T&P
Innovation and Technology
Management Services
SOME KEY ISSUES FOR CONSIDERATION IN A
NATIONAL IP STRATEGY
PART SIX – IP Policy for R&D Institutions
and Universities
OGADA TOM
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
Universities
Inventors
Researcher
Students and research assistant
Guest researchers
Sponsor
Industry
Collaborators
Government
Public
RTOs
National IP Offices
4. University and R&D institutions as a key
stakeholder
RTO is a key stakeholder since it provides
R&D Infrastructure
Salary
Goodwill
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 funds
Equipment
Research material
Intellectual 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 expenses
Invest in universities
Expects returns
Cares that the benefits reaches the widest scope
of the society at affordable cost
8. Technology Transfer Office
Creates IP awareness
Manages IP disclosure, filing and protection
Markets IP and negotiates for licensing
TTO Implements
Obligation of University
Obligations 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 rights
11.Ownership
of IP rights
S/N
Ownership
1
2
3
Examples of
Type
countries
By State
USA
1982 Bayh Dole Act
By Inventor
Italy, Sweden,
German, Japan
By Institutions USA, Japan, Kenya
12. Benefit Sharing
S/N
12.
1
Benefit
Sharing
Main benefits
Income, Royalty, equity
for sharing
IPInventor,
Policies
Universities
2 Developing
Key
RTO,for
Inventor’s
group, and
beneficiaries
department,
TTO
and R&D
Institutions
Only net revenue is shared
3
Sharing
Net revenue = gross income –
principle
administrative expenses
Sharing can be in terms of equity
As long as there is revenue stream i
4
Duration of
Revenue receipt even after inventor
income
leaves employment
stream
Next of kin entitled to benefits
13. Government Rights
These are entitlement to the government
where the IP is owned by a different entity
Key rights
Match 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 management
Avoid 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 auditors
IP 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
Donation
Licensing
Outright sale
Join Ventures
Spin outs = Creation of a company by
RTO to commercialize an IP
Start 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 applications
Filing of applications
Maintenance of a patent
Policing
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 RTO
RTO 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
27. Requirements
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
Conclusions
1.
2.
3.
IP policy is important to promote the
generation, protection and commercial
utilization of IP assets by research
organizations and universities
The key issue to solve is that of ownership of
IP rights and benefit sharing
The process of developing an IP policy is long
and requires a lot of commitment from the
team charged with the responsibility