning obligations and ownership of IP. Determine Resources Required Enterprises that would like to establish an IP management system not only have to ensure that they have enough resources, but also need to ensure that the resources can be utilized in an effective way. The management team, in accordance of the requirements for Clauses 5.4.2 a nd 6.1 of TIPS, should provide resources (including labor and equipment) required for the implementation of the IP management system. Examples include the continual recruitment of manpower and the purchasing of computer software and hardware equipments and etc. As far as labor is concerned, enterprises, in accordance with Clause 6.2.1 , have to ensure that their employees have adequate abilities to assume their responsibility. Clause 6.2.1 states that companies should provide basic IP education and training to equip the employees with necessary knowledge. Pursuant to Clause 6.2.3, enterprises should provide their patent engineers and legal staff with advanced training, such as intellectual property litigation and arbitration, intellectual property licensing and contracts, techniques for patent design around, IP valuation and so on. In summary, enterprises should enhance the employees' (both new and existing employees) awareness of IP, the importance of complying with statutory requirements and the enterprises' internal IP policies and goals through education and training. Establish an IP Management System After determining the resources required, enterprises need to establish a basic system to manage their IP. The system shall include a documentation control system, an audit program, an internal communication channel and so on. We provide a summary explaining the details of each program required to establish a basic IP management system: Basic IP Management System (1) Documentation Control System: Enterprises should establish a systematic documentation control system based on their IP management policies and goals, such as document control procedures, internal audit process and etc. Among those, the most important one is an IP management manual. Clause 4.3 of TIPS requires the enterprises to state all the following items in their IP management manual: IP management policies and goals; roles and responsibilities; processes and procedures; and flow charts or grid charts to explain the interrelationships between the processes and procedures. Further, Clause 4.4 also states that all documents, no matter whether they are internally generated or externally acquired (ex. court notice, invitation to tender, official documents) should be properly managed. The source, level of confidence, method of management should be clearly labeled for future purposes. (2) Audit Program: Clause 5.4.2 states that top management has to be responsible or otherwise shall designate a management representative (the most senior staff that is responsible for intellectual property matters, such as vice president or director of IP management department) to manage a company's IP related issues. The top management team is also in charge of establishing a management review meeting, and setting agenda for each meeting such as discussing or revising the IP management policies and goals. Through management review meeting, pursuant to Clause 5.5, management representative must confirm that the set IP goals are met or if not, whether to revise the original policies or goals. All departments or responsible personnel (ex. legal, IP, general administration, accounting, human resource) shall participate the management review meeting. (3) Confidentiality Control Program: Enterprises in accordance with Clauses 4.4.1 a nd 7.4.4, should enhance feasible safety controls to protect their IP, such as setting document confidential criteria, physical access control, and control over replication of confidential documentation to limit exposure of important data. Supplemental IP Management System In addition to the above mentioned programs, supplemental IP management programs are required to assist in establishing an effective IP management system. They are outlined as follows: (1) Outsourcing Program: Due to cost or resource concerns, enterprises may outsource its R&D or IP prosecution activities to external professional agencies. Clauses 4.1 and 7.4.1 of TIPS require that the contracts entered into must clearly identify the ownership of IP involved and include a term of confidentiality obligation. This is to ensure that the outsourcing activities can be properly monitored and to prevent the leakage of important data. (2) Contract Review and Human Resource Management Programs: In order to prevent and avoid intellectual property infringement, in accordance with Clause 7.4.6 , enterprises should review all contractual terms of their contracts. As far as human resource management is concerned, in accordance with Clause 7.4.3, enterprises shall require new employees to sign an employment contract . Such contract shall include a term of confidentiality obligation and a non-competing clause may be included if necessary. (3) Internal Consulting and Communication Channel: During the period of establishing an IP management system, enterprises in accordance with Clause 5.5.2 must request relevant departments (ex. legal, sales, finance and accounting) to provide useful information concerning IP management. According to Clause 5.4.3, enterprises must establish communication channels (ex. dedicated mailbox, email) which is used to understand the feelings and to know the difficulties faced by the employees as it is inevitable to face challenges when a new system is being implemented, consistent communication and coordination is the only way to overcome these challenges. Ensure that Auditing and Preventive and Corrective Measures have been Taken Pursuant to Clauses 8.1 and 8.2, enterprises with IP management systems need to establish internal audit plans (including audit frequency, time, or method) to ensure that their IP management policies or goals are being met. Enterprises should ensure that their internal auditors are qualified i.e. have obtained the relevant professional certification, before conducting the internal audits. If nonconformities have been found through internal audits, corrective or preventive measures should be taken pursuant to Clauses 8.4.2 a nd 8.4.3. For instance, if the result of internal audit reveals that the R&D staff failed to keep their R&D records in accordance with the set rules and requirements, companies shall find out the causes (i.e. the reasons of the nonconformity) and then take appropriate corrective or preventive measures. An example of corrective measure can be to increase the frequency of checking the relevant records. And an example of preventive measure can be to provide incentive program to encourage the compliance of the relevant rules and regulations. Pursuant to the requirements of Clause 8.3, enterprises should collect and analyze relevant information, such as the internal audit reports, results of the corrective measures taken, and the results of market/competitors analysis. The above information can be used as input information during management review (Clause 5.5.2 ) to decide whether it is required to amend or set new intellectual property management policies and objectives. Through continual auditing and revising, a systematic IP management system can be established. IV Conclusion 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.Discussion on the Formation of Taiwan’s Network of Intellectual Property Collaboration System in light of Japan’s Experience
Background 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.