Viewpoint | Intellectual property risk control in procurement

Published:

2023-01-30

Preamble When the low-end competition is transformed into low-efficiency and low-end homogenization, people gradually realize that relying on knowledge innovation, technological innovation and institutional innovation to obtain high quality and high returns is the inevitable trend of the healthy development of enterprises in the future. On the other hand, knowledge innovation, technological innovation and institutional innovation depend on the standardized intellectual property asset management of enterprises, so as to control import and export risks and control the innovation achievements reasonably and strictly. One of the basic purposes of intellectual property asset management is to provide credible information when disputes occur, but it is difficult to achieve this purpose only by the framework management of intellectual property rights, and fine management is an inevitable requirement to achieve this purpose. This paper briefly describes the scope of intellectual property risk control in the procurement process, in order to attract people's attention to the fine management of intellectual property rights. Common Intellectual Property Risk Control Methods in 1. Procurement 1. Intellectual property security clauses Intellectual property security here does not refer to the subject matter of a security, but stems from article 42 of the United Nations Convention on Contracts for the International Sale of Goods, which stipulates that the goods delivered by the seller must be a third party that cannot raise any rights or claims under industrial or other intellectual property rights. The provision looks more like a promise, which can be an obligation of the seller or a condition for the modification or termination of the contract. 2. Licensing terms of intellectual property rights held by the supplier or obligated to third parties The goods or services supplied by the supplier may involve intellectual property rights that it holds or is obligated to third parties. If not expressly agreed, the buyer's products or services may be involved in disputes in the subsequent implementation. At present, the seller's express license clause is generally agreed in the procurement contract, and the license period and scope of the relevant intellectual property rights are clearly agreed. Problems with 2. traditional framework provisions 1. Single service For example, the main manifestation and content of intellectual property guarantee clauses are the obligations of the seller to the buyer, and the implementation of intellectual property has obvious duality. On the one hand, the traditional framework clauses are difficult to cover the rights and obligations of the buyers and sellers, and are easy to cause disputes in the process of contract performance; on the other hand, the relative ambiguity of the framework clauses cannot clarify the type and list of rights, this makes in-depth information and in-depth cooperation based on intellectual property rights uncertain. 2. Omission of trade secrets The right to trade secrets depends on the standardized and credible management of trade secret assets, and the traditional framework provisions lack the provisions for the right to trade secrets. The omission of trade secrets also means that all parties to the sale and purchase may lack the standardized management of trade secret assets, which makes the relevant trade secrets inappropriate disclosure, and ultimately makes the information that should have become trade secrets lose its trade secret attributes. 3. The loopholes in the framework provisions themselves are large. Although both trademark law and patent law, for example, provide that the buyer can use the legal source rule to defend under certain conditions when an infringement occurs, the legal source defense has relatively strict applicable conditions, and the legal source defense, such as copyright, does not provide for the legal source defense. Even if it can be defended from a legitimate source, the buyer may suffer some losses, some of which may not be claimed against the seller on the basis of traditional framework terms. 4. Relative Ambiguity The relative ambiguity of traditional framework clauses will bring many problems, such as the aforementioned "express license clause", which will enable the buyer to obtain some rights to defend against the seller, but the products or services under the contract may carry intellectual property rights that are obligated to third parties, and one of the obvious characteristics of intellectual property rights is that some intellectual property rights cannot be sub-licensed or can be sub-licensed but lacks sub-licensing agreements or clauses. "Partial rights" means that in some cases, when the infringement occurs, the buyer may not be able to use the contract defense at all, such as the technical scheme formed by the structure of the accessories supplied by the seller in the buyer's products, which may be foreseeable based on the function of the corresponding accessories, or may be provided by the seller exclusively according to the buyer's requirements, there may also be adaptive solutions proposed by buyers and sellers based on given needs, and so on. The dispute over the infringement of intellectual property rights caused by the implementation of the technical scheme may cause a greater dispute on the liability of the buyer and the seller. Refined Management of Intellectual Property Available in 3. Procurement 1. Information Inventory 1) Business Information It includes two aspects of information, one is the supplier's qualification reputation, supplier list, supplier contact information, and qualified supplier list, and the other is procurement plan information, including procurement plan, procurement budget, procurement specifications, procurement quantity, procurement method, interaction information, etc. These two aspects of information for ease of description collectively referred to as procurement information, procurement information belongs to the first-hand information, to meet the three conditions of trade secrets can be used as the object of trade secret protection. The information that is more suitable as a trade secret is in-depth information, which includes the information accumulated through long-term cooperation with the corresponding suppliers, as well as the information deeply integrated through the integration of the accumulated information and procurement information, mainly the supplier evaluation information, such as the supplier's performance ability, reputation, the quality of the supplied products and the agreed quality standards, and the degree of cooperation with the party. Both first-hand information and in-depth information may be used as the object of trade secret protection. In more situations, the first-hand information may be the information that the buyer and the seller have mutual confidentiality obligations, such as the agreed purchase unit price. For the seller, the reason why it is secret is that once it is disclosed, its bargaining space may be reduced; for the buyer, there is also the problem of bargaining space reduction, the difference lies in which party has a higher dominant role in the sale. For example, the seller is a small company and the buyer is a large company, and there is a high probability that the pricing power will be on the side of the large company, that is, the buyer's side. Therefore, the seller may need to supply the buyer at a special preferential price, which is information that the seller is unwilling to disclose and has confidential value. However, for the buyer, it may use the aforementioned special preferential price as a basis and bargaining chip for negotiations with other suppliers, under which the price information is a trade secret for the seller and is expected to be agreed in the procurement contract formed with the buyer. Some of the information in the first-hand information belongs to the buyer's proprietary information, such as procurement plans, procurement budgets, etc., which are of great value to both competitors and potential suppliers, and therefore need to be managed with the help of the buyer's norms to make this information confidential and secret. 2) Patent information Copyright, trademark rights and patent rights are similar, relatively speaking, the type of patent information is relatively more complex, here on the patent information inventory to explain, copyright and trademark rights related information can refer to the inventory of patent information inventory. The first type of information in patent information is information that can be requested directly from suppliers, including a list of patents (patent patent application rights), patent-related license or benefit documents, patent-related burdens (guarantees, securities interests, mortgages, etc.), patented products and services, patent implementation license information, and patent disputes involved. This information can also be collectively referred to as commitment information, such information will also affect the evaluation of the seller's integrity, there is a certain nature of the guarantee. The second type of information in patent information is shallow information, which can be obtained intuitively in a relatively simple way with the help of the first type of information. Generally, the integrity information of ownership can be determined through retrieval and capture according to the first type of information, and the information such as patent list, specific licensed information, inventor group, patent classification number and technical field, invalid patent list and reason that the seller should provide but not provide can be filled in. The third type of information in patent information is quasi-depth information, which is mainly based on, for example, the number of inventors in the inventor group, the change of the inventor based on the chronological order, the number of inventors in each patent, etc. to evaluate the seller's research and development capability, research and development continuity and other evaluation information. The fourth type of information in patent information is depth information, for example, through the analysis of all patents and patent applications of the seller, the evaluation of the seller's technical iteration, etc. There is also a kind of information, the acquisition of which depends on the seller's willingness to cooperate. It mainly involves whether the implementation of patents involved in the sale of products depends on non-free technologies, whether the seller or its affiliated enterprises have more advanced technologies, etc. Although this kind of information can be obtained through patent analysis, it lacks verifiability, and the reference value of this kind of information obtained through analysis is relatively low. 3) Collection of information on the special needs of the buyer The "special needs" are described here by way of example. For example, the purchased object is software, which requires a correct understanding of the nature of the purchased software. The so-called purchase of software is actually not a transfer of ownership of a specific object, but a special license of the software. In other words, when we purchase software, we actually pay a certain license fee for the use of the software. The license will involve the scope of the license. If the buyer purchases a large number of software sets, it is recommended that the buyer sign a separate license contract with the seller when purchasing the software, or draw up license terms in the purchase contract to clarify the scope of the license. If the software needs to be used in an affiliated company, the scope of the license must include the affiliated company. The reason is that the software supplier can capture the usage information of the software through means such as background data and Telnet remote forensics, and then match the authorized customer list. If the corresponding company is not matched in the customer list, the software supplier may initiate infringement charges against the aforementioned affiliated company. Unfortunately, it is limited by the "license scope, the use of affiliated companies has a greater risk of being identified as infringement. Whether the" use "as one of the prerequisites can be evaluated as exhaustion of rights is itself very controversial. Even if it is not finally found to be an infringement or a settlement is made before the court, the loss of time and manpower of the buyer is inevitable. There are similar problems with patents and trademarks, such as a patented technology, which may have more implementation licenses, and each implementation license has, for example, geographical restrictions, at which point the procurement contract for the corresponding patented product requires a special agreement on the exhaustion of rights. 2. Information analysis and verification The content of information analysis has been partially described in the information inventory section above, and some information analysis and verification are further described below: 1) Qualification reputation and performance ability, etc. Qualification reputation and performance ability can be partially determined through the analysis of inventory information, for example, the external wall with composite insulation board, etc. often need to be on-site inspection of the supplier's production capacity in order to relatively accurately determine the seller's performance ability. Again such as asphalt, each batch of asphalt, such as softening point, needle penetration, wax content, ductility, etc. are consistent or basically consistent, used to evaluate product quality and seller reputation. Qualifications and reputation can be evaluated simply through, for example, enterprise search, adjudication document network, and even Baidu search, while in-depth evaluation is a specific evaluation of the seller's behavior during the cooperation period. As mentioned earlier, for example, the ability to perform is often obtained at a greater cost and has the potential value of a trade secret. 2) Comprehensive evaluation of inventory information For example, the supplier list and the degree of matching of the initially identified performance with the procurement plan, budget table, procurement specifications, quantity, delivery time, etc., to evaluate the relative stability and replaceability of suppliers, and the complementarity of suppliers in the list. This will also involve the buyer's trade secrets, unregulated, will also lead to the loss of competitive advantage. 3) Regular assessment and supervision Regular assessment and supervision is the specific verification of the first two information analysis to eliminate inappropriate suppliers. The assessment information obtained can also be used as the object of trade secret protection. The main purpose of regular assessment and supervision is to avoid the risk of information asymmetry, that is, not only to listen to what they say, but also to see how they do, so as to determine the disposal of the relevant suppliers. 4) Information integration Through the above three items, the basic data and disposal method (A) required for a smaller range of PDCA(P-plan, D-execution, C- inspection, A- processing) cycle can be met, but it is not enough. For example, the evaluation methods required in the inspection process, such as the quality standards of products supplied by different suppliers, the return and exchange process, etc., often need to be matched with the basic data, on the one hand, the basic data can be changed positively through communication with suppliers, and on the other hand, quality standards can be adjusted, for example. Similarly, quality standards are directly related to purchase plans, budget tables, etc. As buyers cannot take it for granted to use the price of, for example, 50 yuan to purchase goods in 100 yuan, adjusting quality standards is sometimes the right choice. Therefore, information integration is more represented here as information matching. Information integration will produce intellectual property conflicts more often, because products loaded with intellectual property rights often have higher unit prices, but they may not be replaced by risk-free products. Information integration can include more in-depth information analysis, such as patent infringement risk analysis, substitutability analysis, etc. As the buyer may expect to use a lower purchase unit price to obtain a product of comparable quality, there may be a risk that the subjective element of "do not know and should not know" in the "legitimate source" defense, the outrageous substitute product with a low unit price can directly deny the goodwill of the accused infringing party, and it is difficult to obtain support in the legitimate source defense, there may even be punitive damages for obvious "bad faith. Also because the buyer knew or should have known that the product purchased was an infringing product or a counterfeit product, the alleged infringer, as the buyer, would not be able to claim the full loss against the seller because of the existence of an intellectual property security clause or agreement with the seller, but would be more likely to be at risk. Therefore, the integration or matching of information to give the party an advantageous position can also effectively avoid the risk of infringement claims or damages. 3. System The system is a necessary condition for the standardized management of intellectual property rights, but also a necessary condition for the fine management of intellectual property rights, for the buyer to trade secrets, for example, should at least establish the procurement information confidentiality management process, procurement information confidentiality management system, as well as the appropriate procurement information confidentiality agreement. As a component of fine management, for example, the procurement information confidentiality management process at least covers the procurement plan confidentiality process, procurement price confidentiality process, supplier information confidentiality process, etc. Conclusion In view of the fine management of intellectual property rights and the management object should have a good adaptability, through the PDCA cycle of continuous correction, therefore, the specific way of fine management of intellectual property rights should be adapted to the specific situation of enterprises, need to fully investigate the relevant enterprises, and need a relatively long time of continuous adjustment to operate reliably. This paper is an exemplary description of the enterprise intellectual property standard management system, if the intellectual property litigation is the terminal of the operation of the intellectual property, then the enterprise intellectual property standard management system is the background of the operation of the intellectual property, a single fine.

Key words: