Intellectual Property
Management in Universities
and Successful Technology
Licensing
Organized by The World Intellectual Property
Organization (WIPO)
in cooperation with
The National Institute of Intellectual Property of Chile
(INAPI)
Santiago de Chile, October 21 to 24, 2013
Theme One: Innovation and Intellectual Property
(c) IP Asset Management in the Contexto of the Research
Institution
•
•
•
•
•
•
•
•
•
•
IP as mechanisms for transfer of intangibles
Country strategy as background for TTO
Managing IAs developed by the TTO or third parties
Concept of IA
Country level written strategic plans
IP Audit tool
Education and incentives
Clusters
Strategy of the TTO
Selection of projects: qualitative valuation
IP as mechanism for transfer of intangibles
•
•
•
•
Drucker and the knowledge society.
Nonaka’s theory of knowledge.
From tacit knowledge to explicit knowledge or
Discovering the secrets of human capital.
Country strategy as background for TTO
• Country strategy as background for TTO
• Country policies for science, technology and
innovation
• Strategy of the TTO
• Institutional Policy
Managing IAs developed by the TTO or
third parties
• Concept of IA
• How to select projects for development
– Audit
– Qualitative valuation
– Portfolio classification
Concept of IA
(Quotes from:Development and Management: A Key Strategy forEconomic
Growth – WIPO Document)
• Concept of IA
– Potentially valuable knowledge, formally protected or not,
that has been selected for development, protection and
marketing.
– Increasingly, private enterprises and academic institutions
see patents, trademarks, copyrighted works and other
forms of IP as economic assets, the value of which can be
optimized by proactive policies and strategies.
– IA’s may be subject to key policies, strategies and practices
that are effective in stimulating and supporting the
development, accumulation, management and use of IP as
an economic asset.
Concept of IA
• There is a growing recognition that proactive
governmental policies can enhance the
human capital and IP portfolios of Nations.
• The same is true at the level of the TTO.
Country level written strategic plans
• Policy makers can develop and implement written IP
strategic plans:
– Based in a prior IP audit
– Goal-setting and measurement
– Identification of “clusters” or target areas for IP asset
development
– Funding of research and development and “harvesting” of
resulting IP
– Coordination of Education and economic policies with IP policies
and planning
– Creation of tax and other financial incentives for IP development
– Introduction of measures to make IP ownership realistically
affordable to SMEs and nonprofit research institutions, including
public-private venture funds and patent application funds.
Country level strategic plan
• This plan may also specify:
– strategic goals and objectives, mechanisms, policies,
actions, costs and resources,
– links with other planning tools, including
development, economic and education plans.
• Many countries have developed stand-alone IP
plans:
– economic plans with IP components,
– multifaceted strategic plans integrating education,
technology, health, agriculture, commerce, IP and
finance.
Country level written strategic plans
• Examples:
– Singapore has focused on building up the capabilities of
SMEs and investing selectively in priority areas referred to
as “clusters”, such as information technology (IT),
biotechnology, and life sciences research.
– Malaysia has created several venture capital funds for
technology development, including The Technology
Acquisition Fund15 (TAF), The Commercialization of R&D
Fund16 (CRDF) and the Malaysia Venture Capital
Management Fund17 (MAVCAP). The last of these focuses
on “spearheading the country’s change towards a
complete knowledge-based economy before 2020”.
IP Audit Tool
• A public policy IP Audit Tool has been developed
by WIPO for use by its Member States.
• The public sector audit tool focus- audit provides
a factual and analytical foundation for national IP
strategy, an analysis on the policies and
infrastructure available and needed on a national
basis in order to use IP as tool for economic
growth.
• After the audit, a written IP plan creates a
strategy for developing and managing IP over a
period of time.
Education and incentives
• Education is the foundation of IP asset
development.
• Incentives and awards:
– These include tax incentives, payments, patent
application funds, venture funds for SMEs in cluster
areas and financial rewards in private enterprise for
inventors and creators.
– In Indonesia, the Ministry of Research and Technology
operates Asuransi Teknology National (National
Technology Insurance) to safeguard enterprises
against the risk of failure of their technology.
Clustering
• Clustering:
– Nations successfully implementing IP asset development
and management programs select clusters or target areas
in which their enterprises or research institutions may
have a competitive advantage, or which harmonize with
national needs and capacities.
– In a recent report titled A Practical Guide to Cluster
Development, by Ecotec Research and Consulting to the UK
Department of Trade and Industry and the English RDAs,
the examples of clusters given are Silicon Valley IT Cluster
in the USA, the city of London Finance and Services Cluster
and the North West UK Aerospace Cluster.
Effects of management of IP assets
• IP assets, when properly managed, can:
–
–
–
–
–
–
–
–
–
–
–
–
–
motivate and help generate revenues from product sales and
licensing royalties;
increase high value exports;
attract high-value foreign direct investment (FDI) and joint ventures;
help retain and motivate technical personnel;
stimulate research and development (R&D) based industries;
create employment;
support educational and research institutions;
enhance corporate valuation;
promote funding for R&D, which provides and enhances needed
technologies and products;
provide bargaining power in technology transfer negotiations;
help to gain access to goods and technologies through
licensingagreements.
Selection of promising projects for
development
• How to select projects for development:
– Private audit
– Qualitative valuation (to assist in decision as to
which projects deserve continued investments)
– Portfolio classification
Qualitative valuation (from ‘Practices of European
R&D Institutions - WIPO)
• Valuation can be qualitative or quantative (no reference will
be made here of the second), for use in the process of guiding
decisions, measuring:
– Technical
– development status (early stage, proof of concept, pilot,
other)
– IP point of view – existence of similar technologies and
their geographical distribution, potential partners
– Market poing of view – existing of similar technologies and
their geographical location
– Financial
Qualitative valuation (from ‘Practices of
European R&D Institutions - WIPO)
• Internally developed ranking criteria (8 leading
factors):
–
–
–
–
–
–
–
–
Suitability for suggested application
Cost
Development status
Exploitaition rights
Degree of novelty
Marketing interest of partner
Quality of technology information
Sociability of technology provider
Qualitative valuation (from ‘Practices of European
R&D Institutions - WIPO)
• Other factors:
–
–
–
–
–
Patentability
Patent strength
Status of invention
Market situation
Inventor’s history – supportive or not in the process of
transfer?
– Additional services for the Partner (potential for
continuation of collaboration)
– To whom shall inventions be licensed
– Scientific and management skills of the R&D team
Portfolio classification: technology strength
vs. business strength
• This classification may be made according to
technology strength, by measuring market
attractiveness, and technology strength, for
purposes of creating a valulation matrix.
• The other is business strength, measured against
market attractiveness, providing measure of
business strength, with options to classify
technology in 9 quadrants, from ‘protect position’
to ‘build selectively’, on the upper side, to Protect
and refocus, to ‘divest’.