GUIDELINES ON THE MANAGEMENT AND IMPLEMENTATION

OF INTELLECTUAL PROPERTY RIGHTS

Industrial Technology Research Institute

Hsinchu, Taiwan, Republic of China

PREAMBLE

This guideline is promulgated to declare the management and implementation policies of the intellectual property rights (IPRs) of the Industrial Technology Research Institute.

The IPRs as provided in this Guidelines comprise of any and all types of IPRs produced or obtained by the Industrial Technology Research Institute (ITRI), its employees (including those commissioned on a fixed-term basis) and non-ITRI personnel participated in the research project sponsored by ITRI.

II.

BRIEF INTRODUCTION OF IPRS IN THE REPUBLIC OF CHINA

IPRs comprise of patents, copyrights, trademarks, integrated circuit rights, trade secrets and other intangible intellectual property.

Definition, acquisition and term of protection:

(a)

Patent —

(1)

Definition: The exclusive right granted by the state to the owner of invention or creation, which comprises:

Invention patent: An invention patent refers to the high degree of creation or invention by using the technological ideas based upon certain rule(s) of nature. For example, a camera without the need or use of negative films;
Design patent: A design patent refers to the creation or improvement to the shape, structure or device of a certain object. For example, an ultra-sensitive focusing device within a camera; and
Utility model: A utility model (or petite patent) refers to the creation of a certain shape, pattern, color, or the combination thereof to an object. For example, a camera with the shape of an aerodynamic outline.

(2)

Acquisition: Granted by the Intellectual Property Office (IPO) through the filing of a patent petition (or prosecution).

(3)

Terms:

Invention patent: Twenty years since the date of filing.
Design patent: Twelve years since the date of filing.
Utility model: Twelve years since the date of filing.

(b)

(1)

Definition: The exclusive right granted by the state to the owner of literary, scientific, artistic or other academic creation, which comprises:

Moral right: The moral right aspect of a copyright refers to the right of publication, attribution and integrity of a work; and
Property right: The property right aspect of a copyright refers to the right of reproduction, public performance, public exhibition, right of alteration, right of adaptation and rental right.

(2)

Acquisition: Granted as a matter of course. For Republic of China nationals, at the time of the work’s completion; for foreign nationals, at the time of the work’s publication that fulfills certain conditions. No registration or recordation is necessary.

(3)

Terms:

Moral right: Perpetual.
Property rights:
a. Generally — Life of the author plus fifty years.
b. Works by pseudonyms, acronyms, or legal entities; photographic works, audio-visual works, phonoreocrd (sound recording), and computer software and performances: Fifty years since publication.

(c)

Trademark Right —

(1)	Definition: The exclusive right granted by the state to the registrant or owner of a mark, logo, or symbol used as an indication of the goods or services it represents.
(2)	Acquisition: Granted by the Intellectual Property Office (IPO) through the filing of a trademark petition (or prosecution).
(3)	Terms: Ten years commencing from the date of registration, may be renewed for unlimited times with the term of ten year for each renewal.

(d)

Integrated Circuits Layout (Topographies) Right —

(1)	Definition: The exclusive right granted by the state to the integrated circuit layouts (or mask works) which comprises the electronic circuitry units and the second or third dimensional design that connects the circuitry units. “Integrated circuit” means the product or semi-product that functions as an electronic circuitry which comprises integrated electronic transistors, capacitors or other electronic units and the connecting circuitry thereof on or within certain semi-conducting materials.
(2)	Acquisition: Granted by the Intellectual Property Office (IPO) upon the filing of a registration petition.
(3)	Term: Ten years commencing from the date of registration or first commercial use (whichever is earlier).

(e)

Trade Secrets —

(1)

Definition: The exclusive right granted by the state to a method, technique, manufacturing process, formula, program, design or any information that can be used to manufacture, sell, distribute or manage, provided, that the information meet the following criteria:

That it is not generally known by those in the art or field (secrecy);
That it possesses certain realistic or potential economic value due to that secrecy; and
That the owner of the information has taken reasonable measures to safeguard its secrecy.

(2)

Acquisition: No registration is needed.

(3)

Term: Protectable as long as the information is kept secrecy, possesses economic value and reasonable measures have been taken to guard its secrecy. Protection ends when any of the pre-requisites is not met.

III.

BASIC POLICY ON THE MANAGEMENT AND IMPLEMENTATION OF IPRS

ITRI pays particular emphasis on and respects IPRs, either developed by it or by others.

The top concern for research, development, or the introduction of technologies is not to infringe other’s IPRs.

As a matter of principle, ITRI’s IPRs shall be actively licensed and be used by industrial entities.

IV.

OWNERSHIP OF IPRS: THE PRINCIPLE

As a matter of principal, ITRI will make prior arrangements with its employees and cooperative industrial entities concerning IPR ownership so as to avoid unnecessary dispute.

Between ITRI and its employees:

(a)

ITRI owns any and all IPRs that involve the inventions, creations, or trade secrets generated by the employee(s) of ITRI in the course of the employment (work-made-for- hire);

(b)

ITRI may license or use any and all inventions, creations, or trade secrets generated by its employee(s) through the use of its resources or experiences.

In the event ITRI commissions others or is commissioned by others to engage in cooperative research and development of technologies, ownership of IPRs derived from those research and development projects shall be determined by the respective [cooperation] contract.

If and when co-ownership is necessary, the rights and obligations of each co-owner shall be clearly and specifically stipulated.

In principal, ITRI shall acquire the right to re-license to several industrial entities so as to accomplish its objective of assisting or transferring technology to the private sector.

PRINCIPLES ON IPR PROSECUTION/APPLICATION

All personnel participated in the research projects of ITRI must truthfully fill out their research logs in accordance with the regulations of ITRI or their contracts with ITRI, as well as disclose all invention or creation to ITRI.

ITRI will promptly process the IPR prosecution when determined that such protection is necessary. The inventor(s) or creator(s) shall have the duty to assist its related process, such as filing applications or making responses once the filing is proceeded.

There shall be an assessment process conducted prior to the actual patent prosecution is pursued. In addition to the legal requirements of patent law and the best mode, the assessment process shall take into consideration other factors, such as the prospect of commercialization of the research result.

Prior approval from authorized superior officials is required before the disclosure of [any] creation or publication of research results. Any patentable invention or creation shall first complete its patent prosecution.

Trademark prosecution shall be conducted at least nine months prior to its intended use. No use is permitted prior to the completion of registration and the certificate of trademark is awarded.

VI.

PRINCIPLES ON IPR MAINTENANCE

All ITRI employees shall maintain their duty not to disclose any plans, documents, or charts that have been classified by ITRI. Violators shall be prosecuted and be held liable under the applicable civil, criminal, and special law statutes. Any employee who because of his/her negligence discloses classified information or learns of disclosure of classified information by other party shall notify proper authority within ITRI immediately. Termination of employment contract does not invalidate the duties of non-disclosure and report.

All ITRI employees must seek prior approval and abide by related laws and regulations concerning IPRs before assuming any other position, engaging in any other duty or accepting any financial assistance from outside sources.

Prior to departing their positions, all ITRI employees must return documents and information in their possession concerning ITRI’s trade secrets and seek confirmation from their respective authorities for such submission.

All employees who have knowledge or access to critical secrets or intellectual property information of ITRI shall be requested to sign a severance memorandum at the time their employment terminates. They will also be asked to urge their new employers not to take any action that may infringe on ITRI’s trade secrets (duty of non-disclosure).

Unless otherwise with written agreement from ITRI, no ITRI employees may use any information classified by ITRI to engage in any business or operation, either for self or for others, that is likely to be detrimental to the rights of ITRI within two years since the termination of his/her employment with ITRI (duty of non-competition).

ITRI will pursue civil and criminal liabilities against any ITRI employee who breaches the duty of non-disclosure or anyone within or without ITRI who infringes upon its IPRs.

All products or results that contain IPRs must have such rights properly labeled on their respective products, packaging, or related technical documents to avoid the negative impact of their rights or cause of action for damages.

VII.

PRINCIPLES ON IPR IMPLEMENTATION

ITRI’s IPRs are subject to timely licensing to the industrial entities and to be used by the latter. When necessary, ITRI may also engage in cross-licensing arrangement with foreign entities/firms to benefit domestic firms.

In principal, the implementation of ITRI’s IPRs shall be conducted through licensing arrangement. Other methods for the assignment or transfer of IPRs must receive prior approval from the proper authority in addition to abiding by the regulations provided in this Guideline. Prior approval is required for the licensing of ITRI’s trademark on certain products.

In principal, ITRI’s IPRs licensing arrangement shall be non-exclusive. No exclusive licensing arrangement can be made without prior approval by proper authority.

In order to demonstrate the result of IPR implementation, fees (or royalties) shall be levied and calculated separately with respect to IPR licensing and technology transfer.

It shall be the duty of the inventor(s) or creator(s) in ITRI to assist the promotion and implementation of the invented or created product(s) and the related IPRs.

Any and all trademarks used by different units within ITRI shall in principal tie to ITRI’s general trademark in the effort of establishing ITRI’s enterprise-identification system.

VIII.

PRINCIPLES ON IPR INFRINGEMENT PREVENTION

Prevention for infirnging other’s trade secrets:

(a)

ITRI maintains that all activities pertinent to technology transfer must be conducted through legitimate means. All such activities will to the best be expressed and preserved in written documents and be safeguarded.

(b)

ITRI in principal shall engage in technology transfer activities with the owner of that technology or the owner’s duly authorized agent. Before engaging in technology transfer arrangements with an agent, ITRI shall take precautionary measures to verify and ensure the credibility of that agent.

(c)

ITRI shall document and itemize all information received, confidential or non-confidential, and enter into a contract with the deliverer of the information.

(d)

In the event the information delivered is susceptible of being obtained through illegal means, ITRI shall immediately stop using the information, withhold any further disclosure and transfer the matter to the Technology Transfer and Service Center for further proceedings.

(e)

ITRI respects other’s trade secrets and shall remind all foreign consultants, experts or technical personnel under its commission to refrain from disclosing any trade secrets from their former employers at the time they are appointed.

(f)

All ITRI employees must certify that they have not breached and will not breach their duties of non-competition and non-disclosure, if any, that they have with their former employers. ITRI shall from time to time explore and verify the scope of such duties with their former employers.

Prevention for infringing other IPRs:

(a)

ITRI shall always conduct reasonable patent search and safeguard related materials prior to engaging in technological research project so to avoid the infringement of other’s patent rights.

(b)

ITRI shall always conduct trademark search prior to the use of any mark so to avoid the infringement of other’s trademark rights.

(c)

ITRI prohibits its employees from the use of any illegal computer software and shall abide by all legal restrictions stipulated by the licensing agreements of the software or databases.

For research and development results that do infringement other’s IPRs:

In the event ITRI is commissioned or engaged in cooperative research and development projects with other parties, ITRI shall in principal take full responsibility for tort liabilities resulted from its intentional or negligent infringement.

IX.

PRINCIPLES ON IPR MAINTENANCE AND ABANDONMENT

Annual payments [or fees] shall be paid on time to maintain those patents that need to be maintained.

Each and every patent right held by ITRI shall subject to at least one assessment review by the related department to determine the necessity of its continuous maintenance.

Public notice shall be made within ITRI concerning patents intended to be abandoned, having [first] agreed upon by the authorized officials of each unit. Without objection and subject to the approval of the President, such abandonment and alienation shall be publicized to the general public. If and when no one requests for the transfer or alienation of rights, subject to the approval of the President and authorized officials of each unit, payment of annual fees shall be halted immediately.

PRINCIPLE ON IPR AWARDS

For the purposes of encouraging its employees to disclose their inventions or creations and to apply for and utilize the patent(s) therefrom, ITRI has promulgated a Measure on Patent Rewards:

(a)

Different categories and levels of monetary awards shall be provided to the iinventor(s) or creator(s) when the request for the filing of patent application(s) is approved by the proper authority within ITRI and successfully prosecuted subsequently.

(b)

For any individual application that receives the grant of a patent certificate, the inventor(s) or creator(s) shall be awarded with the bestowing of a commemorative plaque (or certificate) and monetary prize based upon the category of the invention or creation.

(c)

On an annual basis, inventor(s) or creator(s) and those who contribute to the implementation [or commercialization] of a patent shall receive proportioned monetary awards based upon the direct financial benefits gained by ITRI through the implementation, licensing or transfer of the patent right(s) during the effective duration of the patent term.

(d)

Dependent upon individual circumstances, ITRI shall provide monetary prizes to those who discover and report any patent infringement which results in the mitigation or reward of damages.

(e)

The awards and prizes provided herein will nevertheless be granted to former employees within three years of the termination of their employment with ITRI.

Other reward measures:

(a)

As an encouragement, those who scored excellent performance grades shall receive a cash award appropriated from the annual operation revenue.

(b)

In addition to cash awards, ITRI has promulgated a “Promotion and Service Award,” “Result Contribution Award,” among other things, to recommend [and reward] teams and individuals who have achieved merits in the implementation of [technology] results.

XI.

PRINCIPLES ON IPR EDUCATION

Policy on internal education: ITRI pays particular emphasis on the protection of IPR. In addition to strengthen its training for professional staff, ITRI also sponsors training programs for its general staff. Such programs are divided into two categories, regular and ad hoc education. Regular programs comprise orientation for new employees and the annual Intellectual Property Week activities; ad hoc programs are conducted in light of related legislative reform or major incidents or development concerning IPR.

Policy on external education: As a non-profit organization, ITRI maintains certain social responsibilities to the enterprises, the society and the state. In addition to engaging in technology research, development and transfer, ITRI is pleased to share with all sectors its knowledge and experience s in the management of IPRs.

XII.

PRINCIPLES ON IPR ADMINISTRATION

The president of ITRI is the highest authority concerning ITRI’s management and operations of IPRs.

The Technology Transfer and Service Center is charged with the responsibility of coordinating IPR strategies, prosecution, registration, recordation, maintenance, protection and other IPR operations concerning ITRI as a whole. Related projects’ chief investigators and promotional division within each ITRI unit shall be responsible for the licensing, and transfer of rights (alienation) of that unit. The investment division of each unit shall be responsible for the control and maintenance of confidential information in that unit.