Technology Transfer
Professor Philip Griffith
School of Public Affairs
USTC
Hefei
TOPICS IN PRESENTATION
• General description of “technology transfer”
• Use of patent documents for knowledge
transfer
• European Union concern about China TOT
• Australian Government Policy
What is “Technology Transfer”?
• WIPO says technology transfer (TOT) is:
• “defined as transfer of new technologies from
universities and research institutions to parties
capable of commercialization”
• or in the sense of transfer of technologies across
international borders, generally from developed to
developing countries.
• Generally TOT consists of knowledge or IP rights
that are:
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licensed in the form of intellectual property,
the subject of formal consulting or training agreements,
communicated in the work place or research settings
diffused by publication or other means.
What is “Technology Transfer”?
• The WIPO website then refers to two manuals on
licensing
• Successful Technology Licensing
– http://www.wipo.int/export/sites/www/ipdevelopment/en/strategies/pdf/publication_903.
pdf
• "Exchanging Value - Negotiating
Technology Licensing Agreements: A
Training Manual”
– http://www.wipo.int/ebookshop
What is “Technology Transfer”?
• Wikipedia says
• Technology transfer is the process of sharing of
– skills, knowledge, technologies, methods of
manufacturing, samples of manufacturing and facilities
• among governments and other institutions
• to ensure that scientific and technological developments are
accessible to a wider range of users
• who can then further develop and exploit the technology
into
– new products, processes, applications, materials or
services.
• It is closely related to (and may arguably be considered a
subset of) knowledge transfer.
What is “Technology Transfer”?
• The reference to
– skills, knowledge, technologies, methods of manufacturing,
samples of manufacturing and facilities
is probably wide enough to refer to the subject of transfer
• But there are more locations of transfer.Transfer can be
– between Public Universities or Government Research Institutes and private
industry
– between the research and development (R&D) departments and the other
departments of a single business
– between various entities or branches of a business group
– in a franchising operation from the franchisor to the franchisee
– between international organisations and national organisations
– between industrialised economies and developing economies
– And so on
What is “Technology Transfer”?
• And while the WIPO emphasises licensing as the
major vehicle for technology transfer there are
other methods of transmission
– Government local participation requirements in foreign
firms setting up in the jurisdiction
• Note Chinese requirements and EU response
– Legitimate reverse engineering
– Access to publicly available knowledge through patent
data bases
– Industrial espionage
– Straight out infringement activity
Utilization of Patent Information as an
Technology Transfer Tool:
Databases, Content and Access Conditions
Patent System
• Patent system has always been concerned
with “technology transfer”
• A patent specification is a teaching
document:
• Should explain to a person skilled in a field
of technology exactly
– what has been invented and
– how to put it into practice
Volume of Patent Documents
• There is an enormous number of patent documents
• WIPO statistics for 2004
– 850,000 first filings
– 1,600,000 applications to patent offices
– 5,000,000 patents in force
• European Patent Office
– holds 60,000,000 patent documents
TOPICS
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Range of patent documentation
Types of information in patent documents
Way information is presented
How information may be accessed
Some uses of information
PATENT DOCUMENTATION
• Specifications in granted patents
• Specifications in applications not granted
• Specifications in petty patents, innovation patents,
utility models
• Provisional application descriptions
• Decided cases in patent litigation
• Abstracts of inventions used to search
• Official gazettes, bulletins of patent offices
• References between sources
• Official patent indexes
Patent Documentation
• Data bases for computer searching
– Data bases of national or regional offices
– Specialist patent information providers
– Patent agent firms
– Individual enterprises
• Government reports, discussion papers, draft legislation,etc
• Compilations of patent statistics
TYPES OF INFORMATION
• Technological
and
• Bibliographical information
TECHNOLOGICAL INFORMATION
• Description of the state of the art prior to the
invention
• Detailed description of the invention in a form
to instruct a person skilled in the art
• Drawings or formulae
• A claim or claims defining embodiments
BIBLIOGRAPHICAL INFORMATION
• Dates names and addresses of:
– the inventor,
– applicant for right,
– person claiming to be eligible for grant,
– patent representative, agent or attorney
• Classification symbols
– IPC symbols
– Maybe national patent classification
• Title of invention
• Abstract of description
• Representative drawing or formulae
ADVANTAGES OF PATENT DOCUMENTS
• Current and recently granted patents and
applications often contain most recent
technological information publicly available in
field.
• Often only source of information
• Detailed explanations of technology
• Detailed information in all fields
• Source of linking references
• Standard form of patents
• Bibliographical items standardised by INID code
ADVANTAGES OF PATENT DOCUMENTS
• Classifications systems allow key to searching
and analysis
• Abstracts assist sifting for relevance
• Bibliographical information allows contact with
wide range of parties
• Standard formats allow creation of consistent
data bases
• Patent family identifiable both by technology
and territorially
INTERNATIONAL PATENT CLASSIFICATION
• National patent classifications developed
– USPTO 1831, German patent Office 1877, UK 1880
• Once prior art included foreign patent documents was
need for international system
• WIPO and Strasbourg Agreement 1971
• IPC system (8th edition)
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8 main sections of technology
21 subsections
129 classes
639 subclasses
7,314 main groups
61,397 groups (and rising)
• All identified by key symbols
INPADOC
• International Patent Documentation Centre- 1972
– Established by WIPO and Austrian Govt
– Now administered by EPO
• Contains
– Title, IPC classification symbols, any national
classification symbol, relevant dates,eg filing,
amendment, search, registration, names of inventor.
Applicant, patentee, addresses. Contact information
etc.
• Machine readable, computer storage, fully searchable
• Information collected from national and regional patent
offices
• Particularly useful in capacity to generate “patent families”
INPADOC forms of access
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Patent Classification Service (PCS)
Numerical database (NDB)
Patent Family and Numerical List (PFS/INL)
Patent Application Service (PAS)
Patent Applicant Priorities (PAP)
Patent Inventor Service (PIS)
Patent Register Service (PRS)
Patent Gazette (IPG)
Watch
• CAPRI project
• WIPO services for developing countries
• User guides in particular fields
OTHER CLASSIFICATIONS
• ECLA- European Classification
– 134,000 sub divisions
– EPO claims more precise, homogeneous and systematic
than IPC
– Concordance with IPC
• USPC- United States Patent Classification
– 400 classes, with class number
– many subclasses all with detailed identifying symbols
– Table of concordance with IPC
OTHER SOURCES OF INFORMATION
• Derwents World Patent Index (WPI)
• Chemical Abstracts Service (CAS)
• Private sources
– eg Siemens,
– Hitachi, etc
• Patent Office data bases (free)
• International Organisations (eg WIPO Patentscope) (free)
• Commercial companies (fees)
• Note there are database providers and patent information and
analysis service providers
The uses of information.
• Testing novelty or inventive step
• Information about the state of technology and
method
• Planning information
• Management information
The users of information.
• Patent offices
• Governments and government departments and
agencies
• Researchers and teachers in higher education
• Research and development institutions
• Industrial enterprises
Use as technical information.
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Determine most recent products and methods
Accumulate and understand technological advance
Locate related technology
Identify technology trends
Adapt research priorities
R&D plans strategically targeted
Allows “design around” or complementary development
strategies
• Reduce incidence of “reinventing the wheel”
• Suggest solutions to analogous problems in other fields
• Indicator of feasibility
Use as management tool - Government
• Monitor foreign patent applications in own country
• to level of foreign ownership and control in economy
• Indicate trend of technology in foreign country
• Can assist identifying import levels
• Monitor domestic applications to identify
• Level of domestic innovation
• levels of R&D success
• Information to assess trends in economy
• Identification of activity in differing sectors
• Planning tool
• Monitoring and analysing patents in a foreign country may reveal
much about that countries economic and industrial development
and assist trade policies
Use as management tool - Enterprises
• Source of technological information for R&D
• Compile and maintain IP inventory
• Key performance targets and measures for
• Overall enterprise activity
• Particular divisions or departments
• Research teams or individual researchers
• Searching by inventor allows to monitor who is generator of new
technology
• Screen and monitor competitors
• Use information to oppose competitors acquiring rights, seek
revocation, defend infringement actions
• Identify potential collaborators for cross licensing, patent pooling
Use as management tool - Enterprises
• Use information to decide if should buy out competitor,
merge or sell out to competitor
• Identify possible ways to designs around others rights
• Identify possible improvement patents on others patents
• And so on
European Union SME
HELPDESK
Europe and
China Technology Transfer
• Warns that EU companies subject to Chinese
requirements that threaten unwanted Technology
Transfer
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Compulsory joint ventures for markey access
Public Contracts and procurement
Design Institutes
Certification for Access
• http://www.china-iprhelpdesk.eu/media/docs/Tech_transfer_English.pdf
Compulsory joint ventures in exchange for
market access
•
Access to the Chinese market in some designated
sectors, sectors, such as
– car manufacturing
– manufacture of railway locomotives and rolling stock,
•
foreign companies must enter into joint ventures with Chinese
companies.
• Approval to form a joint venture or to
operate may depend on the supply of specific technology, includin
g future improvements of this technology.
• In some cases, the partner cannot be freely chosen and may be a
competitor or concurrent Joint
Venture partner of another competitor.
• In other cases, enlargement of a preexisting investment may require the set
up of local R&D Centre or other forms of transfer of Knowhow.
Public contracts/procurement
• To take part in public tenders,foreign companies must en
sure that part of their production is local
– up to 80%in some cases
• Production by foreign subsidiaries in China is often
not considered as local
• Instead, foreign firms have to work with a Chinese
general contractor, to which their technology has to
be transferred in full.
• Specific rules about bidding requirements of technology
transfer, to give the contract to whichever company
promises the greatest transfer of know how
Design institutes
• For many projects, in particular the manufacture of
machinery and equipment, China requires mandatory
wide
ranging review of industrial drawings and designs b
y Chinese design institutes .
• The drawings and know‐how may later be used by
other Chinese projects to duplicate and use the desi
gn in other locations of China. In addition to transf
erring ,
• Foreign companies often have provide
detailed technical documentation and
to train Chinese staff so that, in future, they can de
sign the machinery or equipment independently
Certification and licenses for market access
• Many products have to be certified by a Chinese cer
tification institution or are subject to a license by a
Chinese ministry before they are allowed on the Chi
nese market.
• Some certification procedures require inspections of p
roduction plants in right holders' home countries.
• In some cases, the Chinese inspectors may come fro
m competitor companies and they may ask technical
questions which are not strictly necessary for certific
ation.
Business advice
• The European SME IPR HELPDESK
provides detailed advice and strategies for
businesses seeking to work in China or with
Chinese partners how to minimize the risks
of unwanted technology transfer and deal
with the four major risks.
AUSTRALIAN POLICY
Australian Government Innovation Strategy
POWERING IDEAS
An Innovation Agenda for the 21st Century
released on 21 May 2009
• Strategy from 2009 to 2020
- a 10 year reform agenda
- From the office of Senator Kim Carr
- Minister for Innovation, Industry, Science and
Research
Australian Innovation Performance
• Declined between 1997 and 2007
(Howard Years … political motivation for assertion?)
– From 5th to 18th on World Economic Forum Global
Competitiveness Index
– multifactor productivity grew on average1.4% annually
between 1982 - 1996
– But between 1997 - 2007 only 0.9%
– Commonwealth spending on science & innovation fell
22% as share of GDP to 0.58 % GDP in 2007
– Business spending on R&D collapsed in 1990’s and
despite recovery still lags competitors
– Firms introducing innovation static at 1 in 3
Competitors
• China’s R & D spending grown 22% annually since 1996
• Australia’s R & D spending grown by 8% annually
• Israel spends 4 % of GDP on R & D
• Finland, Japan, South Korea, Sweden spend 3% GDP
• Austria, Denmark, Germany, Iceland, Switzerland, Taiwan, USA spend
2.5% GDP
• Australia spends 2% GDP
• Russia and South Africa doubled R & D spending in 10 years
• Share of R & D in non OECD countries increased from 11.7 to 18.4%
• New entrants making rapid improvements, older players investing to
maintain position
Australian National Innovation Priorities
• Public research funding to support high quality research
into areas of challenge.
• Develop strong base of skilled researchers.
• Fostering industries of the future to secure
commercialisation.
• More effective dissemination of new technologies.
• Encouraging a culture of collaboration within research
community and between researchers and industry.
• International collaboration.
• Public and community participation.
Research capacity
• International experience - 75% private
sector patents draw on public sector
research.
• Universities and public research
organisations like CSIRO crucial
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• Need to renew public funded research
workforce, research infrastructure and
method of sharing results
Government action on public research
capacity
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Progressively increase number of research groups at world class level
Use “mission-based funding compacts” to promote collaboration
Universities encouraged by funding models to form research “hub and spokes”
Universities encouraged by funding models to pursue “industry driven”
research
Address gap in funding indirect research costs - new funding program
Increase capacity to participate in domestic and international collaborations
Increase capacity to participate in multidisciplinary research
Invest in research infrastructure - various funding mechanisms listed in
Strategic Roadmap for Australian Research Infrastructure:
- $580 m for university research and infrastructure,
- $901 m for projects identified in roadmap and Super Science Initiative
- Education Investment Fund 2009 - 10
Government action on public research skills
• Workforce strategy to address expected shortfalls in supply of
researchers
• Double number of Australian Post Graduate Awards (APAs)
• Increase dollar amount of APA (10% increase 2009 - 10)
• Increase students in higher education generally and mathematics and
science particularly to enlarge pool of potential Higher Degree by
Research students
• Create viable career paths for researchers
– Early Career Researcher grants
- Mid Career Research grants (Future Fellowships)
– Senior researcher grants (Australian Laureate Fellowships)
Business Innovation
• Business drawn to innovation by
competitive advantage and profit motive.
• Australia had few large business with fund
capacity - so challenge is medium and small
business innovation funding.
Government role Business Innovation
• Aim to increase proportion of businesses engaging in
innovation by 25% over 10 years.
– Enterprise Connect
– Clean Business Australia
– Clean Energy Initiative
• Increase businesses investing in R & D
– R & D tax credit system
• Support innovative responses to climate change
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Clean Business Australia
Green Car Innovation Fund
Clean Energy Initiative
Global Carbon capture and Storage Institute
Climate Change Action Fund
Government role Business Innovation
• Improve innovation skills in workplace
– Enterprise Connect
– Education Revolution strategy
• Support firms get ideas to market
– Climate Ready
– Green Car Innovation Fund
– Commonwealth Commercialisation Institute
• Work with Private sector to increase supply of venture
capital
– Government initiatives to respond too credit crisis “the stimulus”
– Innovation Investment Follow-on Fund
• Maintain dialogue with Industry about innovation
– Enterprise Connect
– Industry Innovation Councils
– Pharmaceutical working group model
Public Sector Innovation
• Government must lead by example
• Take advice from Australian Public Service Management Advisory
Committee
• Australian National Audit Office
• Use public procurement to drive research, innovation technology
development
– Commonwealth Government Procurement Guidelines 2008
• Coordinate approach to information management
– Australian Government Information Office
• Consider options for reform of Patent system and support intellectual
property education for researchers and business
• Improve management and regulation of biotechnology and
nanotechnology
– A new national Enabling Technologies Strategy
Collaboration
• Australia ranks last in OECD on the level of collaboration between
public researchers and private industry. To improve Government will:
• Seek to double level of collaboration between Universities, public sector
research institutions and business :
Mission based funding compacts
Enterprise Connect
Researchers in Business Program
Industry Innovation Councils
Joint Research Engagement Scheme
Royal Institution of Australia
• Increase international collaboration
Australian Research Council grants open to international
applicants
Specific multilateral projects eg Square Kilometre Array radio
telescope project
Collaboration
• Renew Cooperative Research Centres (CRC)
– Collaborating to a Purpose – new guidelines 2008 introduce
• “public good” as a funding criterion
• encourage research in humanities, arts , social sciences,
• Increase focus on needs of end users
• Improve Enterprise Connect services to individual firms
– Seek to develop regional clusters and networks linking researchers,
educational institutions and business
• Promote proven models for linking public funded and not
for profit researchers with industry
– Eg CSIRO’s national Research Flagship
– CSIRO ICT Centre