A Study on Exercising Academic-Industry Collaboration Patent Rights

• Main Authors: Yu-Lun Hsu, 許愈綸
• Other Authors: none
• Format: Others
• Language: zh-TW
• Published: 2011
• Online Access: http://ndltd.ncl.edu.tw/handle/19919998309803079992

碩士 === 逢甲大學 === 財經法律研究所 === 99 === Since the U.S. Bayh-Dole Act was enacted, how to bring the advantages of academic-industry collaboration into right track and to promote national progress and development has become an important issue worldwide. In Taiwan, after the enactment of “Fundamental Science and Technology Act”, the development and research facility and partners are able to possess the academic-industry collaboration output patents via legal and practical approaches. The annual output of academic-industry collaboration projects is also considered fruitful. However, compared with the popular of patent litigation in the United States, Taiwan''s academic-industry collaboration output patents are still like a toddler when referring to effective claim or powerful lawsuit in practice. Under such a circumstance, herewith I propose the following ideas to enhance the efficiency of academic-industry collaboration system in Taiwan. 1.Certain clauses are seem to be inappropriate according to the “Industry-Academic Cooperation Manual” published by the Ministry of Education, and conflict with the by the Ministry agreement itself. Thus, minor adjustment is necessary to make it more complete. Additionally, research institutions may be granted as an assistant position in third-party litigation, so that a partnership between manufacturers and research institutions is possible in the litigation against infringements. If such system works, the energy academic-industry collaboration patent will increase. 2.Most of the inventors in academic-industry collaborations are university teachers, but the Fundamental Science and Technology Act excludes individuals the right to own their academic-industry collaboration results, so that no inventor can own their IPR in any academic-industry collaboration. To avoid such unreasonable limitation, legislative policy should be changed to consider the possibility of acquiring academic-industry collaboration patents by the inventors, or at least provide a flexible scheme for the inventors to repurchase their own patents. 3.There is no clear definition for exclusive or non- exclusive license in the Patent Act. Patent rights have both practicing and excluding characteristics, but it seems to be no conclusion to whether the practicing and excluding rights can be licensed separately. In order to obtain a unified view or to protect the involving parties, the term of exclusive license should be defined in details in the Patent Act. 4.Patent rights are regarded as non-physical property rights, with the characteristics of quasi-property. Specific property-owners have first refusal right; to simplify the part-ownership of patent right, legislative policy should be considered to grant the first refusal right for patent co-owners. 5.There is not any compulsory regulation as to the lowest royalty percentage which the inventors could earn in the academic-industry collaboration projects. In order to protect rights and interest of the inventors, to add such clauses to set a minimum percentage of royalty provisions will be better. 6.Because of the lacking assignment and license intermediary organizations in Taiwan, the energy of academic-industry collaboration has not been fully inspired. In my view, the authorities concerned should consider setting up one, or lead the establishment of IPR intermediary organizations, or guide the transformation of existing institutions, to enhance the external claim capabilities of academic-industry collaboration projects in Taiwan.