Recent Federal Decisions and Emerging Trends in U.S. Defend Trade Secrets Act Litigation
I. Introduction
The enactment of the Defend Trade Secrets Act of 2016[1] (the “DTSA”) marks a milestone in the recent development of trade secret law in the United States (“U.S.”).[2] Recent federal decisions and emerging trends in DTSA litigation regarding the following issues deserve the attention of Taiwanese companies who might be involved in DTSA litigation in U.S. federal courts (“federal courts”): (1) whether the DTSA displaces any other civil remedies provided by the existing trade secret laws; (2) whether a plaintiff should pay attention to any pleading standard when bringing a DTSA claim in federal court; (3) whether a federal court will easily grant an ex parte application for seizure order under the DTSA (an “ex parte seizure order”); and (4) whether the DTSA applies to trade secret misappropriations that occurred before the DTSA came into effect. This article provides insights into these developments and trends, and concludes with their implications at the end.
II. The DTSA does not displace any other civil remedies provided by the existing trade secret laws, and federal courts may nonetheless turn to pre-DTSA laws and decisions for guidance
The DTSA states that it does not “preempt” or “displace” any other civil remedies provided by other federal and state laws for trade secret misappropriation.[3] Prior to the enactment of the DTSA, the civil protection and remedies of trade secrets in the U.S. have traditionally been provided under state laws.[4] The DTSA provides federal courts with original jurisdiction[5] over civil actions brought under the DTSA, giving trade secret owners an option to litigate trade secret claims in federal courts.[6] As a result, the DTSA adds a layer of protection for trade secrets and creates a federal path for plaintiffs to pursue civil remedies.[7]
Some commentators point out that federal courts, when hearing DTSA claims, construing DTSA provisions or analyzing DTSA claims, oftentimes turn to state laws and decisions existing prior to the enactment of the DTSA for guidance.[8] Various decisions show that federal courts tend to look to local state laws and pre-DTSA decisions when hearing DTSA claims or making decisions.[9] This suggests that pre-DTSA trade secret laws and prior decisions remain an indispensable reference for federal courts.
III. A plaintiff should pay careful attention to the plausibility pleading standard when bringing a DTSA claim in federal court
A plaintiff's pleading in his complaint must satisfy the plausibility pleading standard when the plaintiff brings a DTSA claim in federal court.[10] Otherwise, the plaintiff's complaint may be dismissed by the federal court.[11] Filing a motion requesting dismissal of the plaintiff's complaint[12] on the grounds of the plaintiff's failure of stating plausible claims for relief is thus a defense that a defendant may employ to defeat the plaintiff's claim in the early stage.[13]
The DTSA opens the door of federal courts to trade secret plaintiffs to pursue civil remedies,[14] but the DTSA does not “guarantee unfettered access to the federal courts.”[15] When filing a DTSA lawsuit in federal court, a plaintiff must state “the grounds for the court's jurisdiction,” the plaintiff's claims (entitlement to relief), and the plaintiff's “demand for the relief sought” in his complaint.[16] The claim and statement pled by the plaintiff in his complaint must meet the “plausibility” threshold.[17] In other words, at the pleading stage, a plaintiff should plead facts sufficiently demonstrating that all prerequisites of his claim (e.g., jurisdiction and venue,[18] elements of a claim required by the DTSA,[19] etc.) are satisfied when bringing a DTSA claim in federal court.[20] For instance, in addition to claiming the existence of his trade secret, a plaintiff should state how his trade secret was misappropriated through improper means.[21] However, in the context of trade secrets, the plausibility pleading standard can be challenging to a plaintiff because it is never easy to balance between “satisfying the required pleading standard” and “avoiding disclosing too much information about the trade secret in a pleading.”[22]
Let's take pleading the existence of a trade secret as an example. Under the plausibility pleading regime, a plaintiff is required to plead all relevant facts of trade secret (elements)[23] defined by the DTSA to affirmatively prove the existence of his trade secret.[24] In other words, a plaintiff needs to state sufficient facts indicating that the information in dispute has economic value while not being known to the public, and reasonable steps have been taken to maintain the secrecy of that information,[25] all of which plausibly suggest that the information in dispute qualifies as a trade secret.[26] Federal courts do not require a plaintiff to disclose his trade secret in detail in his complaint.[27] Nevertheless, a plaintiff should be able to provide the “general contour” of the alleged trade secret that he seeks to protect.[28] Federal courts would be reluctant to see that a plaintiff, merely “identify[ing] a kind of technology” or “point[ing] to broad areas of technology,” or barely asserting that the misappropriated information is confidential, then “invit[ing] the court to hunt through the details in search of items meeting the statutory definition.”[29] Instead of simply alleging that the subject matter at issue involves a trade secret, a plaintiff's complaint should contain descriptions identifying the plaintiff's trade secret.[30] For instance, in his pleading, a plaintiff has to tell what information is involved and what efforts have been made to maintain the confidentiality of such information.[31] For further example, a plaintiff should provide documents or information constituting the alleged trade secret rather than merely listing general topics or categories of information.[32]
IV. Obtaining a DTSA ex parte seizure order is challenging as federal courts tend to take a conservative approach to prevent abuse of this ex parte seizure remedy
Since the DTSA came into effect, federal courts rarely grant an ex parte application for seizure order under the DTSA.[33] The provision for ex parte seizure orders is a controversial part of the DTSA[34] as it allows a court, upon ex parte application and if all DTSA requirements are met, to issue a civil order “for the seizure of property necessary to prevent the propagation or dissemination of the trade secret.”[35] So far federal courts have been hesitant to order DTSA ex parte seizures and are giving great deference to the statutory text of the DTSA seizure order provision.[36] Only when a federal court finds it “clearly appears from specific facts” that certain requirements are met[37] and only in “extraordinary circumstances”[38] may a federal court issue an ex parte seizure order.[39] When being confronted with an ex parte application for seizure order under the DTSA, federal courts tend to favor a conservative approach to prevent the abuse of this ex parte seizure remedy.[40] If any alternative equitable relief is available to achieve the same purpose, federal courts will likely find it unnecessary to issue an ex parte seizure order.[41] In addition, a plaintiff's mere assertion that the defendant, if given notice, would destroy evidence or evade a court order, but without showing that the defendant “had concealed evidence or disregarded court orders in the past,” will likely be insufficient to persuade the court to issue an ex parte seizure order.[42] Furthermore, federal courts will decline to order an ex parte seizure if a plaintiff fails to meet his burden demonstrating that the information in dispute constitutes a trade secret.[43] All of the foregoing suggests that one will likely face an uphill struggle in federal court when seeking to obtain an ex parte seizure order under the DTSA.[44]
Though federal courts sparingly order DTSA ex parte seizures, to date at least one federal court did issue a published DTSA ex parte seizure order, which appeared in Mission Capital Advisors, LLC v. Romaka.[45] In Romaka, the defendant allegedly downloaded the plaintiff's client and contact lists to the defendant's personal computer without the plaintiff's authorization; the plaintiff filed an ex parte motion seeking to seize some properties containing the plaintiff's trade secrets or enjoin the defendant from disclosing that information.[46] During the trial, the defendant neither acknowledged receipt of the court's prior orders[47] nor appeared before the court as ordered,[48] all of which together with other facts in Romaka convinced the court that other forms of equitable relief would be inadequate and the defendant would likely evade or otherwise disobey the court order.[49] After reviewing the facts of this case along with DTSA requirements item by item, the Romaka court found it clearly appears from specific facts that all requirements for an ex parte seizure order under the DTSA are met,[50] and thus, issued a said seizure order as requested by the plaintiff.[51] Romaka gives us some hints about what circumstances would cause a federal court to order a DTSA ex parte seizure.[52] This case tells us that evading or disregarding court-mandated actions is likely demonstrating to the court a propensity to disobey a future court order and may probably increase the likelihood of meriting a DTSA ex parte seizure order.[53] Moreover, echoing other decisions rendered by federal courts, Romaka reveals that federal courts tend to approach ex parte seizure order applications in a gingerly way.[54]
Federal courts take a conservative approach toward ex parte seizure order to curtail abuse of such order[55] does not mean that no injunctive relief is available to victims of trade secret misappropriation. Injunctive relief provided by other federal laws or state laws[56] is nonetheless available to those victims.[57] As long as the facts of the case before the court meet all elements required for injunctive relief, it is not rare for federal courts to grant injunctive relief other than an ex parte seizure order.[58]
V. The DTSA might apply to a pre-DTSA trade secret misappropriation that continues after the DTSA became effective
The DTSA expressly states that it applies to any trade secret misappropriation that “occurs on or after the date of the enactment” of the DTSA.[59] Therefore, the DTSA does not apply to trade secret misappropriations that began and ended before the effective date of DTSA.[60] In practice, it is possible that a federal court will dismiss a plaintiff's DTSA claim if the plaintiff fails to state that the alleged trade secret misappropriations (either in whole or in part) took place after the DTSA came into effect.[61]
Federal courts have begun addressing or recognizing that the DTSA might apply to trade secret misappropriations that occurred prior to and continued after the enactment date of the DTSA.[62] However, a plaintiff should “plausibly” and “sufficiently” plead in his claim that some parts of the alleged continuing misappropriation of trade secrets occurred after the DTSA became effective.[63] Some critics opine that, in the case of a continuing trade secret misappropriation that took place before and continued after the DTSA was enacted, the available recovery shall be limited to “post-DTSA misappropriation.”[64]
By being mindful of the foregoing, maybe someday a plaintiff will bring a DTSA claim for a pre-DTSA misappropriation of trade secrets that continues after the DTSA is in effect.[65] In this kind of litigation, one should pay attention to whether the plaintiff has plausibly and sufficiently alleged the part of misappropriation that occurred after the enactment date of the DTSA.[66] When a plaintiff fails to plausibly and sufficiently alleges the post-DTSA misappropriation part, the defendant stands a chance to convince the court to dismiss the plaintiff's claim.[67]
VI. Conclusion
To sum up, recent federal decisions and emerging trends in DTSA litigation provide the following implications to Taiwanese companies who might be involved in DTSA litigation in federal court:
1. The DTSA does not preempt or displace any other civil remedies provided by other federal laws and state laws.[68] Rather, the DTSA adds a layer of protection for trade secrets and creates a federal path for plaintiffs to pursue civil remedies.[69] Federal courts tend to turn to local state laws and pre-DTSA decisions for guidance when hearing DTSA claims or making decisions.[70] Do not ignore pre-DTSA trade secret laws or prior decisions as they remain an indispensable reference for federal court.
2. A plaintiff's pleading must satisfy the plausibility pleading standard when the plaintiff brings a DTSA claim in federal court.[71] Whether the plaintiff's pleading satisfies the plausibility pleading standard is likely one of the hard-fought battles between the parties in the early stage of the litigation. The plausibility pleading regime does not require a plaintiff to disclose his trade secrets in detail in his complaint.[72] However, a plaintiff should be able to describe and identify his trade secrets.[73]
3. Seeking to secure a DTSA ex parte seizure order in federal court will likely face an uphill battle.[74] Obtaining alternative injunctive relief would be easier than obtaining a DTSA ex parte seizure. When being confronted with an ex parte application for seizure order under the DTSA, federal courts tend to favor a conservative approach to prevent the abuse of this ex parte seizure remedy.[75] Notwithstanding the foregoing, as long as the facts of the case before the court meet all elements required for injunctive relief, it is not rare for federal courts to grant injunctive relief other than an ex parte seizure order.[76]
4. The DTSA might apply to trade secret misappropriations that occurred prior to and continued after the enactment date of the DTSA.[77] When a DTSA litigation involves this kind of continuing misappropriation, one of those hard-fought battles between the parties during litigation will likely be whether the plaintiff has plausibly and sufficiently stated the part of misappropriation that occurred after the DTSA came into effect.[78] When a plaintiff fails to plausibly and sufficiently alleges the post-DTSA misappropriation part, the defendant stands a chance to convince the court to dismiss the plaintiff's claim.[79]
[1] The Defend Trade Secrets Act of 2016, Pub. L. No. 114-153, 130 Stat. 376 (May 11, 2016) (mostly codified in scattered sections of 18 U.S.C. §§1836-1839 [hereinafter the “DTSA”].
[2] Mark L. Krotoski, Greta L. Burkholder, Jenny Harrison & Corey R. Houmand, The Landmark Defend Trade Secrets Act of 2016, at 3 (May 2016); Bradford K. Newman, Jessica Mendelson & MiRi Song, The Defend Trade Secret Act: One Year Later, 2017-Apr Bus. L. Today 1, 1 (2017).
[3] 18 U.S.C. §1838.
[4] S. Rep. No. 114-220, at 2 (2016) [hereinafter “S. Rep.”]; Kaylee Beauchamp, The Failures of Federalizing Trade Secrets: Why the Defend Trade Secrets Act of 2016 Should Preempt State Law, 86 Miss. L.J. 1031, 1033, 1045 (2017); Zoe Argento, Killing the Golden Goose: The Dangers of Strengthening Domestic Trade Secret Rights in Response to Cyber-Misappropriation, 16 Yale J. L. & Tech. 172, 177 (2014); James Pooley, The Myth of the Trade Secret Troll: Why the Defend Trade Secrets Act Improves the Protection of Commercial Information, 23 Geo. Mason L. Rev. 1045, 1045 (2016); John Conley, New Federal Trade Secret Act and Its Impact on Life Sciences, Genomics L. Rep. (Aug. 12, 2016), https://www.genomicslawreport.com/index.php/2016/08/12/new-federal-trade-secret-act-and-its-impact-on-life-sciences/; Newman, Mendelson & Song, supra note 2, at 1.
[5] 18 U.S.C. §1836(c).
[6] Krotoski, Burkholder, Harrison & Houmand, supra note 2, at 7; Beauchamp, supra note 4, at 1033, 1045, 1072; Lily Li & Andrea W. Paris, Help! What Are My (Immediate) Defenses to a Federal Trade Secret Claim?, 58-Sep Orange County Law. 52, 52 (2016); Newman, Mendelson & Song, supra note 2, at 1.
[7] Conley, supra note 4.
[8] William M. Hensley, Post-Enactment Case Law Developments under the Defend Trade Secrets Act, 59-Jul Orange County Law. 42, 44 (2017); Robert B. Milligan & Daniel Joshua Salinas, Emerging Issues In the Defend Trade Secrets Act's Second Year, Seyfarth Shaw LLP: Trading Secrets (June 14, 2017), https://www.tradesecretslaw.com/2017/06/articles/dtsa/emerging-issues-in-the-defend-trade-secrets-acts-second-year/; Jeffrey S. Boxer, John M. Griem, Jr., Alexander G. Malyshev & Dylan L. Ruffi, The Defend Trade Secrets Act – 2016 In Review, Carter Ledyard & Milburn LLP (Jan. 19, 2017), http://www.clm.com/publication.cfm?ID=5579; Rajiv Dharnidharka, Andrew D. Day & Deborah E. McCrimmon, The Defend Trade Secrets Act One Year In – Four Things We've Learned, DLA Piper (May 30, 2017), https://www.dlapiper.com/en/us/insights/publications/2017/05/defend-trade-secrets-act-four-things-learned/; Joshua R. Rich, The DTSA After One Year: Has the Federal Trade Secrets Law Met Expectations?, McDonnell Boehnen Hulbert & Berghoff LLP, Vol. 15 Issue 3 Snippets 6, 7 (Summer 2017).
[9] HealthBanc International, LLC v. Synergy Worldwide, 208 F.Supp.3d 1193, 1201 (D.Utah 2016); Phyllis Schlafly Revocable Trust v. Cori, No. 4:16CV01631 JAR, 2016 WL 6611133, at *2-5 (E.D. Mo. Nov. 9, 2016); Panera, LLC v. Nettles, No. 4:16-cv-1181-JAR, 2016 WL 4124114, at *4 fn.2 (E.D. Mo. Aug. 3, 2016); Henry Schein, Inc. v. Cook, 191 F.Supp.3d 1072, 1077, 1079-1080 (N.D.Cal. 2016); Engility Corp. v. Daniels, No. 16-cv-2473-WJM-MEH, 2016 WL 7034976, at *8-10 (D. Colo. Dec. 2, 2016); M.C. Dean, Inc. v. City of Miami Beach, Florida, 199 F. Supp. 3d 1349, 1353-1357 (S.D. Fla. 2016); GTO Access Systems, LLC v. Ghost Controls, LLC, No. 4:16cv355-WS/CAS, 2016 WL 4059706, at *1 fn.1, *2-4 (N.D. Fla. June 20, 2016); Earthbound Corp. v. MiTek USA, Inc., No. C16-1150 RSM, 2016 WL 4418013, at *9-10 (W.D. Wash. Aug. 19, 2016); Kuryakyn Holdings, LLC v. Ciro, LLC, 242 F.Supp.3d 789, 797-800 (W.D. Wisc. 2017).
[10] Michelle Evans, Plausibility under the Defend Trade Secrets Act, 16 J. Marshall Rev. Intell. Prop. L. 188, 190 (2017); Eric J. Fues, Maximilienne Giannelli & Jon T. Self, Practice Tips for the Trade Secret Holder: Preparing a Complaint Under the Defend Trade Secrets Act, Inside Counsel (June 14, 2017), https://www.finnegan.com/en/insights/practice-tips-for-the-trade-secret-holder-preparing-a-complaint.html; David R. Fertig & Michael A. Betts, The Defend Trade Secrets Act: Jurisdictional Considerations—Part I, 29 No. 7 Intell. Prop. & Tech. L.J. 3, 3-5 (2017) [hereinafter “Considerations—Part I”].
[11] M.C. Dean, 199 F. Supp. 3d at 1357; Chatterplug, Inc. v. Digital Intent, LLC, No. 1:16-cv-4056, 2016 WL 6395409, at *3 (N.D. Ill. Oct. 28, 2016); Raben Tire Co. v. McFarland, No. 5:16-CV-00141-TBR, 2017 WL 741569, at *2-3 (W.D. Ky. Feb. 24, 2017).
[12] Fed. R. Civ. P. 12(b).
[13] Jessica Engler, The Defend Trade Secrets Act at Year One, 12 No. 4 In-House Def. Q. 20, 22 (2017).
[14] Conley, supra note 4.
[15] Fertig & Betts, Considerations—Part I, supra note 10, at 3.
[16] Pleading the grounds for the court's jurisdiction, the plaintiff's claim (entitlement to relief), and the plaintiff's demand for the relief sought are requirements for the pleading under Article 8 of the Federal Rules of Civil Procedure (the “FRCP”). Fed. R. Civ. P. 8(a). The FRCP applies to “all civil actions and proceedings in the United States district courts.” Fed. R. Civ. P. 1. Thus, the FRCP requirements also apply to DTSA civil actions brought in federal courts. Evans, supra note 10, at 190; Fues, Giannelli & Self, supra note 10; Fertig & Betts, Considerations—Part I, supra note 10, at 3-4.
[17] In Bell Atlantic Corporation v. Twombly, the U.S. Supreme Court interpreted Article 8(a) of the FRCP, introduced the concept of “plausibility pleading,” and established the plausibility pleading standard. Bell Atlantic Corporation v. Twombly, 550 U.S. 544, 547, 570 (2007). Under the plausibility pleading standard, a plaintiff is not required to provide “detailed factual allegations” in his complaint, but he needs to state the grounds of his claim (entitlement to relief), which should be “more than labels and conclusions.” Id. at 555, 570. At least, the plaintiff's complaint should contain enough facts showing that the plaintiff's claim is “plausible on its face.” Id. Two years after Twombly, in Ashcroft v. Iqbal the U.S. Supreme Court expressly affirmed that the plausibility pleading standard established in Twombly applies to “all civil actions.” Ashcroft v. Iqbal, 556 U.S. 662, 684 (2009). Accordingly, the plausibility pleading standard applies to all DTSA claims brought in federal courts. Evans, supra note 10, at 190; Fues, Giannelli & Self, supra note 10; Fertig & Betts, Considerations—Part I, supra note 10, at 3-5. It is worth mentioning that some commentators are of the opinion that federal pleading stands are often higher than those required under state laws. Boxer, Griem, Jr., Malyshev & Ruffi, supra note 8.
[18] Gold Medal Prods. Co. v. Bell Flavors & Fragrances, Inc., No. 1:16-CV-00365, 2017 WL 1365798, at *5-8 (S.D. Ohio, Apr. 14, 2017). See also Fertig & Betts, Considerations—Part I, supra note 10, at 4; David R. Fertig & Michael A. Betts, The Defend Trade Secrets Act: Jurisdictional Considerations—Part II, 29 No. 8 Intell. Prop. & Tech. L.J. 12, 12 (2017) [hereinafter “Considerations—Part II”].
[19] McFarland, 2017 WL 741569, at *2-3; M.C. Dean, 199 F. Supp. 3d at 1357; Digital Intent, 2016 WL 6395409, at *3. See also Fertig & Betts, Considerations—Part I, supra note 10, at 3-5.
[20] Fues, Giannelli & Self, supra note 10; Fertig & Betts, Considerations—Part I, supra note 10, at 5; Fertig & Betts, Considerations—Part II, supra note 18, at 13-14.
[21] Boxer, Griem, Jr., Malyshev & Ruffi, supra note 8.
[22] Id.
[23] 18 U.S.C. §1839(3).
[24] McFarland, 2017 WL 741569, at *2.
[25] Fues, Giannelli & Self, supra note 10.
[26] Engler, supra note 13, at 21-22. Providing help in identifying the trade secret in question by requesting as much detail as possible is a common point shared by the plausibility pleading standard in the U.S., and the “Case Detail Explanation Form” (to be filled out by the complainant or the victim) attached to Article 6 of the “Guideline for Handling Major Trade Secret Cases in the Prosecuting Authority” in Taiwan. However, they apply to different circumstances:
1. The plausibility pleading standard in the U.S. sets forth the threshold requirements to be met by a plaintiff in his pleading when the plaintiff brings a civil claim in federal court and applies to all federal civil actions. On the other hand, the aforementioned Case Detail Explanation Form in Taiwan is a form to be filled out by the complainant or the complainant's agent. This Form provides a reference to prosecutors for the investigation of major trade secret cases (criminal cases), but it does not serve as the basis for a prosecutor to determine whether to prosecute a case.
2. The plausibility pleading standard is not only followed by those bringing a federal civil action but also adopted by federal courts when hearing civil cases. Contrarily, the aforementioned Case Detail Explanation Form in Taiwan is provided to prosecutors as a reference for investigation. A prosecutor is not bound to prosecute a case simply based on the information provided in this Form. Likewise, this Form and the information provided therein are not binding on any court in Taiwan.
A commentator noted that the Ministry of Justice in Taiwan referred to the “Prosecuting Intellectual Property Crimes (Manual)” of the U.S. Department of Justice when adopting the “Guideline for Handling Major Trade Secret Cases in the Prosecuting Authority” on April 19, 2016. “Article 6 indicates that the complainant or the victim should first fill out the Case Detail Explanation Form, which would help the prosecution authority not only figures out whether the allegedly misappropriated trade secret meets the elements of secrecy, economic value, and secrecy measures under law, but also evaluates whether it is necessary to resort to compulsive measures”. Ti-Chu Chen (陳砥柱), Guideline for Handling Major Trade Secret Cases in the Prosecuting Authority, Louis & Charles Attorneys at Law (遠東萬佳法律事務所) (July 14, 2016), http://www.louisilf.com/zh-tw/posts/2016-07-14 (last visited Dec. 31, 2017). See also Prosecuting Intellectual Property Crimes (Manual) (4th ed. 2013), available at: https://www.justice.gov/sites/default/files/criminal-ccips/legacy/2015/03/26/prosecuting_ip_crimes_manual_2013.pdf. However, the cover of the “Prosecuting Intellectual Property Crimes (Manual)” expressly states that its contents are provided as “internal suggestion to Department of Justice attorneys.” Id. Therefore, the contents of this manual theoretically are not binding on any federal court.
[27] Mission Measurement Corp. v. Blackbaud, Inc, 216 F.Supp.3d 915, 921 (N.D.Ill. 2016).
[28] Digital Intent, 2016 WL 6395409, at *3.
[29] McFarland, 2017 WL 741569, at *2; Blackbaud, 216 F.Supp.3d at 921; Ciro, 242 F.Supp.3d at 798.
[30] Evans, supra note 10, at 191. Some federal court decisions show that requesting the plaintiff to provide sufficient facts describing the trade secret in question is not something newly developed following the enactment of the DTSA. Rather, it has been the position held by federal courts before the DTSA came into effect. AWP, Inc. v. Commonwealth Excavating, Inc., Civil Action No. 5:13cv031., 2013 WL 3830500, at *5 (W.D. Va. July 24, 2013); Events Media Network, Inc. v. Weather Channel Interactive, Inc., Civil No. 1:13–03 (RBK/AMD), 2013 WL 3658823, at *3 (D. N.J. July 12, 2013); Council for Educational Travel, USA v. Czopek, Civil No. 1:11–CV–00672, 2011 WL 3882474, at *4 (M.D. Pa. Sept. 2, 2011); DLC DermaCare LLC v. Castillo, No. CV–10–333–PHX–DGC, 2010 WL 5148073, at *4 (D. Ariz. Dec. 14, 2010).
[31] Blackbaud, 216 F.Supp.3d at 921.
[32] Ciro, 242 F.Supp.3d at 800.
[33] Engler, supra note 13, at 21; Hensley, supra note 8, at 44.
[34] Hensley, supra note 8, at 44; Newman, Mendelson & Song, supra note 2, at 2-3; Rich, supra note 8, at 6; Engler, supra note 13, at 20.
[35] 18 U.S.C. §1836(b)(2)(A).
[36] Newman, Mendelson & Song, supra note 2, at 3.
[37] Under the DTSA, a court may, only in “extraordinary circumstances,” issue an ex parte seizure order when “find[ing] that it clearly appears from specific facts that”: (1) “an order issued pursuant to Rule 65 of the Federal Rules of Civil Procedure or another form of equitable relief would be inadequate to achieve the purpose of this paragraph because the party to which the order would be issued would evade, avoid, or otherwise not comply with such an order;” (2) “an immediate and irreparable injury will occur if such seizure order is not issued;” (3) “the harm to the applicant of denying the application outweighs the harm to the legitimate interests of the person against whom seizure would be ordered of granting the application and substantially outweighs the harm to any third parties who may be harmed by such seizure;” (4) “the applicant is likely to succeed in showing that the information is a trade secret and the person against whom seizure would be ordered misappropriated the trade secret of the applicant by improper means or conspired to use improper means to misappropriate the trade secret of the applicant;” (5) “the person against whom seizure would be ordered has actual possession of the trade secret and any property to be seized;” (6) “the application describes with reasonably particularity the matter to be seized and, to the extent reasonable under the circumstances, identifies the location where the matter is to be seized;” (7) “the person against whom seizure would be ordered, or persons acting in concert with such person would destroy, move, hide, or otherwise make such matter inaccessible to the court, if the applicant were to proceed on notice to such person;” and (8) “the applicant has not publicized the requested seizure”. 18 U.S.C. §1836(b)(2)(A)(ii).
[38] 18 U.S.C. §1836(b)(2)(A)(i).
[39] Engler, supra note 13, at 21; Michael T. Renaud & Nick Armington, DTSA and Ex Parte Seizure – Lessons from the First Ex Parte Seizure Under The DTSA, Mintz Levin Cohn Ferris Glovsky and Popeo PC (Aug. 21, 2017), https://www.globalipmatters.com/2017/08/21/dtsa-and-ex-parte-seizure-lessons-from-the-first-ex-parte-seizure-under-the-dtsa; Matthew Werdegar & Warren Braunig, One Year On: the Federal Defend Trade Secrets Act, Daily J. (Apr. 26, 2017), available at: https://www.keker.com/Templates/media/files/Articles/Keker%20(DJ-4_26_17).pdf.
[40] Newman, Mendelson & Song, supra note 2, at 3; Dharnidharka, Day & McCrimmon, supra note 8; Werdegar & Braunig, supra note 39.
[41] OOO Brunswick Rail Mgmt. v. Sultanov, No. 5:17-cv-00017, 2017 WL 67119, *2 (N.D. Cal., Jan. 6, 2017); Magnesita Refractories Company v. Mishra, CAUSE NO. 2:16-CV-524-PPS-JEM, 2017 WL 365619, at *2 (N.D. Ind. Jan. 25, 2017).
[42] Baleriz Carribean Ltd. Corp. v. Calvo, Case 1:16-cv-23300-KMW, at 7 (S.D.Fla. Aug. 5, 2016). See also Renaud & Armington, supra note 39. A commentator opines that federal courts are reluctant to issue an ex parte seizure order against someone who has never concealed evidence or disregarded court orders before. Engler, supra note 13, at 21.
[43] Digital Assurance Certification, LLC v. Pendolino, Case No: 6:17-cv-72-Orl-31TBS, at *1-2 (M.D.Fla. Jan. 23, 2017).
[44] Engler, supra note 13, at 21; Dharnidharka, Day & McCrimmon, supra note 8.
[45] Mission Capital Advisors, LLC v. Romaka, No. 16-cv-05878-LLS (S.D.N.Y. July 29, 2016). Some commentators consider Romaka the very first case in which a federal court ordered a DTSA ex parte seizure after the DTSA became effective. Renaud & Armington, supra note 39.
[46] Romaka, No. 16-cv-05878-LLS, at 1-3.
[47] Id. at 2.
[48] Id.
[49] Id.
[50] In Romaka, the federal district court found the followings after reviewing the facts of this case along with the requirements under the DTSA: (1) “[a]n order issued pursuant to Rule 65 of the Federal Rules of Civil Procedure or another form of equitable relief would be inadequate because [the defendant] would evade, avoid, or otherwise not comply with such an order;” (2) “[a]n immediate and irreparable injury to [the plaintiff] would occur if such seizure is not ordered;” (3) “[t]he harm to [the plaintiff] of denying the application outweighs the harm to the legitimate interests of [the defendant];” (4) “[the plaintiff] is likely to succeed in showing that the information at issue is a trade secret based on [the plaintiff's] averments;” (5) “[the plaintiff] is likely to succeed in showing that [the defendant] has misappropriated [the plaintiff's trade secret] by improper means;” (6) “[the plaintiff] is likely to succeed in showing that the [defendant] has actual possession of the [plaintiff's trade secrets]; (7) “[d]espit the risk that [the defendant] would make the [plaintiff's trade secret] inaccessible to the court, or retain unauthorized copies, [the plaintiff] is proceeding on notice;” and (8) “[the plaintiff] is likely to succeed in showing, and has represented, that it has not publicized the requested seizure.” Id. at 2-4.
[51] Id. at 4. In Romaka, the plaintiff also applied for the seizure of its proprietary information other than its client and contact lists. However, the Romaka court denied the plaintiff's request for the seizure of other proprietary information because the plaintiff failed to describe “with sufficient particularity” such information and related facts, such as “confidentiality and irreparable harm.” Id.
[52] Renaud & Armington, supra note 39.
[53] Id.
[54] Newman, Mendelson & Song, supra note 2, at 3; Engler, supra note 13, at 21; Renaud & Armington, supra note 39.
[55] Newman, Mendelson & Song, supra note 2, at 3.
[56] For instance, the injunctive remedies available under the DTSA. 18 U.S.C. §1836(b)(3). For further example, a preliminary injunction or a temporary restraining order available under the FRCP. Fed. R. Civ. P. 65(a), (b).
[57] As stated above, the DTSA does not preempt or displace any other remedies provided by other federal laws and state laws for trade secret misappropriation. 18 U.S.C. §1838.
[58] Cook, 191 F.Supp.3d at 1077, 1076-1077, 1079; Daniels, 2016 WL 7034976, at *10-11, 14; Nettles, 2016 WL 4124114, at *4. See also Newman, Mendelson & Song, supra note 2, at 2-3; Rich, supra note 8, at 6; Boxer, Griem, Jr., Malyshev & Ruffi, supra note 8.
[59] DTSA §2(e), Pub. L. No. 114-153, 130 Stat. 376, 381-382.
[60] Werdegar & Braunig, supra note 39; Krotoski, Burkholder, Harrison & Houmand, supra note 2, at 14; Engler, supra note 13, at 21.
[61] Avago Technologies U.S. Inc. v. Nanoprecision Products, Inc., Case No. 16-cv-03737-JCS, 2017 WL 412524, at *9 (N.D.Cal. Jan. 31, 2017); Cave Consulting Group, Inc. v. Truven Health Analytics Inc., Case No. 15-cv-02177-SI, 2017 WL 1436044, at *5 (N.D. Cal. Apr. 24, 2017); Physician's Surrogacy, Inc. v. German, Case No.: 17CV0718-MMA (WVG), 2017 WL 3622329, at *8-9 (S.D. Cal. Aug. 23, 2017). See also Tara C. Clancy, April Boyer & Michael R. Creta, Emerging Trends in Defend Trade Secrets Act Litigation, National Law Review (Sept. 26, 2017), https://www.natlawreview.com/article/emerging-trends-defend-trade-secrets-act-litigation; Milligan & Salinas, supra note 8.
[62] Cook, 191 F.Supp.3d at 1076-1079; Allstate Insurance Company v. Rote, No. 3:16-cv-01432-HZ, 2016 WL 4191015, at *1-5 (D. Or. Aug. 7, 2016); Syntel Sterling Best Shores Mauritius Limited v. Trizetto Group, Inc., 15-CV-211 (LGS) (RLE), 2016 WL 5338550, at *6 (S.D.N.Y. Sept. 23, 2016); Adams Arms, LLC v. Unified Weapon Systems, Inc., Case No. 8:16-cv-1503-T-33AEP, 2016 WL 5391394, at *6 (M.D. Fla. Sept. 27, 2016); Brand Energy & Infrastructure Services, Inc. v. Irex Contracting Group, CIVIL ACTION NO. 16-2499, 2017 WL 1105648, at *3-8 (E.D. Pa. Mar. 24, 2017); Sleekez, LLC v. Horton, CV 16–09–BLG–SPW–TJC, 2017 WL 1906957, at *5-6 (D. Mont. Apr. 21, 2017). See also Rich, supra note 8, at 8.
[63] Unified Weapon Systems, 2016 WL 5391394, at *6; Horton, 2017 WL 1906957, at *5-6. See also Milligan & Salinas, supra note 8; Werdegar & Braunig, supra note 39. A recent federal court decision reveals that federal courts will likely dismiss a DTSA claim if a plaintiff makes no specific allegations other than a “conclusory allegation” of the continuing trade secret misappropriation. Hydrogen Master Rights, Ltd. v. Weston, 228 F.Supp.3d 320, 338 (D.Del. 2017). See also Engler, supra note 13, at 23.
[64] Unified Weapon Systems, 2016 WL 5391394, at *6. See also Rich, supra note 8, at 8.
[65] Engler, supra note 13, at 23.
[66] Milligan & Salinas, supra note 8.
[67] Engler, supra note 13, at 23.
[68] 18 U.S.C. § 1838.
[69] Conley, supra note 4.
[70] Synergy Worldwide, 208 F.Supp.3d at 1201; Cori, 2016 WL 6611133, at *2-5; Nettles, 2016 WL 4124114, at *4 fn.2; Cook, 191 F.Supp.3d at 1077, 1079-1080; Daniels, 2016 WL 7034976, at *8-10; M.C. Dean, 199 F. Supp. 3d at 1353-1357; Ghost Controls, 2016 WL 4059706, at *1 fn.1, *2-4; MiTek USA, 2016 WL 4418013, at *9-10; Ciro, 242 F.Supp.3d at 797-800.
[71] Evans, supra note 10, at 190; Fues, Giannelli & Self, supra note 10; Fertig & Betts, Considerations—Part I, supra note 10, at 3-5.
[72] Blackbaud, 216 F.Supp.3d at 921.
[73] Digital Intent, 2016 WL 6395409, at *3. See also Evans, supra note 10, at 191.
[74] Engler, supra note 13, at 21; Dharnidharka, Day & McCrimmon, supra note 8.
[75] Sultanov, 2017 WL 67119, at *2; Mishra, 2017 WL 365619, at *2; Calvo, Case 1:16-cv-23300-KMW, at 7; Pendolino, 2017 WL 320830, at *1-2. See also Newman, Mendelson & Song, supra note 2, at 3; Engler, supra note 13, at 21; Renaud & Armington, supra note 39; Werdegar & Braunig, supra note 39.
[76] Newman, Mendelson & Song, supra note 2, at 2-3; Rich, supra note 8, at 6; Boxer, Griem, Jr., Malyshev & Ruffi, supra note 8.
[77] Cook, 191 F.Supp.3d at 1076-1079; Rote, 2016 WL 4191015, at *1-5; Trizetto Group, 2016 WL 5338550, at *6; Unified Weapon Systems, 2016 WL 5391394, at *6; Irex Contracting Group, 2017 WL 1105648, at *3-8; Horton, 2017 WL 1906957, at *5-6. See also Rich, supra note 8, at 8.
[78] Milligan & Salinas, supra note 8.
[79] Engler, supra note 13, at 23.
- New Federal Trade Secret Act and Its Impact on Life Sciences, Genomics L. Rep. (Aug. 12, 2016),
- Emerging Issues In the Defend Trade Secrets Act
- Carter Ledyard & Milburn LLP (Jan. 19, 2017)
- The Defend Trade Secrets Act One Year In – Four Things We
- Preparing a Complaint Under the Defend Trade Secrets Act, Inside Counsel (June 14, 2017)
- Guideline for Handling Major Trade Secret Cases in the Prosecuting Authority, Louis & Charles Attorneys at Law (遠東萬佳法律事務所) (July 14, 2016)
- DTSA and Ex Parte Seizure – Lessons from the First Ex Parte Seizure Under The DTSA, Mintz Levin Cohn Ferris Glovsky and Popeo PC (Aug. 21, 2017)
- Emerging Trends in Defend Trade Secrets Act Litigation, National Law Review (Sept. 26, 2017)
- See also Prosecuting Intellectual Property Crimes (Manual) (4th ed. 2013)
- One Year On: the Federal Defend Trade Secrets Act, Daily J. (Apr. 26, 2017)
Chen, Yen Chia
Legal Researcher
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[1] and the Continental case[2] 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[3]. III. The ‘‘refusal to license’’ and the derived Anti-Trust Issue As generally admitted, a firm has no general duty to deal with others[4]; 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[5]: 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[6]; 2.dominant firm tries to abandon or alter an existing relationship[7]; 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[8], 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. [1]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. [2]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. [3]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). [4]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) [5]ANDREW I. GAVIL, WILLIAM E. KOVACIC & JONATHAN B. BAKER, ANTITRUST LAW IN PERSPECTIVE: CASES, CONCEPTS AND PROBLEMS IN COMPETITION POLICY 630-654 (2002). [6]See Lorain Journal Co. v. United States, 342 U.S. 143 (1951) [7]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) [8]MCI Communications Corp. v. American Tel. & Tel. Co., 708 F.3d 1081 (7th Cir. 1983)
The Dispute on WTO TRIPS IP Waiver Proposal and the Impact on TaiwanThe Dispute on WTO TRIPS IP Waiver Proposal and the Impact on Taiwan 1. IP Waiver proposal On October 2, 2020, South Africa and India summit a joint proposal (IP/C/W/669) (hereinafter as “first proposal”) for TRIPS council of the World Trade Organization(WTO), titled “Waiver from Certain Provisions of the Trips Agreement for the Prevention, Containment and Treatment of Covid-19”, called for temporary IP waiver of intellectual property in response for Covid-19 pandemic. In first proposal, it supported a waiver from the implementation or application of Sections 1, 4, 5, and 7 of Part II of the TRIPS Agreement in relation to prevention, containment or treatment of COVID-19, which directs to copyright and related rights, industrial designs, patents and protection of undisclosed information. All enforcement measures under part III of the TRIPS agreement such as civil and administrative procedures and remedies, border measures and criminal procedures for protecting aforesaid intellectual property shall also be waived until widespread vaccination is in place globally, and the majority of the world's population has developed immunity[1]. On May 25, 2021, the first proposal was revised (IP/C/W/669/Rev.1, hereinafter as “second proposal”) and resubmitted for WTO by the African Group, The Plurinational State Of Bolivia, Egypt, Eswatini, Fiji, India, Indonesia, Kenya, The Ldc Group, Maldives, Mozambique, Mongolia, Namibia, Pakistan, South Africa, Vanuatu, The Bolivarian Republic Of Venezuela and Zimbabwe[2]. In the second proposal, the scope of IP waiver was revised to be limited to "health products and technologies" used for the prevention, treatment or containment of COVID-19, and the minimum period for IP waiver was 3 years from the date of decision. 2. The Pros and Cons of IP Waiver proposal The IP waiver proposal is currently supported by over 100 WTO members. However, in order to grant the waiver, the unanimous agreement of the WTO's 159 members would be needed[3], but if no consensus is reached, the waiver might be adopted by the support of three-fourths of the WTO members[4]. The reason for IP waiver mainly focus on the increase of production and accessibility of the vaccines and treatments, since allowing multiple actors to start production sooner would enlarge the manufacturing capacity than concentrate the manufacturing facilities in the hands of a small number of patent holders[5]. Médecins Sans Frontières (MSF) also support IP waiver proposal to prevent the chilling effect of patents as hindrances of the introduction of affordable vaccines and treatment in developing countries[6], and urges wealthy countries not to block IP waiver to save lives of billions of people[7]. Most opponents against IP waiver proposal are rich countries such as European Union (EU), UK, Japan, Switzerland, Brazil, Norway, Canada, Australia[8]. On May 5, 2021, United States Trade Representative (USTR) announced its support the IP waiver, but only limited into vaccine[9]. EU was the main opponent against IP waiver proposal at the WTO[10]. On June 4, 2021, EU offered an alternative plan to replace IP waiver proposal. Specifically, EU proposed that WTO members should take multilateral trade actions to expand the production of COVID-19 vaccines and treatments, and ensure universal and fair access thereof. EU calls for WTO members to ensure that COVID-19 vaccines, treatments and their components can cross borders freely, and encourage producers to expand their production and provide vaccines with an affordable price. As to IP issues, EU encourages to facilitate the exploitation of existing compulsory licensing systems on TRIPS, especially for vaccine producers without the consent of the patent holder[11]. Many pharmaceutical companies also express dissent opinions against the IP waiver proposal. The International Federation of Pharmaceutical Manufacturers and Associations (IFPMA) indicated that the proposal would let unexperienced manufacturers, which are devoid of essential know-how, join into vaccine supply chains and crowd out the established contractors[12]. The chief patent attorney for Johnson & Johnson pointed out that since the existing of IP rights not only promote the development of safe and effective vaccines at record-breaking speed, but also allow the IP owner to enter into agreements with appropriate partners to ensure the production and distribution of qualitied vaccines, the problem resides in infrastructure rather than IP. Thus, instead of IP waiver, boosting adequate health care infrastructure, vaccine education and medical personnel might be more essential for COVID-19 vaccines equitably and rapidly distributed[13]. Pfizer CEO warned that since the production of Pfizer’s vaccine would require 280 different materials and components that are sourced from 19 countries around the world, the loss of patent protection may trigger global competition for these vaccine raw materials, and thus threaten vaccine production efficiency and affect vaccine safety[14]. Moderna CEO said that he would not worry about the IP waiver proposal since Moderna had invested heavily in its mRNA supply chain, which did not exist before the pandemic, manufacturers who want to produce similar mRNA vaccines will need to conduct clinical trials, apply for authorization, and expand the scale of production, which may take up to 12 to 18 months[15]. 3. Conclusion The grant of the IP waiver proposal might need the consensus of all WTO members. However, since the proposal might not be supported by several wealth countries, which might reflect the interest of big pharmaceutical companies, reach the unanimously agreement between all WTO members might be difficult. Besides, the main purpose for IP waiver is to increase the production of vaccines and treatments. However, when patent protection was lifted, a large number of new pharmaceutical companies lacking necessary knowhow and experience would join the production, which might not only result in snapping up the already tight raw materials, but also producing uneven quality of vaccines and drugs. Since patent right is only one of the many conditions required for the production of vaccines and drugs, IP waiver might not help increase the production immediately. Thus, other possible plans, such as the alternative plan proposed by EU, might also be considered to reduce disputes and achieving the goal of increasing production. As to the impact of the IP waiver proposal for Taiwan, it can be analyzed from two aspects: 1. Whether Taiwan need IP waiver to produce COVID-19 vaccine and drugs in need Since there is an established patent compulsory licensing system in Taiwan, the manufacture and use of COVID-19 vaccine and drugs might be legally permissible. To be specific, Article 87 of Taiwan Patent Act stipulates: “In response to national emergency or other circumstances of extreme urgency, the Specific Patent Agency shall, in accordance with an emergency order or upon notice from the central government authorities in charge of the business, grant compulsory licensing of a patent needed, and notify the patentee as soon as reasonably practicable.” Thus, in response to national emergency such as COVID-19 pandemic, Taiwan Intellectual Property Office (TIPO) could grant compulsory licensing of patents needed for prevention, containment or treatment of COVID-19, in accordance with emergency order or upon notice from the central government authorities. In fact, in 2005, in response to the avian flu outbreaks, TIPO had grant a compulsory licensing for Taiwan patent No.129988, the Tamiflu patent owned by Roche. 2. Whether IP Waiver would affect Taiwan’s pharmaceutical or medical device industry In fact, there are many COVID-19 related IP open resources for innovators to exploit, such as Open COVID Pledge[16], which provides free of charge IPs for use. Even for vaccines, Modena had promised not to enforce their COVID-19 related patents against those making vaccines during COVID-19 pandemic[17]. Therefore, currently innovators in Taiwan could still obtain COVID-19 related IPs freely without overall IP Waiver. Needless to say, since many companies in Taiwan still work for the research and development of COVID-19-related medical device and drugs, sufficient IP protection could guarantee their profit and stimulate future innovation. Accordingly, since Taiwan could produce COVID-19 vaccines and drugs in need domestically by existing patent compulsory licensing system, and could obtain other COVID-19 related IPs via global open IP resources, in the meantime IP protection would secure Taiwan innovator’s profit, IP waiver proposal might not result in huge impact on Taiwan. [1]Waiver From Certain Provisions Of The Trips Agreement For The Prevention, Containment And Treatment Of Covid-19, WTO, Oct 2, 2020, https://docs.wto.org/dol2fe/Pages/SS/directdoc.aspx?filename=q:/IP/C/W669.pdf&Open=True (last visited July 5, 2021) [2]Waiver From Certain Provisions Of The Trips Agreement For The Prevention, Containment And Treatment Of Covid-19 Revised Decision Text, WTO, May 25, 2021, https://docs.wto.org/dol2fe/Pages/SS/directdoc.aspx?filename=q:/IP/C/W669R1.pdf&Open=True (last visited July 5, 2021) [3]COVID-19 IP Waiver Supporters Splinter On What To Cover, Law360, June 30, 2021, https://www.law360.com/articles/1399245/covid-19-ip-waiver-supporters-splinter-on-what-to-cover- (last visited July 5, 2021) [4]The Legal Framework for Waiving World Trade Organization (WTO) Obligations, Congressional Research Service, May 17, 2021, https://crsreports.congress.gov/product/pdf/LSB/LSB10599 (last visited July 5, 2021) [5]South Africa and India push for COVID-19 patents ban, The Lancet, December 5, 2020, https://www.thelancet.com/journals/lancet/article/PIIS0140-6736(20)32581-2/fulltext (last visited July 5, 2021) [6]MSF supports India and South Africa ask to waive COVID-19 patent rights, MSF, Oct 7, 2020, https://www.msf.org/msf-supports-india-and-south-africa-ask-waive-coronavirus-drug-patent-rights (last visited July 5, 2021) [7]MSF urges wealthy countries not to block COVID-19 patent waiver, MSF, Feb. 3, https://www.msf.org/msf-urges-wealthy-countries-not-block-covid-19-patent-waiver (last visited July 5, 2021) [8]Rich countries are refusing to waive the rights on Covid vaccines as global cases hit record levels, CNBC, Apr. 22, 2021,https://www.cnbc.com/2021/04/22/covid-rich-countries-are-refusing-to-waive-ip-rights-on-vaccines.html (last visited July 5, 2021) [9]Statement from Ambassador Katherine Tai on the Covid-19 Trips Waiver, May 5, 2021, https://ustr.gov/about-us/policy-offices/press-office/press-releases/2021/may/statement-ambassador-katherine-tai-covid-19-trips-waiver (last visited July 5, 2021) [10]TRIPS waiver: EU Council and European Commission must support equitable access to COVID-19 vaccines for all, Education International, June 9, 2021, https://www.ei-ie.org/en/item/24916:trips-waiver-eu-council-and-european-commission-must-support-equitable-access-to-covid-19-vaccines-for-all (last visited July 5, 2021) [11]EU proposes a strong multilateral trade response to the COVID-19 pandemic, European Commission, June 21, 2021, https://trade.ec.europa.eu/doclib/press/index.cfm?id=2272 (last visited July 5, 2021) [12]Drugmakers say Biden misguided over vaccine patent waiver, Reuters, May 6, 2021, https://www.reuters.com/business/healthcare-pharmaceuticals/pharmaceutical-association-says-biden-move-covid-19-vaccine-patent-wrong-answer-2021-05-05/ (last visited July 5, 2021) [13]J&J's Chief Patent Atty Says COVID IP Waiver Won't Work, Law360, Apr. 22, 2021, https://www.law360.com/ip/articles/1375715?utm_source=rss&utm_medium=rss&utm_campaign=section (last visited July 5, 2021) [14]Pfizer CEO opposes U.S. call to waive Covid vaccine patents, cites manufacturing and safety issues, CNBC, May 7, 2021, https://www.cnbc.com/2021/05/07/pfizer-ceo-biden-backed-covid-vaccine-patent-waiver-will-cause-problems.html (last visited July 5, 2021) [15]Moderna CEO says he's not losing any sleep over Biden's support for COVID-19 vaccine waiver, Fierce Pharma, May 6, 2021, https://www.fiercepharma.com/pharma/moderna-ceo-says-he-s-not-losing-any-sleep-over-biden-s-endorsement-for-covid-19-ip-waiver (last visited July 5, 2021) [16]Open Covid Pledge. https://opencovidpledge.org/ (last visited July 7, 2021) [17]Statement by Moderna on Intellectual Property Matters during the COVID-19 Pandemic, Moderna, Oct. 8, 2020, https://investors.modernatx.com/news-releases/news-release-details/statement-moderna-intellectual-property-matters-during-covid-19 (last visited July 7, 2021)
The Taiwan Intellectual Property Awareness and Management SurveyThe “National Intellectual Property Strategy Program” was announced by the Taiwan government in November 2011 in an effort to promote and raise the intellectual property capability of Taiwanese firms. As policy adviser to the Ministry of Economic Affairs in drafting the “National Intellectual Property Strategy Program,” the Science and Technology Institute under the Institute for Information Industry (STLI) conducted a survey in 2012 in order to gain a broad overview of the level of IP awareness and IP management and use among Taiwanese firms. The survey was distributed to 1,384 firms that are listed either on the Taiwan Stock Exchange or the Gre Tai Securities Markets. 281 companies responded to the survey, achieving a survey response rate of almost 20%. The content of the survey was divided into three parts: IP knowledge and understanding, current IP management within the companies and IP issues that companies face. The Importance of IP to Businesses Intellectual property has become a commonplace asset owned by firms. The growing significance of intellectual property to companies in general is undeniable, and firms are recognizing this as well. An overwhelming 93% of the respondents claim to own some form of intellectual property. The most common type of intellectual property owned by companies is trademarks, followed by patents and trade secret. Many companies are also actively seeking to obtain more intellectual property. Over 68% of the respondents indicated that they have submitted applications for formal intellectual property rights in the past two years. 84% of the respondents agreed with the statement that they believe intellectual property can bring added value for the firm. In addition, over 78% of the respondents also believe that intellectual property helps enhancing the company’s market position. It is clear that the majority of Taiwan firms already consider intellectual property to be a vital asset for their business and that building up and expanding their IP portfolio has become a top priority. This is also reflected in the annual spending that firms allocate for intellectual property. The survey respondents were asked whether a specific budget is allocated toward spending related to intellectual property every year, and the majority of the respondents, almost 70%, responded in the positive. Particularly, the respondents pointed out that they commit the most resources to obtaining and maintaining intellectual property rights every year. 10% of the respondents even indicated that they spent over NT$5 million annually on obtaining and maintaining intellectual property rights. The respondents were also asked about spending on inventor incentive, IP personnel, IP disputes and litigations and staff IP training. The results showed that companies commit the least spending on providing IP training for staff, with more than half of the respondents noting that they spend less than NT$500,000 on IP training each year and only 14% of the respondents noted that they will increase spending on IP training the following year. Weakness in Generating Value from IP As noted above, Taiwan firms are actively seeking to obtain more intellectual property and building up their IP assets. With almost 70% of the respondents noting that they have applied for intellectual property rights in the last two years shows that companies are generating quite a lot intellectual property, but whether all the intellectual property generated is being exploited and creating commercial and economic benefits remains doubtful. Most of the firms, almost 86% of the respondents, acquired their intellectual property through their own research and development (R&D). In contrast, the proportion of firms using other means of acquiring intellectual property is quite low, with only 17% of the respondents acquiring intellectual property through acquisition and 28% through licensing, while 41% percent of the respondents acquired their intellectual property by joint research or contracted research with others. With R&D being the major source of intellectual property for firms, firms are clearly putting in a lot of investment into acquiring intellectual property. However, the returns on these investments may not be proportionate. When asked whether the firm license out their intellectual property, only 13.5% of the respondents claimed to be doing so. This suggests that most Taiwanese firms are not using their intellectual property to generate revenue and commercial value. Instead, intellectual property is still mostly regarded and used as merely a defensive tool against infringement. Companies in Taiwan are also facing increasing risks of being involved in IP-related disputes and litigations. More than 30% of the respondents have already been involved in some kind of IP-related disputes and litigations in the past. The most common type of litigations faced by Taiwanese companies are patent infringement, followed by trademarks infringement, piracy and counterfeit, and disputes with (former) employees. Furthermore, more than 50% of the firms that have been involved in IP litigations noted that patent infringement and trademarks infringement pose the most detriment to the company’s business operations in general. It is evident that intellectual property has become a competitive weapon in businesses, and IP disputes and litigations are inevitable threats that most firms must face in today’s business world. Hence, it is essential for firms to have the necessary strategies and protection in place in order to minimize the risks created by potential legal disputes. With this in mind, it is worrisome to observe that most firms have not incorporated intellectual property into the company risk management program. Nearly 86.1% of the respondents claim to have some kind of risk management program in place within the company, but when asked what is included in the risk management program. Only 40.7% of the firms with risk management programs said that intellectual property is included, which is considerably lower than other types of risks generally seen in risk management programs. With IP disputes and litigations becoming an increasing threat that may bring negative impact for businesses, Taiwanese firms need to incorporate and strengthen IP risk management within the company. IP still not widely considered as business strategy With intellectual property being an important asset, firms should also have the necessary infrastructure and resources to manage IP accordingly and integrate IP into the company’s overall business operations. However, more than 50% of the respondents do not have designated personnel or department that is specifically responsible for managing the company’s intellectual property. Nearly 33% of the respondents indicated that the responsibility for managing IP is shared by other departments within the firm. When further asked about the tasks of the designated personnel or department that is responsible for IP, it is observed that the designated personnel/department mostly undertake routine tasks such as filing for patent applications and trademark registrations and maintaining relevant databases. Tasks such as patent mapping and competitive landscape analysis are the least performed tasks. The proportion of designated personnel/department for IP that are involved in the company’s business and research strategic decision making process is also quite low. This suggests that despite the importance of IP to firms, many Taiwanese firms still have not integrated IP into their overall research and business strategies and utilize their intellectual property as a strategic tool in their business operations. Low Levels of IP Awareness and Training within Firms In order to gauge the level of IP knowledge and understanding in Taiwanese firms, the survey also contained 10 very basic questions on intellectual property. Surprisingly, the respondents that answered all the questions correctly were less than 4%. The proportion of respondents that correctly answered 5 or less questions did not even reach 50%. This means that Taiwanese firms still lack fundamental IP knowledge and understanding in general. This is also reflected in the response to the question whether the company has an overall IP policy in place, which also serves as an indication of the level awareness and concern with intellectual property within the firm. An IP policy that is distributed to company staff means that IP awareness is promoted within the company. However, almost 40% of the respondents claimed that there is no overall IP policy within the company, and nearly 30% of the respondents noted that even if there is an IP policy, it is not made widely known to company staff. This reveals that many Taiwanese companies still need to undertake more IP awareness promotion within the firm. More IP awareness promotion is also justified by the results to the question as to whether the company provides IP training for company staff. The results showed that almost 44% of the respondents do not provide any form of training in IP to company staff at all. This also corresponds to the result noted earlier that most respondents commit the least funding to providing IP training each year. Providing regular IP training to staff is certainly still not the norm for most Taiwanese firms. Issues facing businesses and their policy needs Taiwanese firms still faces many difficulties and challenges in their intellectual property management and hope that the government could provide them with the assistance and resources needed to help them enhance their intellectual property capacity and capability. Some of the major difficulties that the respondents pointed out in the survey include the lack of IP experts and professionals. It is difficult for firms to find and hire people with adequate professional IP skills, as the education and training currently provided by universities and professional schools do not seem to meet the actual IP needs of companies. Another major difficulty faced by Taiwanese firms is the lack of information and knowledge regarding international technical standards and standard setting organizations. A significant portion of the respondents expressed the wish for the government to help them gain entry and participation in international standard setting organizations. Among the other difficulties, the regulatory complexity and lack of clarity with the ownership of intellectual property arising from government-contracted research, which poses as barrier for firms in obtaining licenses for use and exploitation, is also an issue that the majority of the respondents hope the government could improve. In addition to the difficulties mentioned above that Taiwanese firms hope the government would help them encounter, the respondents were also asked specifically what other resources and assistance they would like to seek from the government. 69.4% of the respondents hope that the government could provide more training courses and seminars on IP. Many respondents are also seeking a common platform that can unify all resources that could help enhance IP management. Expert assistance and consultation on obtaining intellectual property rights and providing information on international IP protection and litigation are also resources that Taiwanese firms desire. More than 50% of the respondents also indicated that they would like to receive assistance in establishing IP management system within their firms. Conclusion The results of the survey provided insight into the level of IP management among companies in Taiwan. Although the importance of intellectual property for businesses is undeniable and widely recognized by firms, the results of the survey revealed that there is still much room for improvement and for Taiwanese firms to put in more efforts into strengthening and enhancing their IP capabilities. In general, Taiwanese firms have not incorporated their intellectual property into their management strategies and derived adequate value. Intellectual property remains mostly a defensive tool against infringement. Furthermore, there is still need for greater promotion of IP awareness among firms and within firms. With these IP management difficulties and deficiencies in mind, it should be noted that the respondents of this survey are all listed companies that are already of a certain size and scale and should have greater resources in their disposal to commit to their IP management. It would be reasonable to assume that small and medium firms, with significantly less resources, would face even more difficulties and challenges. Using this survey results as reference, the “National Intellectual Property Strategy Survey” would seek to help Taiwanese companies address these IP issues and provide adequate assistance and resources in overcoming the challenges Taiwanese companies face with their IP management. It is also hoped that this survey would be carried out regularly in the future, and that the survey results from 2012 would serve as a baseline for future surveys that will assist in observing the progress Taiwanese businesses are making in IP management and provide a whole picture of the level of IP awareness and management within Taiwanese firms.
Intellectual Property Management Standards of Taiwan: Development and the Status QuoOct/30/2006 I. Intellectual Property Management among Taiwanese Firms: Status Quo and Problems 1. Current status of management of intellectual properties among Taiwan-based enterprises Way from Taiwan's participation into World Trade Organization (WTO) effective January 1st, 2002, huge impacts have been brought upon our domestic enterprises, since, apart from competition coming from giant international manufacturers, they have to meet challenges coming from elsewhere in the world. Besides, the arrival of a time when knowledge became an integral part of the economy in which we find ourselves, profits realizable to an enterprise depends largely on the control of market and on R&D of key technology, such that intellectual property alone is a sure key to the earning of profits and growth of modern enterprises to which admirable economical worth may be created commensurably. Intellectual properties owned by the enterprise should make it such that corporate know-how is thereby transformed into marketable commodities to stand in a viable position among competitors. An overall observation of the management system in our domestic enterprises or organizations indicated that management of intellectual properties is scattered among Education or Training units, R&D units, Legal Service Units, rather than detitle with collectively or through flow control. Management of intellectual property as such by and large would fail to produce immediate or admirable benefits to the enterprise, serving at most to avoid occasioning of losses, in fact and indeed it is but through strategic exploitation of an intellectual property management system would it be possible to pursue a share of the market or to realize licensed proceeds. 2. Problems facing domestic enterprises with respect to management of intellectual properties Renowned firms based in Taiwan and active in the prosecution of management of intellectual properties do so primarily because their executive realized how grave a loss could be incurred to corporate assets and corporate operation due to infringement charges, Taking the infringement charge by an alien firm against a certain domestic firm early January, 2006, for example, to reach a compromise a payment amounting to approx, US$85,000,000 was necessary, and that claiming a share of 10% of the Company's annual revenue, that lesson has taught the Company to pour mass resources in the establishment and execution of intellectual management system. In the Knowledge-based Economy of today, no top management of any enterprise or organization would deny the importance of the management of intellectual properties, understanding alone, however, would not suffice to push the Company getting to work forthwith, because the buildup of an intellectual property management system will of necessity incur a lot of costs, seeing the want of possibility to obtain any investment return all at once, most enterprises or organizations would have their intellectual property management systems designed essential to prevent infringement upon other part's intellectual properties. Notwithstanding that our local manufacturers have gradually come to their senses as regards the importance of intellectual properties, larger scale ones, confronted with cutthroat pricing competition in the global market, is largely harassed with litigation on infringement of intellectual properties; whereas the medium and small businesses, owing to inadequate manpower and funding resources, were largely unable to go for in-depth development of intellectual properties, still, a key to consistent development of our local industries lies in a sound planning of the intellectual property management system, amid the current of the Knowledge-based Economy featuring the 2lst century, the creation and protection of intellectual property rights is a critical index to the upholding of our national competition. So top issues on the agenda for competent authorities in charge of industrial sectors include; assisting local businesses or organizations to implement systematic management of intellectual properties, to retain, accumulate intellectual properties produced by its employees and convert same into intellectual assets, to thereby upgrade their competitive margin, this chain of efforts must be formed in a grand cycle encompassing all the staff, to stand firm and last. II. Formation and orientation of Taiwan's standards on management of intellectual properties 1. The origin of Taiwan's regulation of the standards on management of intellectual properties Impacts brought to local industries in the wake of Taiwan's participation in WTO have taught both the Administration and the Industry to realize, in the long run, that protection of intellectual strength and exploitation of intangible assets can redound much to build up competitive margin, Now that our nationwide economic and trade activities have entered global, international scale, the number one issue is to emphasize protection of intellectual properties if only it accounts to move further into transnational frontier and let our national competition be felt there, what's more, protection of intellectual properties is an obligation laden upon all the member states of WTO, and that consistent with our national interests Yet protection of intellectual properties is a comprehensive, integrally interrelated task demanding nationwide consensus, calling for unreserved cooperation across governmental, civil, administrative and legislative channels, if only any effect to be expected accounts, yes indeed it is but through an environment propitious to the safeguarding of intellectual properties can R&D tank go deeply rooted in this country, therein lies rightly a sure key to permanent survival of our nation at large. The buildup of a convenient, effective and low-cost intellectual property management system in lieu of discrete controls seen traditionally in our local enterprises or organizations, will help the enterprises to effectively control and safeguard their intellectual properties, and that sub serving to protect their proper interests, reduce risks of theft, and restraint from encroaching upon the intellectual properties of third parties, besides, roytitleies through licensing arrangement will redound to corporate revenue, that paralleled with boosted marketing competition, intellectual properties protected and exploited as such will mark a resounding foundation for lasting development in our times where know-how alone is the king. The foreground being recited above, in 2003 and 2004 the Intellectual Property Office, a department of the Ministry of Economic Affairs (IPO for short), appointed Science and Technology Law Center, a unit under Institute for Information Industry (STLC for short), to establish an intellectual property management system suitable for local enterprises (Then known as “Intellectual Property Management System Standard”, in the hope that by the implementation of standardized intellectual property management procedure and promotion of same, local enterprises may remain less likely to getting involved in infringement charges, among other benefits foreseeable with exploitation of properly owned intellectual property rights. 2. Orientation of Taiwan's intellectual rights standards On December 9, 2004, the Ministry of Economic Affairs held a Conference on “Deliberation on the instituting and promotion of standards for the management of intellectual properties of Taiwan”, whereat a resolution was reached to work for Taiwan Intellectual Property Management System basing on the Intellectual Property Management System Standard proposed by STLC under trust for Intellectual Property Office, eventually it is hoped that through national standard certifying processing said Intellectual Property Management System Standard be instituted as our National Standard, to build up a nationally acknowledged credibility. Enterprises would then be encouraged to introduce for themselves a certifying mark once entitled through certification, and efforts will follow to see that the Intellectual Property Protection System be instilled in day-to-day realities, the whole system would by then be promoted internationally so that the image of our nation as an active protector of intellectual properties will one day be known to the world at large. However, as it will take years to have a national standard institutionalized, moreover, the enterprises at large are not sufficiently informed with the notion of the management of intellectual properties, the first step might well be to build up an Intellectual Property Management System Rating Scheme, to be followed with specification of supplemental procedures, and the same on completion, be recommended to the industry circle, and progression to applying for national standard would begin only if extensive consensus is obtained in the first place, paralleled with correlation with international realities, After the task was transferred to the Industrial Development Bureau of the Ministry of Economic Affairs (IDB for short), in 2005, it was reoriented to the positioning of industrial specification, that anyway helps local enterprises or organizations to build up a wholesome intellectual property management system. To adapt to industrial convention respecting specifications, the Intellectual Property Management System deliberate herein is named “Taiwan Intellectual Property Management System” (TIPS for short). The TIPS which is in the charge of the IDB is indicated for autonomous introduction by individual enterprises or organizations, in the hope that a systematic model for the management of intellectual properties would help correlate existent hardware facilities with ad hoc Intellectual Property Management so that a convenient, effective and low-cost management system be easier founded for the enterprise or organization concerned, in place of traditional trivial, random management practices 3. Process of formation of Taiwan intellectual property management standards While the establishment of Intellectual Property Management Standard was still in progress for the STLC, there was already lots of matured management standard system among international communities for consultation, including, for example, the ISO Quality Management System. So eventually in 2003, 2004, the Intellectual Bureau encrusted the STLC to analyze the ISO9001:2000 Quality Management System in terms of its spirits and structures, and to look into the possibilities for combination with Intellectual Property Management as well, so that, in the affirmative case, what needs be done is to work out an Intellectual Property Management Standard to which all kinds of business and industry may fit, and that will help to achieve procedural flow, efficiency and standardization all at the same time. The ISO9001:2000 Quality Management System is a standard established by ISO (International Organization for Standardization), and which is currently a Quality Management System running around the world. In the year 2000 ISO combined through amendments of ISO9001, ISO9002 and ISO9003 published titleogether in 1994, to form ISO 9001:2000. ISO 9001:2000 since replaces all the previous standards and stands as the only and sole standard for certification, featuring emphasis on the consolidated functioning of Quality Management Systems and the target for comprehensive Quality Management. The ISO 9001:2000 based the entire system structure on PDCA Management Cycle (Plan-Do-Check-Action), way up from the Management Level, setting corporate quality policies and targets as dictated by customer needs, whereby planning of corporate resources is decisive in production and service outputs, what with measuring and monitor mechanism to persistently improve functioning of the entire quality system. With respect to various operational procedures in an enterprise or organization, a four-step PDCA comprising: (1) Plan, whereby quality policy is formulated; (2) Do; (3) Check, as to the outcome of what has been done; and (4) Action, corrective and preventive by nature; will intervene to help resolve problems as they arise and hence, achieve the targets. Abiding by aforementioned PDCA model, the STLC will firstly incorporate the Intellectual Property Management Standard into ISO 9001:2000 Quality Control System, thence consult the ISO system structure to split into 0 to 8 units: General Description, Scope of Application, Reference Standards, Definitions, Intellectual Property Management System, Management Commitment, Resource Management, Procurement, of Intellectual Proprieties, efforts as such should help the enterprises to promptly set up hard environments necessary to the management of corporate intellectual properties, and make the STLC easier in lending a hand to facilitate substantive functioning of corporate intellectual property management systems. Intellectual Property Management Standards incorporated to ISO system will prove more structurally effective, and help the enterprise to rapidly lay a foundation for the management of their intellectual properties, so that hopefully they may more effectively manage, make use of their intellectual properties, whereby to fortify their competitive margin, so that in the long run the overall international competitive margin of our industries is upgraded. A common goal for the design and setup of intellectual property, management standards lies in searching for the maximum possible assent from the industrial society so that an auditing or certification platform be created to benefit the intellectual property management system that is working for any enterprise or organization in this country, in order for such systems one by one will necessarily conform to prescribed standards, minimum requirements from given organizations or stipulated in statutes inclusive, not to mention the ultimate goal of better protection and exploitation of intellectual properties, in a lawful and satisfying manner. However, as yet no consensus has been reached as regards the establishment of a national standard respecting management of intellectual properties, yet there is still a need for management of intellectual property rights among local enterprises or organizations, to offer the utmost assistance possible to them all, the Ministry of Economic Affairs has taken the initiative to revise what was once Intellectual Property Management Standard into Intellectual Property Management Specifications, and such is positioned as an industrial specification. By instructive posture, subjects considered suitable to accept said Intellectual Property Management Specifications include all kinds of organizations irrespective of their category, scale, products or services offered. Even units or ad hoc groups in a given organization may qualify for inclusion, including, for example, a company in its entirety, or a specific division of that company, a laboratory or production program. 4. Anticipated Benefits That the IDB is sparing no effort in the preparation of Intellectual Property Management Specifications is underlined with multiple objects, to offer a unified structure for the management of measurable intellectual properties, to help enterprises simplify their procedures of management of intellectual properties, to enlighten the object enterprises or organizations with the understanding and what to expect from an Intellectual Property Management System. If only management of intellectual properties is incorporated into routine operation of an enterprise whatsoever, and that concept spread afar internationally, that would certainly help to build our national image as a country that is brave enough to initiate protection of intellectual properties. In the mean while, with ever increasing demand for the setup of intellectual property management systems, a reality as such in the foreground, a good chance is struck to enlarge the service market or intellectual property management services emanation from Taiwan, and that sub serving to the development of know-how service industry, a surplus for the service industry by any rate. An enterprise or organization by the establishment of intellectual property management system may expect the following benefits; Increased competitive strength and creation of additional value. Once an Intellectual Property Management System is there, the facilitation to maximize intellectual properties will redound to corporate competition, while help creation more of additional value. Taking our sports implements industry or the vehicle lights manufacturers in Taichung area for example, intellectual properties are present in the products and in the production process as well, to make available diversified options for the purchasing parties, thereby greatly enhancing additional value to the products, interpreted to mean more profits realizable over pure OEMs. Avoidance of vicious cycle, increased will to placement of purchasing order. If only optimum use is made of intellectual properties such that they are represented in the products, in the process or even in the technology itself, Taiwanese manufacturers who are basically OEMs may avoid the painful dilemma of vicious competition, and may even make it may avoid the painful dilemma of vicious competition, and cay even make it for overseas buyers to be core willing to place orders, Taking again as an example a TIPS induced manufacturer, 2005, the Universal Scientific Industrial Co., Ltd., after the USI has built internal intellectual property management system pursuant to TIPS specifications, alien clients on the point of placing orders may very soon be adequately informed with the model the USI takes respecting their management of intellectual properties, satisfied that the products being purchased are largely safe from infringement of other's proprietary rights, the alien buyer may be willing to place more and greater orders. Reduced management costs, creation of greater profits. Most Taiwan-based medium and small businesses are far from being able to input mass manpower or material resources simply to build up systematically structured intellectual property management system. The meaning of introducing TIPS specifications lies simply in the close embodiment of existent hard equipments with management of intellectual properties for any intending enterprise whatsoever, so that a full set of convenient, effective and low-cost management may come into being in lieu of random and discrete management practice which has been the case for years or even for generations. Obvious benefits with such an arrangement include protection of proper interests, preclusion of encroachment upon the proprietary rights of third parties, and perhaps the possibility of granting licensing arrangements to earn roytitleies for the company. III. Implementation of Taiwan Intellectual Property Management Standards: History and Current Situation From 2006, the way to promoting the Intellectual Property Management System is prosecuted in the form of specifications submitted to industries in the hope that industries would establish their own intellectual property management systems using such specifications, through systematic flows, efforts as such should help to boost corporate competition, and the keynote has therefore shifted from once where it was, that was, verifying if a given industry had introduced and honestly follow specified Intellectual Property Management System against given standards. What follows below is a phase-wise account of the history of implementation of Taiwan's Intellectual Property Management Standards: 1. Trial Phase Emphasis placed on Intellectual Properties following Taiwan participation in WTO has driven the IPO to appoint the STLC to formulate a full set of standards for the management of intellectual properties based on a structure and morale embodying ISO 9001:2000 Quality Control Systems, and the same intended for trial introduction into local industries in addition to personnel training and promotion purposes. In this phase important businesses on the agenda include: To launch the institution, the intellectual property management standard will be firstly introduced into three manufacturers beginning in 2004, whereby manufacturer's comments collected in the counseling process will turn to account for reference for amendment considerations respecting said Intellectual Property Management Standard, with outcome of the introduction serving as a model for other manufacturers. As regards promotion, suitable promotion scheme will be put into effect to introduce Intellectual property Management Standard to enterprises or organizations to which predecessor experiences will be supplied as well, whose newly gained experiences would be shared among other enterprises for reference in Outcome Sharing Party activities. As regards counseling input, there have been 3 manufacturers in 2004, Asia Optical Co., Inc., Cheng Uei (Foxlink) Precision Industry Co., Ltd. and HiTRUST Inc., receiving trial introduction of Intellectual Property Management Standard whereby each has had their own Intellectual Property Management System established. As regards personnel training, seeds have been chosen who, after having received training on relevant curriculums, betook themselves to assisting enterprises or organizations introducing Intellectual Property Management Standards, this in turn benefits the seeds with on-job experiences such that they turned out better prepared to demonstrate counseling, assessment capabilities in the face of future promotion tasks, As regards R&D tasks, consistent brainstorming for the working of supplemental or operating procedures necessary for the promotion of Intellectual Property Management Standards, prepping up comprehensive implementation programs based on experiences accumulated over practical and personal involvements. 2. Demonstrative Introduction Phase Since promotion task is passed to the IDB in 2005, efforts to institute Intellectual Property Management Standard switched to introducing Intellectual Property Management Specifications where the top concern is to be helpful for the industries concerned. On the basis of as is Intellectual Property Management Specifications and prep up verification mechanism; Seen in the result of institutional promotion, out of stipulations and regulations conditioning the promotion of intellectual property management system that is persistently deliberated by the STLC on behalf of the IDB, a total of 11 documents nave been released pertinent to supplemental procedures and relevant date, plus up to 10 errands comprising reviewing of statutory provisions and effecting of major amendments. As regards promotion efforts; done are printing of notes on application of counseling services, brief introduction of Intellectual Property Management System, Specification of Intellectual property Management System, Paragon of Management Handbook and Guide to Assessors. Promotion efforts were consummated in 3 promotion seminars which took place in the north, central and southern part of Taiwan respectively, also done is an outcome share party where the protagonist is paragon manufacturer introducing the system in question; cooperation has been an event with Economic Daily News which has given an in-depth coverage on paragon counsel case. Forum on the media Economic Daily News whereat reputed scholars on intellectual property issues and experts in practice, such as Professor Ming-Yan Shieh of National Taiwan University, Professor Chung-Jen Cheng of Shih Hsin University, have been attending. As regards counseling for introduction, a total of 8 middle or smaller businesses have been successfully counseled into introduction for exemplification purposes in 2005, they are: Yulon-Nissan, Asia Optical Co., Inc., Advanced Connectek Inc. (ACON), Meifu Technologies, Universal Scientific Industrial Co., Ltd. (USI), Cycling & Hetitleh Tech Industry R&D Center (CHC), Apex Nanotechnology Corporation, and AURORA Office Automation Corp. 4 counsel execution meetings have been held, plus one Pre-assessment Seminar, on-the-spot written evaluation has been conducted with respect to 8 exemplary induced manufacturers. As regards personnel training, a total of 98 person-rounds have benefited under training programs encompassing: induction seeds, internal auditors, exemplary counselors, reserved seeds. 3. The Weighted Promotion Phase Following conclusion of infrastructural consolidation in 2005, diagnostic service was given to have a close check on existent intellectual property management system that was working in enterprises and organizations, this effort in concert with experiences accumulated through exemplary inducement, in 2006, in order to find out actual needs against differentials in place for promotion and rectification of the specifications in use of the management of intellectual properties: Institutionally, way from 2006 the unified designation “Taiwan Intellectual Property Management System” (TIPS) will apply as a common technical specification in sectors including: industry, government, schools, R&D interests, Follow-up promotion tasks will continue in the form of a team comprising interested scholars, experts invited by the grace of the Industry Bureau, in charge of strategic planning, execution, supervision, and literature screening. As regards promotion and propagation, in 2006 it is largely through self-assessment and evaluation, to which participation is on a voluntary basis with notices served on induced enterprises of organizations, To spread afar the inducement movement so that more and more people are adequately enlightened with what is all about TIPS, a total of 3 instruction seminars have been sponsored in the north, central and south to go pursuant to the inducement experience concluded in 2005, plus several occasions of manufacturers’ conceptual exchange meetings. As regards counseled inducements, a total of 30 manufacturers have benefits under the TIPS diagnostic service as offered, they are: Tatung Co., Taiwan Design Center (TDC), King Car Industrial Co., Ltd., Systex Corporation, National Nano Device Laboratories (NDL), National Center for High-Performance Computing (NCHC), Chi Mei Frozen Food Co., Ltd., Eastech Electronics (Taiwan) Inc., Lee Chi Enterprise Co., Ltd., WisTek, PRIT Biotech Co., Ltd, Intech Taiwan Corporation, Yeastern Biotech Co., Ltd., Yangsen Biotechnology Co., Ltd., Apex Biotechnology Corp. (ApexBio), Taiwan Electric Voice Co., Ltd. (TEV), Gewise Industrial Inc., SportsArt Industrial Co., Chien Yuan Food Chemicals Co., Ltd., Unicare Biotechnology Corp., Tek Maker Corporation, Chi Lin Technology Co., Ltd., Ihetitleh Co., Ltd., A3000 System Co., Ltd., Standard Chem. & Pharm. Co., Ltd., Jwo Ruey Technical Co., Ltd., Omni Hetitleh Group, Alinc Taiwan Co., Ltd., Marie International Co., Ltd., S.Z.S. Co., Ltd., each of them outstanding and highly revered in their respective field of avocation. From them 5 manufacturers have been chosen to account for exemplary TIPS inducement cases, these are: TDC, King Car Industrial Co., Ltd, Systex Corporation, Yeastern Biotech Co., Ltd., SportsArt Industrial Co., to demonstrate how the recommended Intellectual Property Management Specification works in reality, As regards personnel training services: one round of Tips inducement trainee course and one round of TIPS self-assessment trainee course have been sponsored to benefit a total of 91 person-rounds 16 professionals have been entered on registration as counselors, one round of assessment commissioner pre-task seminar has been sponsored. IV. Outlook of Future Planning Based on the consensus reached in “Conference to Work for the Instituting and Promotion of Taiwan Intellectual Property Management Standard” sponsored by the Ministry of Economic Affairs, universal promotion of the intellectual property management system will be implemented continually in phases so that same may be introduced to industries different in scale or fields of interest with more flexibilities, comprising both enterprises and organizations: Institutionally, specifications will adapt to the scale and classification of the industry concerned, with possibilities to allow for the planning of simplified versions and industry-specific versions, besides, the introducing of TIPS specifications will inevitably incur the necessity of integrality with existent ISO systems, owing to limited timing allowed for counseling intervention, the Industry Bureau will firstly strive for the buildup of TIPS with as many as possible manufacturers. Embodiment of ISO with TIPS is a precondition to introducing the latter, since ISO is an internationally recognized standard, in so far as TIPS fails to be combined with ISO, to target industries the inducement task is always a mission impossible, As regards promotion and propagation, the government is planning to qualify industries to which the suggested intellectual property management system has been introduced successfully as eligible for extra score when they go applying for benefit under Creative R&D Counsel Plan, or for favorable terms in closing same plan, this as an incentive to induce more manufacturers, Being considered is the editing of Inducement Manual which would include introduction of exemplary cases, exemplary inducement procedures, to help build up interchange of inducement experiences among manufacturers, More concrete encouragement means will be offered to pilot manufacturers who are willing to set themselves as paragon in the inducement movement, and manuals disclosing governmental resources relevant to the issue of intellectual properties will be compiled for manufacturers' reference; sponsoring promotion seminars addressed to specific group of manufacturers, whereat pilot manufacturers will give an account of their own initiation experiences. As regards inducement counseling, a review of the background of manufacturers to which TIPS has been introduced will yield the notion that most of our traditional industries or medium and small technique R&D oriented concerns fell short of the manpower and experience necessary for management of intellectual properties, so they very much need and wish that the government assist them to build their own Intellectual Property Management System. To alleviate cost burden on the intending enterprises or organizations, being envisioned is enlargement of scope of reach of services in coordination with e-mail dominant autonomous verification system, phase-wise inducement mode may be introduced eventually to help reinforce the autonomous verification software capabilities, and to assist induced plants in operation. Currently the target is set at reaching titleogether 300 manufacturers who are able to run autonomous verifications under TIPS by the year 2008, meanwhile 50 rounds of TIPS external assessments are completed for the manufacturers and titleogether 120 clients having received TIPS diagnostic services. As to personnel training, being continually sponsored are training courses, under planning are certifying training agency buildup programs so that the training service may spread wide afar, by the year 2008 a total of 280 TIPS professionals will have been turned out due to training efforts; it is believed that more individuals would be attracted by appealing on the importance of intellectual properties with respect to corporations and individuals alike, so as to prolong and spread benefits by reason of resource input. As regards R&D progressions, as incessant improvements, researching efforts are indispensable to the buildup of impeccable intellectual property management system; current status of intellectual property management among local industries will be surveyed persistently in parallel with studying of present status of intellectual property managements around the world. It is hoped that through personnel training, what with publication, exchange and transmission of experiences accumulated with intellectual property management system or institutions, incessant improvement of intellectual property management system, setup of evaluation scheme respecting and so as to make more wholesome intellectual property management systems, the day will come sooner for “Wholesale and universal institutionalization of generalized intellectual property management systems across the manufacturers, legal persons, consortium in particular, researching institute throughout Taiwan” to come true. V. Conclusions: A Reliable statistic source in 2006 claimed that the percentage of commercialization by local manufacturers to whom patent rights have been granted against application is merely 0.3%, which figure is 10 times behind the corresponding average in international communities, the latter being 3% It is advisable for our manufacturers to realize that innovation and intellectual property management are independent of capital resources, management subsequent to the acquisition of patent privileges must never go slow or put aside. The prime object of implementation of TIPS by the government is to push for universal buildup of intellectual property management system so that local manufacturers whose interests are associated therewith may best exploit as well as protect their properly owned intellectual privileges thanks to subsequent relevant planning, that they be alerted to application of patented rights once granted to them. For any enterprise or organization to establish their own intellectual property management system after TIPS, they will have to understand in the first place their own strengths and weaknesses and orientation for future operations, they will then fix defined policy and corporate objective, and that supported by the top management level, the next step, is to decide as to whether an ad hoc unit be installed by taking into consideration corporate scale and resources, or if it is more desirable to commission intellectual property management to outside concerns. Creation of intellectual property depends upon the character of corporate products, the setup of an intellectual property management system is meant to manage the creation, up keeping and application of intellectual properties, the training mechanism functions to promote conceptions about intellectual property by instilling same among corporate employees, concrete safety guarding measures are required to physically protect intellectual properties. Safeguarding operations to provide protection of intellectual properties must be checked periodically, the PDCA model will intervene to appropriately amend both policy directive and systems of intellectual properties so that the system may best achieve its intended purposes by incorporating the auditing, accounting and financial management of intellectual properties at the same time. Fair and just verification scheme will be built to verify what happens to an industry to which the system has been introduced for some time, so that the industry may remain alert as to where it stands in the system; the need for counseling services arising as a result of corporate aspiration to pass evaluation will help create a market of counseling service addressed to service industries intending to offer systematic management services to needy clients, Then corporations or organizations will sooner pay more attention to the management of intellectual properties, while knowledge service industry will develop and prosper in like measure, the causes interacting with each other to bid birth to more innovation and growth, and Taiwan is brought closer and closer to fulfilling its affectionately nicknamed designation: Intelligence Island.
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