SOME KEY ISSUES FOR CONSIDERATION IN A NATIONAL IP STRATEGY

PART SIX – IP Policy for R&D Institutions and Universities

OGADA TOM

Innovation and Technology Management ServicesT&P

WIPO Asia Pacific Conference on National IP Strategies and Development, October 27 and 28, 2009, Manila,

Philippines

Content of Presentation

IP Politics

Stakeholders

Need for IP Policies in Universities

Key Issues covered by IP Policy

Conclusion

1. IP Politics

2. Objectives of IP Policy

Harmonize conflicting interest on various stakeholders Promote creation, protection and commercialization of IP Assets Ensure equitable distribution of the commercial results of R&D Encourage and reward RTO staff for innovation and creativity Provide environment for dissemination of R&D products for the benefit of the society

3. The stakeholders

UniversitiesInventors

ResearcherStudents and research assistantGuest researchers

Sponsor IndustryCollaboratorsGovernment PublicRTOsNational IP Offices

4. University and R&D institutions as a key stakeholder

RTO is a key stakeholder since it provides

R&D InfrastructureSalaryGoodwill

RTO has a say on the generation, protection and commercialization of IP generated using university recourses

5. The Inventor as a key stakeholder

Develops proposals and Sources for R&D funds

Undertakes R&D

Intellectual inputs

Inventor requires

Adequate recognition and reward for intellectual input

Need for publication and promotion must be safeguarded

6. Sponsors, industries and collaborators

Provides R&D fundsEquipmentResearch materialIntellectual input

The interests of the sponsors, industries and Collaborators must be taken care of

7. Government and Public are major stakeholders

General source of funding for R&D infrastructure and operation expensesInvest in universitiesExpects returns

Cares that the benefits reaches the widest scope of the society at affordable cost

8. Technology Transfer Office

Creates IP awarenessManages IP disclosure, filing and protectionMarkets IP and negotiates for licensing

TTO ImplementsObligation of UniversityObligations of Inventors

Confidentiality

9. Issues covered by IP Policy

Ownership of IP Rights

Revenue or benefit sharing

Government rights

Privately funded research and intellectual property rights

IP Assets management

Research Commercialization

Spin-off companies and licensing

IP protection and maintenance

Invention Process

Conflict of interest and commitments

10.Ownership of IP rights

Who owns the IP rights generated from publicly funded research?

State,

Inventor or

the RTO?

11.Ownership of IP rightsS/N Ownership Type

Examples of countries

1 By State USA1982 Bayh Dole Act

2 By Inventor Italy, Sweden, German, Japan

3 By Institutions USA, Japan, Kenya

11.Ownership of IP rights

12. Benefit Sharing

Developing IP Policies for Universities and R&D Institutions

S/N

1 Main benefits for sharing

Income, Royalty, equity

2 Key beneficiaries

Inventor, RTO, Inventor’s group, and department, TTO

3 Sharing principle

Only net revenue is shared Net revenue = gross income –

administrative expenses Sharing can be in terms of equity

4 Duration of income stream

As long as there is revenue stream i Revenue receipt even after inventor

leaves employment Next of kin entitled to benefits

12. Benefit Sharing

13. Government Rights

These are entitlement to the government where the IP is owned by a different entity

Key rightsMatch in rights

Manufacture in a country

Preference to national companies

Compulsory licensing

Ownership reverting to government

14. Privately funded research and Intellectual Property Rights

Who owns the IP assets and why

What type licensing possibilities

15. Privately funded research and Intellectual Property Rights

Starting point RTO unless specified otherwise in the contract

What type licensing possibilities RTO owns, industry given exclusive licensing

RTO owns, industry given non-exclusive rights

Joint ownership

Industry Owns

16. IP Assets Management

Need for proper IP Asset managementAvoid premature disclosure

Risk of infringement to others’ IP rights

Duplication of efforts

Loss of potential IP assets

Loss of benefit of potential income from commercialization

Lack of guidance for staff

17. IP Assets Management professionals

Technology managers Patent drafters Patent attorney IP valuers IP licensing professionals IP Policing experts IP judges IP auditorsIP strategic managers

18. Research Commercialization

Why is the question of research commercialization important in developing an IP policy?

Is there conflict for publicly funded RTOs to engage in research commercialization?

Is there a need to promote entrepreneurial culture amongst researchers and students and if so how can it be realized?

19. IP Commercialization routes

DonationLicensingOutright saleJoin VenturesSpin outs = Creation of a company by

RTO to commercialize an IPStart ups = Creation of company by

investors from outside based on IP Assets of an RTO

20. IP protection and maintenance

Which are the cost centers in the process of protection and maintenance of intellectual property rights

Drafting of IP applicationsFiling of applicationsMaintenance of a patentPolicing Dispute and litigation

21. Invention Process

What is entailed in invention process and why is important in the development of an IP policy?What are the IP related issues during concept development, proposal writing, constituting a research team and implementing the research workplan?What is the importance of disclosure of an invention and should the process be managed?How should these issues be incorporated in an IP policy?

22. Conflict of interest and commitments

Conflict of interest

Conflict of committment

Cont..

23. Conflict of interest and commitments

Society view of RTORTO to provide independent and unbiased direction and guidance

Society concern Where university and researchers are compromised by industries

Cont..

24. Conflict of interest and commitments

Concern by RTO Where industry funds research and influence the design, conduct and reporting of research findings

Companies may seek to delay publication

RTO may tailor the licensing terms in favour of a given industry

Non disclosure of inventions by staff for the sake of industry

25. Conflict of interest and commitments

Concern by Industries Transfer of infos to competitors

deviating from basic to applied research

Provide access to or use of university facility for the benefit of the company

Altering data in order to benefit a company when publishing results

Cont..

Developing IP Policy

26. Agreements required for implementation

Participation Agreement

Material Transfer Agreement

Confidentiality Agreement

Contract Research Agreement

Disclosure Agreement

Consultancy Agreement

Procure commitment from the Top

Appoint a drafting team- internal, external, a driver

Educate the stakeholders

Discussion of the drafts by various stakeholders

Public launching

27. Requirements

1. IP policy is important to promote the generation, protection and commercial utilization of IP assets by research organizations and universities

2. The key issue to solve is that of ownership of IP rights and benefit sharing

3. The process of developing an IP policy is long and requires a lot of commitment from the team charged with the responsibility

Conclusions