Newsletter
DRAFT GUIDELINES FOR THE SCIENCE AND TECHNOLOGY ACT
The National Science Council of the Executive Yuan recently approved a draft of the Guidelines for the Ownership and Use of Results of Scientific and Technological Research and Development of the Executive Yuan and its agencies (the Guidelines). The draft will be sent to the Executive Yuan for consideration with expectation that it will be implemented next year. The Guidelines are intended to implement intellectual property provisions of the recently- enacted Basic Law for the Science and Technology Act (the Basic Law). The main contents of the Guidelines are as follows:
Ownership of the results of research and development
The results of scientific and technological research and development which was subsidized, commissioned or paid for by the Executive Yuan or one of its agencies should belong entirely or in part, or should be licensed to, the research organization or enterprise performing the research and development except under the following circumstances. The rights and obligations of the parties should be stipulated in the contract which funds the research and development.
The competent authority (the Executive Yuan or one of its agencies which entered into a funding contract with the research organization or enterprise) may determine that the results of the research and development belong to the state. Such decision should be based on fairness and benefit, the proportion and contribution of capital and labor, the characteristics of the results of the scientific and technological research and development, the potential for use, the benefit for society, national security considerations and the impact on the market. State ownership of the results of research and development should fulfill the intent, policy or goals of the Basic Law.
Rights retained by the competent authority
The competent authority retains the global, non-exclusive, free-of-charge rights to put into effect and use the results of the research and development regardless of their ownership; provided, however, that it may not transfer these rights to a third party.
Obligations of research organizations or enterprises
When necessary, the competent authority may require research organizations and enterprises to report on the production and use of the results of research and development. Research organizations and enterprises must take necessary measures for the acquisition, safeguarding and security of the related rights of the results of the research and development, and promote the effective use of the same.
International cooperation
Ownership, use and related rights and obligations of results of research and development produced through international cooperation by the Executive Yuan, its agencies or research organizations of those agencies using government funds should be determined by contract between the parties.
Transfer of results of research and development
Except when the competent authority provides otherwise, research organizations or enterprises may transfer results of research and development obtained according to the Guidelines. The obligations of the transferee should be regulated in the funding contract.
Use of results of research and development
Licenses by research organizations of the results of research and development must be based on the following principles; provided, however, that licenses may be granted on other terms to better fulfill the intent, policy or goals of the Basic Law:
Fairness and openness.
Compensatory.
ROC juridical persons have priority.
The license is to be performed in the area under the control of the ROC.
Right of Interference
The competent authority on its own initiative or acting on a request may require the research organization or enterprise, when the results of the research and development are in use, to license the same, and, when necessary, to nationalize the same under the following conditions:
In the absence of an appropriate reason, the research organization or enterprises, or its assignee or exclusive licensee does not make effective use of the results of the research and development.
The research organization or enterprise, or its assignee or licensee cannot meet or conform to environmental protection, public safety or public health requirements.
To advance significant national interests.
Principles for the use of state-owned results of research and development
State-owned results of research and development means those obtained by the Executive Yuan, its agencies or research organizations of those agencies according to the Guidelines. Licensing of state-owned results of research and development should be made according to the following principles; provided, however, that licenses may be granted on other terms to better fulfill the intent, policy or goals of the Basic Law:
Fairness and openness.
Compensatory.
ROC juridical persons have priority.
The license is to be performed in the area under the control of the ROC.
Economic benefits of licensing of state-owned results of research and development
The economic benefits for the licensing of the state-owned results of research and development should be realized according to the following methods:
Obtaining stock ownership through the contribution of the results of research and development.
Obtaining royalty fees or other benefits.
Obtaining other economic benefits with the approval of the competent authority.
Exclusive licensing of state-owned results of research and development
Licensing of the state-owned results of research and development should in principle be on a non-exclusive basis; provided, however, that an exclusive license may be granted if one of the following conditions is met. (In principle, exclusive licenses should not exceed five years.):
Products of research and development or products using manufacturing techniques derived from research and development require a long period of government approval before they can be put on the market.
A licensee must make additional large investments or provide significant technology in order to commercialize the results of the research and development.
The maximum benefit of the results of the research and development cannot be achieved under a non-exclusive license.
An exclusive license fulfills the maximum benefit to national economic development and the public interest.
Restrictions on further licenses of state-owned results of research and development
Licensees of state-owned results of research and development may not sub-license their rights to third parties without the consent of the competent authority.
International Cross-Licensing
Under the following conditions, the competent authority may cross-license state-owned results of research and development to government agencies, organizations or enterprises of other countries or regions:
The principle of reciprocal treatment is not violated.
The technology obtained through the cross-licensing is beneficial to upgrading the ROC's level of science and technology or advances the national interest.