WIPO Arab Regional Meeting on
Intellectual Property as a Power
Tool for Economic Growth
June 1 to 3, 2003
Amman, Jordan
University-Industry Partnerships:
Finding the Right Balance
Homai Saha
June 3, 2004
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Focus of Presentation
• Critical link between government
financed research and the
effective utilization of the
research for progress
• In the knowledge economy,
economic growth can be linked
to effective utilization of science
and technology
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• In this process Universities have
the potential to act a strong drivers
of growth:
– Generate, commercialize and apply new
knowledge to enhance prosperity and
quality of life
– Educate people with high skills in
research
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Legal Framework
• But to maximize this utilization of public
resources effective frameworks need to be
put into place by governments
• Governments are increasingly realizing
that academic activity should be applied to
finding solutions which stimulate economic
development
• An integrated innovation system of
research centers, universities and
business is needed
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How does this work in
practice?
• Private ownership and commercial
interests are a strong incentive for
research
• Technology transfer from universities is
encouraged when they are allowed to
patent and license their technologies to
industry
• For PROs such transactions yield
money - more money for research
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• For governments there is better use of
research for social benefit and
expanded employment in new
industries
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Policy Makers in Developed Countries
began to focus on the laws and
regulations governing the exploitation
of IP created through government
funded research
First and most commonly quoted
example - USA
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The Bayh-Dole Act 1980
• Allowed universities to claim
ownership of the IP developed from
federally funded research and retain
the royalties
• Allowed universities to grant licenses
including exclusive licenses
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Bayh-Dole produced
significant results for the US
economy
•
•
•
•
Increase in Patents filed by universities
Millions in royalties
Start-ups and spin-offs
Enormous economic activity which can be
attributed to academic licensing
• University patents which have had significant
impact on society as a whole
Carbovir, Taxol, ‘Superaspirins’, MRI,
Lycos
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Other Developed Countries
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• Began looking at their own laws and
policies on transfer of research from
university to industry.
• Turning Science into Business, a study on
patenting and licensing at PROs by the
Organisation for Economic Cooperation
and Development (OECD), has
documented different practices in 13
member countries and highlighted the
policy options which could be available to
developing countries
These include:
Emulation of Bayh-Dole (Japan, Germany
and Korea),
Reform of employment laws (Austria,
Denmark, Germany and Norway)
Issuance of national codes of practice or IP
guidelines (Canada, Ireland)
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All these examples show:
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• The experience of most developed
countries in maximizing university-industry
partnerships is not a long one
• A technology transfer system is more than
just national laws allowing the ownership
of IP by public research institutions, it
requires an institutional framework which
provides incentives to each of the players
in the system
• The experience is varied and no one
policy prescription exists
• Hence, adopting the experience of
another country uncritically would not
be the best option
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Policy Options for Developing
Countries
• The policy framework consideration should
be to maintain a system of checks and
balances
• Maximize the social benefits from government
investment in R&D to ensure that
commercialization of the R&D generates
economic growth
• Create a policy space and enabling
environment which would balance support for
commercially funded research and
entrepreneurship at universities and public
access to research generated with public
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• The right balance is needed for
management of IP generated with
government funding. The
entrepreneurial activities of the
universities should not compromise the
academic obligations of researchers
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• Create a coherent and consistent policy on
publicly-funded research. There is an urgent
need for governments to create the legal
framework that will allow the ownership of IP
by publicly-funded research organizations
• Generally, ownership should not belong to the
government agency which funded the
research as lack of market exclusivity would
make industry reluctant to invest in and
develop new products from federally-owned
research
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• To balance and address the public policy
aspect, Government interests could be
preserved through ‘march in’ rights
• Channel public resources towards
government's policy priorities for science,
technology, education and development of
indigenous technological capacity in priority
areas.
• Allow each university or research institution to
develop its own policy on commercialization
of research and distribution of benefits from
patenting
• Successful transfer of technology requires
more than just a national policy framework, it
requires an institutional framework at the
university level
– ‘University oriented’
– ‘Researcher oriented’
• Assist in the setting up of institutional
mechanisms at universities for management
of IP assets, e.g. TTOs
• Reconcile the “publication versus protection”
dilemma. To address this issue, governments
may need to address the question of the
grace period for filing of a patent
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• The experience of developed countries
has revealed that there is no ‘one size fits
all’ policy approach to manage and
maximize the IP assets generated by
PROs. Importing policy solutions without
adapting them to the national context
would result in sub-optimal policy
outcomes
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Technology Transfer Offices
(TTOs)
Traditional university structures are not
designed for technology transfer. They are
designed for research and education
To overcome these constraints public policy
must support these institutions through
finances and qualified managers
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Institutional models for TTOs:
• TTOs with arm’s length relationship with
the university
• Dedicated on-site institutions
• Regional or sector-based TTOs which
are shared by several research and
academic institutions
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Initiatives in Developing
Countries
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Severe constraints in developing countries outlay for R&D is limited
1% of GDP in developing countries as
against
almost 3% in developed countries
To address this critical issue public policy
makers in developing countries are
focussing on this issue through greater
allocations
for R&D over time, framework laws, rules
India
• 80% of India’s research is in the public
sector
• The Ministry of Science and
Technology issued the guidelines
“Instructions for Technology Transfer
and Intellectual Property Rights” in
2000, which would help in enhancing
the motivation of scientists, research
institutions and universities in projects
funded by the government
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• Research institutions were given the right
of ownership over some of the inventions;
they could exploit their patents on an
exclusive or non-exclusive basis; retain
earnings generated from their IP; pay the
inventor from the earnings; government
could retain march-in rights for use of IP
for public purposes
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• In 2003 the government announced plans
to establish autonomous TTOs at
universities and national laboratories to
facilitate transfer of know-how to industry
• CSIR - aggressively patents, pursues
commercialization of technology, derives
royalties from its inventions and has some
6000 patents worldwide
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• Department of Science & Technology established a Patent Facilitating Centre
(PFC) to help scientists commercialize
their technologies
• The Indian Institute of Technology
Mumbai has an IPR policy and is creating
a framework for commercializing
inventions
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• The Indian Council of Medical
Research (ICMR) - has an IPR policy.
Working with industry for the transfer
on commercial terms of new
technologies. Scientists are being
sensitized to protect their inventions as
disclosure through publication would
mean loss of IP rights. Develop and
implement a royalty policy
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Brazil
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• Has increased its level of funding for R&D
to 1.4% in 2001 and is expected to
increase it to 2% in 2005. Made
improvements in the institutional
environment for technology transfer;
inventor has a 12 month period in which to
file a patent; while generally the
researcher is regarded as an employee of
the university and their research belongs
to the institution, they are entitled to bonus
for inventions
Republic of Korea
• In 2000 the government passed the
Technology Transfer Facilitation Law.
Prior to that IP from government funded
research in universities was owned by
government. Under the new law,
universities may elect to own the IP and
are required to establish TTOs.
Researchers have to be compensated up
to 50% of licensing revenue from
successfully commercialized inventions
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Uganda
• The mission of the Scientific and Industrial
Research Unit is to create an enabling
policy environment for the conduct of
research and link the research capacity of
the skilled manpower to the productive
industrial sector so as to improve the
quality of life and generate wealth
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South Africa
• Government funds about 50% of research
in the country and of this a large % goes to
universities which results in their
undertaking one-third of all R&D activities
in South Africa
• The government has systematically been
building a technology transfer system to
maximize potential of PROs
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• In 1996, the Department of Science &
Technology embarked on a conscious
policy through a White Paper.
• A National Science Foundation was
created to manage government grants;
• An Innovation Fund to help sustain
innovation projects and
• A National Advisory Council for a S&T
Policy
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• IIPI Report (2004)
• 10 Universities surveyed. They have
variations in IP policies:
• University oriented - Stellenbosch,
Pretoria, Capetown
• Researcher oriented -Natal and
Rhodes
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• The University of Stellenbosch has been
the most successful in creating a
technology transfer infrastructure. The
university has started Unistel Holdings as
a holding company for spin-offs. It has a
combined turnover of around US$ 11.14
million a year and has led to the creation
of 138 jobs.
• The University of Cape Town (UCT)
recently started UCT Innovation as a
wholly owned company and the
commercializing of UCT's research has
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• The University of Pretoria has outsourced
licensing and commercialization to SERA
which is a collaborative effort of the
university and the South African CSIR
• In 2002 a group of university research and
technology managers came together to
form SARIMA (South African Research &
Innovation Management Association) and
have tried to raise the level of technology
transfer in higher education institutions
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Jamaica
• While there is no national policy
framework individual institutions are
beginning to formulate IP policies to
stimulate transfer of research to
industry
• The University of West Indies policy
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Conclusion
For developing countries:
• Increased outlays for R&D are critical
• The commercial and strategic
management of IP in public research
institutions is an important issue
• Managing IP in universities is a
multi-dimensional activity
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• Human resource factor should not be
overlooked in formulating IP policies
• Need for legal and institutional systems for
ensuring that public investments in R&D
create value in terms of social good, which
is measured not only in ensuring results of
research in the public domain but equally,
ensuring that the research links with
industry and leads to economic growth.
• The need for developing countries to share
experiences, network among academic
institutions
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Thank you
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