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