IP Management in Industry ClustersRichard Walker

Parallel 1.1 Common problems, common markets and shared value creation

11 November 2014

IP Management in

Industry Clusters

Richard Walker

Director, TCI Network Oceania

Collaboration in Australian businesses lags

behind other countries

» Australia is 23rd out of 26 OECD countries in the

proportion of businesses collaborating on

innovation

» The Global Competitiveness Report indicators of the

extent of networking show that Australia is

considerably behind other OECD countries ranking

21st in cluster development and 34th in value chain

breadth.

» Collaboration between PFROs and innovation active

Australian businesses are particularly low

Intellectual Assets in Clusters

INTELLECTUAL

CAPITAL

HUMAN

CAPITAL=knowledge that the

employee takes home

STRUCTURAL CAPITAL+ what remains in the company

at the end of the day

MARKET CAPITAL+ External relationships

More specifically More specifically More specifically

Knowledge Patents Collaborations

Know-how Trade-marks Partnerships

Competencies Designs Networks

Skills Copyright Customer lists

Education Trade secrets Product certifications

Experience Licences Brand

Training Franchises Goodwill

Inventions

Databases

Software

Work documents

PublicationsAfter

Innovation Norway 2010

IP Management in Clusters

Requires

» Strong Collaboration between stakeholders

» Availability of easy to use tools to assist collaboration

» Effective IP strategies to maximise value from generated knowledge in cluster projects

» Extent to which IP can be considered is highly sector dependent

The mechanism of collaboration

» Creation of shared values

» Trust building – assisted by Cluster

Development Agent

» Open innovation

» Stakeholder commitment

Key challengers to collaboration

Lack of understanding of process by potential collaborators, especially SME industry

» Essential to build trust amongst stakeholders and develop shared values

» Requires a Cluster Development Agent

» Managing intellectual property (IP)

» Negotiating terms of ownership

Actions to improve collaboration

» Establish consistent principles and model contract templates for the management of IP across public research organisations

» Encourage the development of educational resources to assist PFROs, industry & researchers to form and conduct collaboration.

» Ensure participants agree to a jointly developed commitment codex

» Need a consortium agreement for each project

International programs developing Tools to

assist IP protection in collaborations

» Lambert Toolkit [UK]

» UIDP Contract Accords [USA]

» Recent European Research Areas Agreements [EU]

» Innovation Norway IP Rights for Clusters

» AEEMA – Intellectual Property in Clusters

» India – Cluster level IP Awareness Program

» Mexico, Nuevo Leon – Commitment Codex for Clusters

» Australia – IP Toolkit for Collaboration

UK (Lambert) & US (University-Industry

Demonstration Partnership)

UK Intellectual Property Office

• understand the issues

• understand the Model

Agreements

• improve communication

• reach agreement on principles

first

• choosing the right model

agreement & amend when

necessary

US UIDP Contract Accounts

• both university & industry

goals are met

• define project at the outset

• short-term wins should be

attainable and then outcome

built upon

Lessons learned, 2013 Lambert Toolkit

8 yr evaluation

Mixed results

• 80% of research community & 50%

of companies aware of toolkit

• Those aware mainly positive

• Templates (often modified) used for

only 10-15% of business-uni

collaboration

• Stakeholder experts needed in

design

• More effective communication

including case studies

For industry

• Lack of focus on new co-creation

mechanisms

• Large companies see Lambert

Toolkit biased towards unis

• Failure to address differences

between user groups

• Even when toolkit used SMEs

deterred by negotiation costs & time

frames

• Toolkit updated to remain relevant

University-Industry Demonstration Partnerships

» The purpose of the University-Industry Demonstration Partnership (UIDP) is to enhance the value of collaborative partnerships between university and industry in the United States.

Ten sections:

PreambleStatement of WorkIndemnificationPublicationsOther Research ResultsBackground Intellectual PropertyForeground Intellectual PropertyExpert ControlCopyright & SoftwareConfidential Disclosure AgreementsMaterial transfer Agreements

European Research Areas Agreements on IP

Management

Main elements of effective system to protect & exploit IP

A system that enables the protection of IP that includes clarity about the ownership of IP rights, rights to use IP, freedom of parties to transfer [assign] IP & freedom to publish

A technology transfer framework, preferably with the provision of specialised knowledge transfer offices with professional staff

A fair law enforcement system in partner’s countries that caters for dispute settlement but also that can award penalties & sanctions

India – Cluster IP Awareness Program

» To sensitise the clusters about IP Rights & their protection

To identify protectable innovations

» To suggest steps for transforming innovations into proprietary assets

» To use IP information, particularly related to patents & designs, for further R&D in developing new products & processes

Utilise the IP information in their business development

Commitment codex

» Participate actively in Committees

» Experience sharing

» Respect Confidentiality

» Strengthen the value chain

» Back up the projects

» Facilitate the needed resources

» Collaborate to createAutomotive Cluster of Nuevo Leon

AEEMA – Enhancing National Economic

Benefits through a new cluster paradigm

» Management of IP in Clusters

Inflexibility & generally undesirable outcome of leaving IP ownership to the default statutory position

Need for an environment to foster participation and to cope with the changing nature of participants in projects

Sometimes poor understanding by small firms of the basis of IP and commercialisation of IP, particularly jointly developed IP

Frameworks need to be developed for the fluid nature of cluster participation in projects

Norway: Intellectual Property Rights for

Clusters

» IP issues should be addressed at application stage

IP policy guide should be a standard element in the ‘start’ package

IPR is an important tool for building a climate for co-operation

Acute need for IP awareness sessions for participants

Lack of commercial focus among Universities key inhibitor to bringing output to market

Types of IP Protection

PROTECTION

METHODS

FORMALIPR

SEMI-FORMALContracts

INFORMAL

This deals with: This deals with: This deals with:

Patents Confidentiality Secrecy

Trademarks Employee Inventions Publishing

Design Rights Recruitment freeze Restrictions

Copyright Non-competition Division of duties

Business Names Commercial use Circulation of duties

Geographical

indications

Fast innovation cycle

Integrated circuit

layout

Complex product

designs

Domain Name After Innovation Norway 2010

Effective IP management strategies to

maximise value of Clusters

» Build IP strategies around the cluster business model

Need an IP awareness program for cluster participants

» Develop a long term approach using multiple informal/formal protection mechanisms e.g. patents, trademarks, copyright, secrecy etc.

» Have a program of commercialisation

References

» AEEMA AEEMA Enhancing National Economic Benefits through a new Cluster paradigm Submission to Aust Govt Jan 2004

IP Australia IP Toolkit for Collaboration Consultation brief & presentationJune 2014

India CGPDTM & CII, FICCI, ASSOCHAM Cluster Level IP Awareness Program2104

Innovation Norway Intellectual Property Rights for Clusters NCE & ARENA2014

Matiaki, E Building Trust in SME Clusters SME Global Network 2012

Ryan,C & Phillips, P Intellectual Property Management in Clusters: a framework for analysis University of Saskatchewan

UK HM Treasury Lambert Review of Business University Collaboration 2003

UK IPO Collaboration between Business & University: The Lambert Toolkit 8 years on 2013/26