The 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)
Review of Singapore IP Dispute Resolution Development Preface In recent years, advantage of capital and productivity are not enough for company to stand out from the business battle. Innovation and creation become the driver of business growth. Intellectual Property (“IP”) Right turns out to be the power to boost international competitiveness. In March 2013, Singapore submitted 10-year IP Hub Master Plan to guide Singapore’s development as a Global IP Hub in Asia. Six Strategies are identified from IP Hub Master Plan. This article focuses on strategy 4, developing Singapore as a choice venue for IP dispute resolution through a strong IP Court and deep IP alternative dispute resolution capabilities, to understand how Singapore attracts various stakeholders and hence create a hive of IP activities by adopting tailored processes to facilitate the resolution of IP cases and promoting alternative dispute resolution. Key Points of IP Dispute Resolution When it comes to IP issue, oblige will take either marketplace or area of IP application into account for choosing jurisdiction of dispute resolution. The major IP war occurs in America and China. Although Singapore deals with less IP case, the government considers itself as a transparent, efficient and neutral justice system, coupling with lots of transnational divisions in Singapore, which creates an opportunity to develop IP dispute resolution. To achieve the goal, Singapore puts its hand to enhance capabilities of IP Court and IP alternative dispute resolution for bringing more IP litigations and IP alternative dispute resolution to Singapore. 1. Enhance Capabilities of IP Court (1) Efficiencize Processes In September 2013, the Registrar of the Supreme Court released Circular 2 of 2013 on the issuance of the IP Court Guide, which will apply to all cases under the IP docket of the Supreme Court with immediate effect. An IP Judge will be assigned to hear all interlocutory appeals, milestone pre-trial conferences (“PTCs”) and the trial on liability. The IP Court Guide provides for two milestone PTCs before set down for trial whereby the lead counsel must personally attend to address the IP Judge on certain specified issues. All other PTCs will be heard by the senior assistant registrar managing the IP docket. Subject to certain exceptions, an assistant registrar will hear all interlocutory applications arising in each IP case. In addition, to support the IP Court’s adjudication functions, the IP Court Guide provides for the appointment of assessors (for technical expertise) and amicus curiae (for legal expertise) for IP cases. Parties are encouraged to propose a single candidate by agreement. Otherwise, parties should agree on and propose a shortlist of candidates. Due to improvement, it is more convenient for parties to track trail status. For IP Judges, they can get familiar with cases and related evidence through PCTs before entering trail process. On the whole, this change increases trail efficiency and quality. (2) Set Up Singapore International Commercial Court The Ministry of Law proposed amendments to the Constitution of the Republic of Singapore and the Supreme Court Judicature Act in October 2014. The new legislation and regulations laid the foundation of Singapore International Commercial Court (“SICC”), which was set up in January 2015. The SICC, the only one International Commercial Court in Asia, is a division of the Singapore High Court and part of the Supreme Court of Singapore designed to deal with transnational commercial disputes including business issues and patent suits. Key Features of the SICC: A. SICC matters will be heard by a Panel comprising High Court Judges, associate Judges and foreign associate Judges with extensive experience and highly regarded reputation. B. A party may be represented by a registered foreign counsel without any involvement of local Singapore counsel if the matter in question is considered to be an “offshore case”. An “offshore case” is defined in the amended Rules of Court as a case which has no substantial connection to Singapore either because (i) Singapore law is not the law applicable to the dispute and the subject matter of the dispute is not regulated by or otherwise subject to Singapore law, or (ii) The only connection between the dispute and Singapore are the parties’ choice of Singapore as the law applicable to the dispute and the parties’ submission to the SICC’s jurisdiction (“Singapore Law-only Connection”). C. The SICC will hear cases governed by Singapore law and by foreign law, with the Court taking judicial notice of the foreign law. In addition, the SICC is not bound by the domestic rules of evidence at all and may apply other rules of evidence whether they are found in a foreign law or otherwise, if the parties make an application for it. 2.Strengthen Capabilities of IP Alternative Dispute Resolution Singapore International Arbitration Center (“SIAC”) and the WIPO Arbitration and Mediation Center Singapore Office were set up respectively in 1991 and 2001 to strengthen capabilities of IP arbitration. On the basis of these two centers, in order to enrich alternative dispute resolution, Singapore also established Singapore International Mediation Center (“SIMC”) and launched the service of arbitration-mediation-arbitration (“Arb-Med-Arb”) in November 2014. Arb-Med-Arb is a process where a dispute is referred to arbitration before mediation is attempted. If the parties are able to settle their dispute through mediation, their mediated settlement may be recorded as a consent award. If the parties are unable to settle their dispute through mediation, they may continue with the arbitration proceedings. Arb-Med-Arb is definitely a better way for parties to reach a consensus on a dispute since arbitration is more costly and mediation is less powerful. Conclusion The SIMC and the SIAC are now collectively working on mediation, Arb-Med-Arb and arbitration and providing various IP alternative dispute resolutions. Moreover, the SICC and IP Court are charged with IP litigation. These make Singapore a comprehensive IP dispute resolution system. In the process of revolution, Singapore puts itself up to breakthrough as to amendments and the Supreme Court Judicature Act, which establish legitimacy of SICC. The government also defines IP dispute resolution services, such as SIMC’s mediation, Arb-Med-Arb, arbitration as well as SICC features. Nevertheless, other than SIAC, SICC decision may be difficult to enforce transnationally due to lack of legislation. To sum up, Singapore earns recognition for aggressively proposing amendments and assigning responsibilities after setting IP target and evaluating obstacles; however, it is better to pay special attention to that if the market can keep up with administrative efficiency or if the IP strategy could accord with the demands of the market.
A Survey Study on the Intellectual Property Management amongst Taiwanese CompaniesJ. Kitty Huang Chien-Shan Chiu Background In order to provide insight into intellectual property (IP) awareness, the status quo as well as potential hardship and demands arise over IP management, STLC was commissioned by IDB (Industrial Development Bureau) to conduct a survey study in June 2010. In this article, we provide briefings on the contents, research methodology and major findings of this study. About the research The survey questionnaire was sent by means of emails or posts to a total of 1000 business establishments randomly generated from the registration data facilitated by the Ministry of Economic Affairs. This was also the first time that such a survey has been envisaged on such a comprehensive scale, covering businesses located around Taiwan with the aim being to produce an in-depth analysis into IP management in various industries including manufacturing, precision machineries, photonics, bio-medicals, info-techs, semiconductors etc. Sixty-five percent of the respondents have less than fifty employees and the overall response rate achieved was 13.1%.1 A continuing need to strengthen IP awareness is required The first section of the questionnaire dealing with IP awareness gauged respondent companies IP knowledge and understanding through a series of questions relating to IP law and practice. When asked whether formal registration was necessary to obtain a range of intellectual property rights (IPRs), over 70% of companies replied with correct answers, namely patents, designs and trademarks. However, through other questions at a more advanced level, the responses revealed a general lack of knowledge in IP law and hence a continuing need to strengthen IP awareness is required. For instance, overall 70% of companies know that obtaining patents will require formal registration, yet surprisingly even of these over 50% incorrectly thought the manners of patent utilization, such as making products, will not result in infringing others IPRs. This result arguably suggests that respondents are in the main unaware that a patent does not give the patent owner the right to exploit the patented invention himself, but rather, he has only the “exclusive right” to stop others from doing so. For another instance, whilst 32% of respondents inaccurately thought that a formal registration is required to obtain copyrights, nonetheless this does not equate to the result being a near 70% of companies have a full and correct knowledge in regard to copyright. When faced with a slightly more obscure question of who would own the copyright in commissioned work (such as website creation) in the absence of a contract, 26% of companies didn’t know and 30% answered incorrectly. On the same token, though only 10% of respondents erroneously believed that trade secrets would require a formal registration, when asked whether the company’s client list may be a trade secret, the number of correct replies (61%) drops sharply when compared to the previous one. Though intended as a question to discriminate at the upper levels of trade secret awareness, the replies are more likely to reflect a lack comprehension of the subject among Taiwanese companies. The important message arise from the overall scales in the first section of the survey is that the need for IP awareness promotion and enhancement amongst companies in Taiwan still exists. Lack of IP expertise is a major barrier In the second section of the questionnaire companies were asked a series of questions which were intended to measure the status quo through the extent of IP management practices. Perhaps one would agree that the issue of perceptions of the importance of IP to a company is greatly linked to how effective it manages them. When asked to indicate reasons as to why IP is important to their business, the replies were rather polarized. The two most popular reasons were “means to differentiate from competitors” (33%) and “to prevent infringement” (30%). The distinction between the two is clearly that the former reason is relatively active and strategic whilst the latter is perceived to be passive and defensive. On the other hand, “to retrieve the cost of R&D” (4%) and “to attract more investors” (5%) are least likely to be seen as the reasons why IP is important to them. The results may suggest that generally speaking, Taiwanese companies tended not to utilize their IP to generate revenues nor correlate them with the business strategies, but rather, see them more of a shield to avoid infringement. Companies were asked what IPRs they own and the most common ones are trademarks (21%) and utility patents (20%), with invention patents (14%) being the third on the rank. In contrast only 2% of respondent companies own copyrights. While such result may be attributed to the overall structure of the industry, it may also link to the observation that most companies not merely lack the comprehension of copyrights but may also not be aware of owning such IPR. Furthermore, it is also surprising to find that 45% of respondents do not own any IPRs. The absence of IPRs within these companies is perhaps a key indication of poor awareness and inactive management of IPRs amongst many Taiwanese companies. To measure the extent of IP management is not easy as the intensity of it differs both by sector and by size. Therefore, the task is achieved through 9 questions designed on the concept of PDCA (plan-do-check-act) process which would allow the respondents to review and find out any inadequacy in their IP management as they proceed. One would expect that those companies with effective IP management would take care to evaluate the various IPRs required at different time intervals. Whilst all of the answer choices are considered to be “important timings”, for example “when planning for new skills/products/business” and “when further investment in IP would enhance defense (such as infringement prevention); yet the results revealed that over 60% of the companies did not perform such evaluation at whatever timing. This may suggest that in general, companies in Taiwan are inadequately concerned with the evaluation process within their management of IP. Such a result may consequently make them ignoring means to prevent infringement (such as checking competitors’ IPRs and prior-art search) or pay attention to regulation updates. Effective IP management indisputably requires certain monetary inputs. Companies were asked whether they have regularly spent on obtaining and maintaining IPRs the firm owns, and remarkably only about 36% of respondents answered this question. In addition the companies were asked about how much they spent on “application fees”2,“incentives offered to inventors”, “spending on HR” and “other expense”. Only a paltry 6% of all respondent companies spent on all the abovementioned categories and mostly up to the amount of NT$100,000 (roughly USD$3300) per each. Linked with the spending on IPRs is perhaps whether companies have designated staff responsible for managing IPRs or have a separate IP department. Again, 70% of respondents replied negatively to this question and only 10% of some larger companies (with over 200 employees) have specific personnel or department designated to assume this responsibility. The results may indicate a general lack of expertise in managing IPRs as a barrier to leveraging full value of them as well as making proper legal decision in the event of IP related disputes Companies were asked how to protect their IPRs through a variety of methods of protection though the majority (over 72%) didn’t implement any of them. The most highly identified method being “protect core skills by patents”, however, only 35% of companies adopted such protection. Furthermore, roughly 76% of the companies did not conduct training in IP issues for employees, and over 75% did not attempt to assess the efficiency of their management of IP. The explanation to the above is conceivably a general lack of IP expertise due to inadequate monetary inputs as well as perceived high costs for IP specialists within the company. The results ultimately reflect an inefficient execution of IP management in the massive Taiwanese companies. Most companies have only limited resources The final aspect of IP management that has been surveyed is the hardships occurred and accordingly the resources sought to solve them. When asked what are the major difficulties in the process of managing IP, the most common answers were “high expenditure on filing and maintenance” (18%), “lack of professional advice” (15%) and “regulatory complexity” (15%). These results are arguably all related to the facts already discussed in the afore-mentioned paragraphs. In general, the survey revealed that most companies have only limited resources and therefore highly demand external aids such as government funding or projects to help soften the hardships and improve their management skills. Accordingly, “unifying resources for enhancing IP management through a mutual platform” (22%) and “facilitate industry peer networks” (21%) being the most popular resources sought. Furthermore, 14% of the respondents indicated their urge to receive “on-site expert assistance”, and a remarkable 90% of the respondents have never been aware of the TIPS (Taiwan Intellectual Property Management System) project, which is one initiated by the government to help companies set up a systematic IP management system. As a result, efforts to promote the TIPS project should be further devoted as the initial step to assist companies strengthen their IP awareness and management skills. Conclusion The results of the survey present the status quo of IP management amongst the companies in Taiwan which is proportionally consistent with their IP awareness as well as hardships and resources sought. The present study shows what one might expect, that is larger companies tend to be more IP aware and have greater resources to manage their IPRs, whilst the rest of others (especially SMEs) are in the main inadequately aware of IP, which is crucial to enhance active IP management within and throughout their firms. While various resources are highly demanded, perhaps the government should firstly take steps to promote that awareness within and throughout their organizations. Linked with this is the second important point which is that further promotion of the TIPS project should be aimed at not only enhancing IP awareness but also assisting companies to better manage their IPRs. IP management is essential to preserve IP created by companies and the TIPS system would enable companies to foster and strengthen key aspects of IP management such as conduct training in IP issues for employees, evaluate various IPRs required, etc. Some of the complementary measures as such expert consultations and TIPS networks or seminars would also help to alleviate some of the hardships encountered in the process of managing IP. On the other hand, like the “Survey on Business Attitudes to Intellectual Property” being conducted yearly in Hong Kong since year 2004, it is suggested that the present survey research or the alike to be continually carried out to assist promoting IP awareness within Taiwan industry. Finally, we would like to thank everyone who contributed to this survey research and hope that it provides valuable insight into the goals originally proposed. 1.The survey resulted in 157 replies from which 26 of them were nullified by false or incomplete answers. 2.Application fees” include fees occurred from exploring inventions up to application and maintenance, which also include attorney fees.
The Demand of Intellectual Property Management for Taiwanese EnterprisesScience & Technology Law Institute (STLI), Institute for Information Industry has conducted the survey of “The current status and demand of intellectual property management for Taiwanese enterprises” to listed companies for consecutive four years since 2012. Based on the survey result, three trends of intellectual property management for Taiwanese enterprises have been found and four recommendations have been proposed with detail descriptions as below. Trend 1: Positive Growth in Intellectual Property Awareness and Intellectual Property Dedicated Department/Personnel, Budget and Projects 1.Taiwanese enterprises believe that intellectual property plays an important role 74.18% of Taiwanese enterprises believe that intellectual property can increase economic value and 58.61% of those believe that it can effectively prevent competitors from entering the market. Source: created by project team members Graph 1 The benefit of intellectual property for the company 2.Taiwanese enterprises increase investment in the dedicated department and full time personnel for intellectual property Nearly 80% of listed and OTC companies set up full time personnel for intellectual property and over 50% of those have established dedicated department to handle its business that is higher than 30% in 2012. Source: created by project team members Graph 2 Specialized Department or personnel for intellectual property by year 3.Taiwanese enterprises plan budget for intellectual property each year 81% of respondent companies plan certain budget for intellectual property each year. Among the expenses items, the percentage of 90.95% for intellectual property application is the highest. Next are 58.29% for inventor bonus payment and 56.28% for intellectual property education training. Source: created by project team members Graph 3 Taiwanese enterprises plan budget for intellectual property each year Trend 2: Insufficient Positive Activation for Intellectual Property 1.Interior intellectual property personnel is seldomto be involved in the core decision making in Taiwanese enterprises Based on the importance and difficulty of intellectual property, most items in the area of high importance and difficulty are demand of professionals and practical experiences (e.g.: lack of interior talent, do not understand international technology standard and specification, lack of platform to obtain experiences and cases). Only application time is for administrative procedure of Intellectual Property Offices. Therefore, it is known that intellectual property department of respondent companies lacks experienced talents. Source: created by project team members Graph 4 Importance and difficulty of intellectual property In addition, most of the jobs of intellectual property personnel are “keeping close cooperation and communication with R&D department”, “coordinating issues relevant to intellectual property between departments” and “keeping close cooperation and communication with marketing or sales department” instead of “R&D strategy involvement” and “marketing and operation strategy involvement” (see Graph 5). Therefore, it is demonstrated that the work of intellectual property personnel is mainly for providing coordination and assistance to other departments other than corporate strategy with intellectual property as basis. Maybe it is the reason for insufficient activation and lower investment of intellectual property in the business. Source: created by project team members Graph 5 The job of intellectual property department or personnel 2.Insufficient positive activation for intellectual property in Taiwanese enterprises It is shown that 60% of firms are without and did not obtain technology transfer (among which the traditional manufacturing sector has the highest percentage). 22.95% of firms are without but obtained technology transfer and 4.51% of those are with but did not obtain technology transfer. In addition, most of the jobs of intellectual property are administration other than activation such as treatment of authorization contract and transaction and sending warning letter of infringement. Therefore, it is assumed that intellectual property is not the key for profitability in the business. 3.Taiwanese enterprises with higher R&D expenses ratio intend to have more positive activation of intellectual property Although the entire firms are not positive for activation of intellectual property, it is found that enterprises with higher R&D expenses ratio (the ratio of R&D expenses / total operating expenses is higher than average) intend to have more positive activation of intellectual property. For example, intellectual property department with higher R&D expenses ratio involves more in the decision making of R&D strategy in the business. Compared with the enterprises with higher R&D expenses ratio, the enterprises with lower R&D expenses ratio also has higher ratio in the absence and failure of technology transfer. (see Graph 6) Source: created by project team members Graph 6 Presence and achievement of technology transfer in the different sector 4.Most of Taiwanese enterprises R&D on their own so to lack of introduction experience of external R&D results Among the survey, nearly 90% of firms R&D each item on their own except the copyright part with lower percentage of 78.5%. 15.89% of it is from outsourcing development and 13.08% of it is from authorization. In addition, the outsourcing development and authroization of invention patent part have higher percentage which is 17.34% and 15.61% respectively. However, the speed of self R&D can’t meet the speed of product elimination nowadays. Therefore, under global open competition, corporate may try to cooperate with universities and research institutions to speed up R&D progress. Table 1 Source of Intellectual Property Right Source: created by project team members Further, among the services s that corporate ask for assistance from government, there are high demand for promotion of cooperation between industrial, academic and research sectors as well as assistance provided by academic and research institution to enhance corporate’s R&D ability. Based on this, it is clear established that a smooth access can help enterprises to cooperate with academic and research institutions for R&D instead of doing it on their own. Source: created by project team members Graph 7 The Government Policy for Intellectual Property 5.Taiwanese enterprises focus only on patent and trademark but ignore trade secret and copyright From the intellectual property items enterprises possessed each year, it is found that trademark has the highest percentage (over 80% for four-year average) and next items are invention patent and utility model patent. The awareness that corporates have on intellectual property is only limited to patent and trademark. They overlook that their core ability may be protected by trade secret and copyright. Source: created by project team members Graph 8 Owned IP right Trend 3: Increasing Demand on International Intellectual Property Service 1.The overseas intellectual property risk Taiwanese enterprises faced greatly varies from sectors Among the 2015 survey, 85% of respondent firms developed to overseas. Under which the highest percentage is 79.81% for overseas sale then 56.25% for self-establishment of overseas factory for manufacturing. Furthermore, the percentage of outsourcing in traditional manufacturing sector is the highest than that of other industries which 77.36% of traditional manufacturing firms established overseas factory for manufacturing. The percentage of overseas sale in pharmaceutical and livelihood sector is 91.3% and slightly higher than that in other industries. The result shows that different industry will select different overseas development strategy based on its sector characteristics and R&D difficulty. Source: created by project team members Graph 9 The overseas intellectual property risk As a whole, the highest risk that might be occurred from enterprises developed overseas is leakage of trade secrets. Next risks are 47.12% for being accused of product infringement and 42.31% for patent being registered. Further, the risk control greatly varies from different sector. The risks that industry and commerce service sector regards are quite different from other sectors. For example, its risk of dispute of employee jumping ship or being poached which accounted for 50% is higher than that of other sectors. In addition to the three common risks mentioned above, information and technology sector believes that there might be risk of patent dispute which accounted for 35.29% and is higher than that of other sectors. Source: created by project team members Graph 10 The overseas risk control which might be occurred by enterprises 2.The most dissatisfied part that Taiwanese enterprises have to the intellectual property outsourcing service is insufficient experiences on the treatment of international affairs Based on the 2012 and 2013 data, the too expensive fees is the primary factor that intellectual property outsourcing service didn’t meet the demand. However, from the 2014 and 2015 survey result, the experiences on the treatment of international affairs became the primary factor. It is shown that enterprises increase demand for international intellectual property work but current services from providers can’t satisfy it. From survey data, it is found that different sector has different demand on overseas development. Among which the pharmaceutical and livelihood sector has higher demand on the management of overseas trademark use, investigation of overseas infringement risk, contract of overseas patent authorization, contract of overseas trademark authorization, contract of overseas technology transfer and contract of overseas mutual R&D (See Graph 11). Source: created by project team members Graph 11 The outsourcing professional resources unsatisfied with demand – annual comparision Recommendation 1: Taiwanese enterprises shall build intellectual property creation strategy based on a variety of intecllectual property rights Enterprises may apply for patent, trademark, trade secret and copyright. For instance, brand management can be conducted with trademark and copyright and core technology or service can be protected by patent and trade secret instead of using trademark or patent alone as primary strategy. Recommendation 2: Provide Taiwanese enterprises with assistance of overseas intellectual property consultation 85% of respondent firms have overseas business which greatly varies from different sector so to accompany with different overseas intellectual property risk. Therefore, government may provide enterprises with the information of overseas intellectual property and even real time consultation services of overseas intellectual property risk which is the requirement to be satisfied immediately. In addition, the actual overseas intellectual property demand of enterprises can be found through this introduction of consultation services. To satisfy enterprises’ demand, service providers may need to improve their ability together. Recommendation 3: Build cooperation access of industry, academics and research to assist Taiwanese enterprises to enhance R&D ability Under the fast-evolved and competitive environment, enterprises shall not only depend on their own R&D. Moreover, they shall leverage the R&D result of academic and research institutions to improve so to make subsidy of those institutions from government have real impact on them. Therefore, there is demand of cooperation between industry, academics and research. The cooperation access between them should be built to achieve synergy of R&D. Recommendation 4: Experienced professionals of intellectual property are requried to be cultivated and demand of intellectual property human capital is needed to be expanded for Taiwanese enterprises Enterprises lack of experienced professionals of intellectual property. This demand could be satisfied only through on-the-job training for large personnel other than new graduates of department of intellectual property. Furthermore, enterprises can make department of intellectual property contribute its professional services into R&D and marketing strategy through design of organization work procedure to reduce risk of intellectual property they have to face.
Discussion on the Formation of Taiwan’s Network of Intellectual Property Collaboration System in light of Japan’s ExperienceBackground Taiwan industries have been facing an increasing pressure from the competitive global market. To assist the Taiwan industries, the Government has approved the “National Intellectual Property Strategy Guideline” (the “Guideline”) on 17 October 2012. The Guideline stipulates six major strategies and twenty-seven relevant enforcement criteria in relation to intellectual property (“IP”). The six major strategies are as follows: (a) creation and utilization of high-value patents; (b) enforcing cultural integrity; (c) creation of high agricultural value; (d) support free flow of IP for academics; (e) support system of IP trade flows and protection; and (f) develop highly qualified personnel in IP. Under the “innovation of high-value patents” strategy, the relevant enforcement criterion, being “establishing academia-industry collaborative system for IP management”, is to support the Taiwan’s current and future technology development program on R&D planning, IP management and technology commercialization. In other words, this enforcement criterion can greatly improve the ambiguity and inadequacy of Taiwan’s research infrastructure which have caused inefficient research operation. Furthermore, this enforcement criterion can also improve network collaboration between organizations on IP management, allowing more efficient process for managing IP and thus achieving the purpose of “creation and utilization of high-value patent”. In light of the above, this article studies Japan’s practice on integrating the IP network resources and improving their IP management under the University Network IP Advisors Program (“IP Advisors Program”). University Network IP Advisors Framework Outline A. Policy background, goals and methodology National Center for Industrial Property Information and Training (“INPIT”) initiated the IP Advisors Program and commissioned Japan Institute for Promoting Invention and Innovation (“JIII”) to implement and carry out the new policy in year 2011. Prior to the implementation of the new policy by JIII, INPIT has assisted with establishing proper IP management systems for more than 60 Japanese universities by dispatching IP experts and advisors (“IP Advisors”) to each of the universities during 2002 to March 2011. After the implementation of the initial policy, review has suggested that by expanding the network collaboration, such as establishing intervarsity IP information sharing system within their university networks, the universities can fully aware of and identify technologies that were created by them and are beneficial to the industrial sector. In addition, expanding the network collaboration can also help the universities to quickly develop mechanisms that will enable them properly protect and utilize their acquired IP rights. Accordingly, after 2011, the initial policy has expanded its scope and became the current IP Advisors Program. Japan is expected to improve its nation’s ability to innovate and create new technologies. To attain this goal, Japan has identified that the basis for industry-academia-government R&D consortiums is through obtaining information on universities’ and other academic organizations’ research technologies and IP so that Japan can appropriately place these universities in the appropriate wide-area network. This will allow the universities within the wide-area network to establish IP management policy to properly protect and utilize their IP rights. The current IP Advisors Program is conducted through application from the universities in established wide-area network to JIII. Upon review of the application, JIII will then dispatch the IP Advisor to the applicant university of that wide-area network. IP Advisors not only can provide solutions to general IP related problems, they can also provide professional advice and service on how to establish and operate IP management system for all the universities within the wide-area network. B. IP advisors’ role In principle, IP Advisors are stationed to the Administrative School or Major Supporting School within the wide-area network. IP Advisors can be dispatched to other member schools (“Member Schools”) or provide telephone inquiry service by answering IP related questions. In other words, IP Advisors are not stationed in any Member Schools to manage their IP management affairs, rather, IP Advisors advise or instruct the IP managers of the Member Schools on how to establish and utilize IP management system based on the Member School’s infrastructure. The contents of IP Advisors roles listed are as follows: (a) Assist with activities within the wide-area network. 1. assist with establishing information sharing system between universities within the wide-area network; 2. assist with solving region-based or technology-based IP problems; 3. provide inquiry service for planning activities within wide-area network; and 4. provide inquiry service on other wide-area networks activities planning. (b) Provide services for Member Schools (Type 1) with undeveloped IP management system. 1. investigate or analyze the available IP management system in the Member Schools; 2. assist with drafting a plan to establish IP management system (through an assisting role) and provide instructions or advices accordingly; 3. direct personnel training (i.e. provide education on invention evaluation, assessment on applying for patent and contracts); 4. advocate different regimes of IP; and 5. collect relevant information on new developing technologies. (c) Provide services for Member Schools (Type 1) with developed IP management system 1. investigate or analyze the available IP management system in the Member Schools; 2. provide advices or instructions on the application of IP management department; 3. provide advices or instructions for solving IP management problems; 4. direct personnel training (i.e. provide education on invention evaluation, assessment on applying for patent and contracts); 5. advocate different regimes of IP; and 6. gather relevant information on new developing technologies. (d) Provide services for Member Schools (Type 2) 1.Share and exchange information through network conference. C. Recruitment process and criteria JIII adopts an open recruitment process without a set number of allocated IP Advisor positions. Working location is based in Member Schools of wide-area network in Japan. In principle, IP Advisors are stationed in Administrative Schools or Major Supporting Schools within the wide-area network and can only provide telephone inquiry service or temporary assignment for assistance to the Member Schools (Type 1). However, it is noted that IP Advisors do not belong to any specific university within the wide-area network, they are employed by JIII under an exclusive contract. Based on 2013 example, IP Advisors’ employment contract started from 1 April 2013 and expires on 31 March 2014. IP Advisors’ salary and travelling expenses are paid by JIII. However, expenses for Members School (Type 1) establishing a working environment and any other disbursements should be paid by the Member School (Type 1). Furthermore, under the implementation of the current policy with respect to IP Advisors who are unable to comply with the new criteria, previous contract is considered as a non-periodical contract for the IP Advisors to continue to station in the university. However, if IP Advisor is stationed in a specific university, it must be limited to a maximum of 3 years. Due to the IP Advisors’ work, they must comply with the privacy law and keep any obtained information confidential. D. IP advisors’ qualification 1. Require a high level of professional knowledge on IP management system IP Advisor candidates must have relevant experience working in the industry with IP management system department, operation planning department, R&D department (collectively refer as “IP Management Related Departments”). 2. Have relevant experience in directing trainings in IP Management Related Departments IP Advisor candidates must have the ability to train personnel in IP Management. 3. Can provide IP strategies based on the demands. IP Advisor candidates must have the ability to plan and utilize IP strategies to achieve optimal outcomes in R&D base on the circumstances and needs of different universities. 4. Have referral from the supervisors. IP Advisor candidates who are currently employed must be able to obtain a referral from their current positions’ supervisor, IP manager or personnel from higher up. IP Advisor candidates who are current unemployed must be able to obtain a referral from their previous employment. E. IP advisors’ selection process Based on JIII’s “University Network IP Advisors Adopted Standards” (“Adopted Standards”), IP Advisors are selected first through written application followed by interview. After a comprehensive assessment, all qualified candidates will be compared based on their compatibility of the essential criteria and other non-essential criteria, and finally selecting the most suitable candidate for the wide-area network. F. Application criteria for IP advisors services 1.Common requirements for Member Schools of wide-area network (a) must be an university or educational organization pursuant to the School Education Act (No. 26 of 1947) and must be able to conduct research and have set number of entry students and graduates per year;and (b) university must have developed IP related technology or design. 2. Criteria for wide-area network (a) Must have minimum of 3 and maximum of 8 Member Schools (Type 1) and 10 or less Member Schools (Type 2) combined, and have Member School (Type 1) entering wide-area network; (b) Must clearly state the nature of network as region-based or technology-based; (c) With Administrative School as base, the network must have collaborative system to plan network events; (d) Administrative School must be able to propose and carry out network events which can benefit Member Schools (Type 1) and the society through annual business plan. (e) Must be capable to provide indirect assistance to IP Advisors who are limited by time and region such that there is a proper environment to conduct wide-area network events. 3. Entry requirement for Member Schools (Type 1) (a) Must include in the university’s policy that they will become a Member School (Type 1) in the network and provide assistance to IP Advisors accordingly; (b) IP management and IP utilization system must be clearly implemented; (c) must clearly state the scope of responsibility in relation to the collaboration with the Administration School; (d) Propose and carry out an annual business plan which can improve IP management and utilization system to a certain level on their own; and (e) Has the facility to allow IP Advisors to provide assistance and service. 4. Entry requirement for Member Schools (Type 2) (a) Must include in the university’s policy that they will become a Member School (Type 2); (b) Same as paragraph F(3)(b) in this article; and (c) Same as paragraph F(3)(c) in this article. G. Current status quo The original aim was to establish the initial IP Advisors Program to assist with university’s IP management system by dispatching IP Advisors to 60 and more universities from 2002 to March 2011. The current wide-area university network IP Advisors Program started on April 2011. Since then, JIII has dispatched IP Advisors to 8 wide-area networks. In addition, IP Advisors have also been dispatched to wide-area network with art and design colleges/universities. During year 2011, IP Advisors has achieved and completed several IP management policies as follows: 7 IP policies, 3 academia-industry collaboration policies, 2 conflicting interest policies and 2 collaborative research policies etc. Recommendation This article is based on a legal perspective view point, taking Japan’s IP Advisors Program as a reference to provide the following recommendations on the topic of network for academia-industry collaboration in Taiwan. A. Separate levels of collaboration base on needs Using Japan’s policy as an example, universities within the wide-area network require different content of services tailored to each university individually, and the universities can be categorized into two types of member schools based to the content of services. Accordingly, it is recommended that the Government should consider a similar approach to the Japan’s policy when establishing IP management alliance and forming network of IP management system. For instance, design different levels of content and collaboration, and thus expand collaboration targets to gradually include major legal research institute, technology transfer centre for universities, and IP services in northern, center and southern area of Taiwan. This will allow collaboration of these organizations to coordinate IP programs such as IP northern, application and utilization with ease. B. Emphasis on the idea of establishing and maintaining IP basic facilities Based on Japan’s past experience, it is recommended that before expanding IP Advisors related policy to solve regional IP problems, universities must first be assisted to improve their own IP management system, which has taken Japan almost 10 years to improve their universities’ IP management system. From the current IP management system policy, it can be observed that the establishment of IP management system has a certain relevant importance. Furthermore, there is an emphasis on IP Advisors’ experience in training IP managers. Accordingly, it is recommended that the Government in future planning of network IP collaborate system should set short term and long term goal flexibly, such that the basic IP facilities within the members of the network can develop continuously. For example, short term goal for a legal research institute can be growing to a certain size for it to adjust or implement IP related policies. As for longer term goal, it can be a requirement to set up a unit or department to operate and manage IP. C. Expanding the definition of ‘Networks” Taiwan and Japan are high populated country on an island with limited land. Thus, if Taiwan and Japan insist on maintaining the geographic position for networking concept and adopting such concept on the regional economics for cluster effects, then it is difficult for Taiwan and Japan to compete with American Silicon Valley or other overseas universities. In light of the above, on establishing network of IP collaborative system, the Government should take reference from Japan’s practice in 2012 and combine same industry such as medicine industry or art industry in the definition of network. This will accelerate the integration of IP experience, information, and operation management capability within the network of same industry. Conclusion In conclusion, in order to establish academia-industry IP collaboration system and efficiently improve Taiwan’s IP management system in research organizations, first must focus on various policies tailored for different levels of collaboration so that it can be integrated and expand the integration of IP resources such that there is a good foundation to develop IP basic facilities. Following the establishment of good IP foundation, it can then be further develop to more complex IP programs such as IP landscape, planning and strategizing etc.