RESEARCH PRODUCTS AND
INTELLECTUAL PROPERTY
RIGHTS
OGADA T. and MBAYAKI A.
CAMPUS BASED RESEARCH WORKSHOPS
TOWN CAMPUS
3 May 2006
Contents of Presentation
Introduction
Research Products and Intellectual
Property Rights
Moi University Intellectual Property Policy
Conclusions and the Way Forward
Introduction
Role of Universities
To train and develop manpower
To generate new knowledge through research
and development
To contribute to national development through
transfer of knowledge to society
Level of Realization of the mandates of
the universities in Africa
Mandate One
Universities have been effective in training and
producing manpower,
but
People are questioning the quality
Due to lack of job opportunities, the relevance of
training is being questioned
Mandate Two
Universities in Africa are doing research and
development,
There is capacity for S&T in African Universities
BUT
– Limited Research funding
– Funding is donor driven
– Priority areas should be funded by local resources
Mandate Three
Transfer of Knowledge generated to society
has remained the weakest point of African
Universities
Pursuit for knowledge for the sake of it is a
luxury which can not be afforded
Universities must produce return on
investment
There is need for paradigm change to put
emphasize on knowledge transferred than
knowledge generated
RESEARCH PRODUCTS AND
INTELLECTUAL PROPOERTY
RIGHTS
Research Products-1
The direct product of research is knowledge.
That knowledge can be in the form of
New Technology
New Product
New Process
Improvement in existing product, process
or technology
Research Products-2
The dissemination of that knowledge through
publications is not enough. R&D is only useful if
its products can lead to
Economic development
Industrialization
Job creation
Poverty Reduction
It is only through transfer of knowledge that a
university becomes relevant to the society
Research Products-3
Effective transfer of knowledge can only be
realized through knowledge trade or
commercialization of research products.
Knowledge can only be commercialized if it
becomes a property
It must have a Legal Owner
It must have a value
There must be a market for it
Useful R&D should generate research products
which have commercial value and markets
Research Products-4
There are two types of property
Tangible Property – land, building, machinery
Intangible Property – knowledge
Old Economy
Tangible property
New Economy
Intangible Property
Research Products belong to a class of intangible
property called intellectual property
Commercialisable R&D products are therefore the
drivers of modern economy
Research Products-5
Intellectual Property
Rights
Copyrights
Patent
s
Utility
Model
Industrial Property
Industrial
Design
Plant Breeders Rights
Marks
Others
Research Products-6
There are Four Methods through which an
Intellectual Property Assets can be
commercialized
Licensing
Sale
Own exploitation – start up companies
Joint ventures
Research Products-7
The contribution of a university towards a country’s
development can be measured through
The number of intellectual property generated
The number of intellectual property Licensed
The number of companies created directly based
on the product of R&D
The number of jobs created
The Number of consultancy offered
Research Products-8
experience from abroad
Patents Filed in 1997/1998
Japan
USA
Germany
United Kingdom
Kenya
357,379
198,953
44,438
17,938
27
Research Products-9
experience from abroad
Industries Created
Chalmers University of Technology has
created 240 companies from its products
of R&D during 30 years
Research Products-10
experience from abroad
Technology Transfer
USA Universities
US AUTM reports a total of 3765 license
agreements based on technology transfer
Some US $ 1.26 billion earned in 2000
earned by universities
Research Products-11
Kenyan Patent Application Situation
Kenyan informal sector is currently leading IP
Applications (2004)
SMEs (Jua Kali)
Industry
R&D Institutions
Individual from university
Secondary School
University (MU)
116
45
14
2
1
1
The culture of innovation has not been developed
Researchers in Universities and R & D Institutions
innovate daily most of the innovation go unnoticed.
• NEED FOR EFFECTIVE IP POLICIES IN
UNIVERSITIES AND R&D
INSTITUTIONS
STAKEHOLDERS IN
COMMERCIALISED IP
Universities
Inventors
Researcher
Students and research assistant
Guest researchers
Sponsor including industry
Collaborators
Government and Public
UNIVERSITY OR R&D INSTITUTIONS
• University as a stakeholder since it provides
R&D Infrastructure
Salary
Goodwill
University has a say on the generation, protection
and commercialization of IP generated using
university recourses
INVENTOR
The Inventor
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
Sponsors, industries and
collaborators
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
Government and Public
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
Technology Transfer Office
• 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
SUMMARY
• IP Policy is required
To regulate the conflicting interests of the
various stakeholders
Promote IP development
• Issues covered by IP Policy
Issues covered by IP Policy
Disclosure of IP
Confidentiality
Material Transfer
Ownership of IP
Sponsored research
Collaborative research
Publications
IP Marketing and Licensing
Revenue Distribution
• MOI UNIVERSITY IP POLICY
JUSTIFICATION
To enhance collaboration with other institutions
To protect the interest of Moi University
To promote demand driven research
To enhance technology transfer
To generate income for Moi University
To take care of the conflicting interests of the
various stakeholders
OBJECTIVES
Promote creativity and innovation
Expedites knowledge and technology transfer
Reward staff for inventiveness and protect their
interests
Ensure equitable sharing of commercial benefits
Spell out obligations of all stakeholders in IP
generation and commercial utilization
Process
Started in 2002
A committee MU-KIPI formed
Staff Sensitized
Draft Discussed in Campuses
Draft Discussed in Deans, Senate Council
Council Approval given in August 2004
Document Officially Launched in November
2004
Policy currently being incorporated in MU Act
Ownership of IP by Moi
University
Where inventor has used significant university
resources
Where inventor is specifically hired or
commissioned to do the project
For sponsored project unless otherwise stated in
the contract
Ownership of IP by Inventor
Where inventor can prove that he did not use
university resources
Where the university is not interested to pursue
the protection of the invention
Where the university is not interested in
commercial exploitation of the invention
Publications, Theses and Dissertation
Faculty, Students and Other employees shall
own copyrights for their publications
Publication of students Theses and
Dissertations shall only be allowed after
screening for IP
Filing application for protection shall be
considered for academic promotion
Obligations of the University
Ensure confidentiality with respect to inventor
during disclosure
Support commercialization of IP assets and
technology transfer
Ensure that the inventor is equitably rewarded
for invention
Provide mechanism for dispute resolution
Obligation of the inventor
Prompt disclosure of inventions
Assist throughout process of registration and
commercialization
Respect commitments made in license, contract
and sponsored research
Disclose all potential conflicts of interests
Distributions of net revenue
Inventor
IP Fund
Inventors research
Inventors department and faculty
University wide research fund
Technology Transfer Office
• Implementation of Moi
University IP Policy
Technology Transfer Office
Sensitize staff regarding IP
Asses the potential of IP
Evaluate the commercial potential of IP
Obtain appropriate IP protection
Locating commercial partners
Negotiation and licensing
Promoting use of patent documentation
Agreements required
Participation Agreement
Material Transfer Agreement
Confidentiality Agreement
Contract Research Agreement
Disclosure Agreement
Consultancy Agreement
Challenges of implementing the
IP Policy
Challenges
Lack of IP Awareness
Lack of Financial Resources
Situation of the IP Office in MUholdings
Situation in Kenya
Institution that have IP Policy
• Moi University, ILRI, ICIPE
Institutions with drafts at advanced stage
• University of Nairobi,
• KEMRIi,
• Kenyatta University
• KARI and Egerton University
Conclusion and Way Forward
Moi University has in place structures and legal
instrument to promote commercialization of R&D
results
Schools should take advantage of this
There is need to change the emphasis to
transfer of knowledge
Schools should put aside finances to promote
innovation and inventiveness
DVC R&E office should set aside funds for the
management and commercialisation of R&D