Transcript IPR and Public-Private Technology Transfer Professor Prabuddha Ganguli [PhD] CEO “VISION-IPR” 103 B SENATE, Lokhandwala Township, Akurli Road, Kandivli East, Mumbai 400101, India Tel: 91-22-8873766 e-mail: [email protected] Presentation made.

IPR and Public-Private Technology
Transfer
Professor Prabuddha Ganguli [PhD]
CEO
“VISION-IPR”
103 B SENATE, Lokhandwala Township,
Akurli Road, Kandivli East, Mumbai 400101, India
Tel: 91-22-8873766
e-mail: [email protected]
Presentation made at the WIPO-CSIR Workshop on
Licensing and Technology Transfer; New Delhi; India, July 4-8, 2005
Technological Innovation ….Societal Progress
Creative exploitation of knowledge in
Selection of seeds leading to the Green Revolution and
enhancing agricultural productivity
Development of nutritive food supplements, vaccines,
medicines, methods of treatment to improving community
health
Inventing novel devices for diverse applications,
including, facilitating learning processes and providing
systems for communication
Deciphering secrets of life creating processes, integrating
with communication technologies to give biotechnology
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“Knowlitics™” …...
…..A new international
phenomena
Emerging Socio-Political Dimensions
of the Knowledge Trade
Transacting Owned
Knowledge
IPR plays a decisive role
“Knowletics” TM applied for in India by P. Ganguli
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Strategic Linking of Knowledge
Incubators with Business
Enterprises
Integrate IPR in the knowledge
generation and transfer process
Where does one start????
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TODAY
YESTERYEARS
RESEARCH MODELS
TOMORROW…….
ISSUES
RESEARCH PROCESS“APPROACHES”
SOCIETAL IMPACT
KNOWLEDGE OWNERSHIP
BENEFITS SHARING
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TODAY
TOMORROW.
RESEARCH MODELS
YESTERYEARS
DOWNSTREAM RESEARCH
UPSTREAM RESEARCH
Typically Applications
Typically Conceptual
Private Funded Institutions
State Funded Institutions
Targeted End Points
“Open-Ended” Knowledge Generation Optimized use of “Public Domain
Enrichment of “Public Domain
Knowledge”
knowledge
Value Addition as measure of
Credits: Enhanced Peer Recognition
competitive edge
Profits,Market dominance
Proprietary Issues
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TOMORROW
YESTERYEARS
RESEARCH MODELS
TODAY
MIDSTREAM
Partial Funding By Private Enterprises
in Upstream Research
Issues on knowledge Flow
Benefits Sharing
Publications Research Schemes, Peer
Group Recognition etc.
Free use by Funding Agency??
Diffused Ownership!!
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TODAY
YESTERYEARS
RESEARCH MODELS
TOMORROW…….
TURBULENCE
RAPIDS
Blurring of boundaries between
IRP Multi-tier innovation process
Upstream & Downstream Research
Optimized use of global knowledge base
Overlap between disciplines
Intra-Enterprise resources
Quantification of Ownership
Extra-Enterprise inputs
Formalized benefit Sharing by Partners Global/National licensing issues
Overlapping Claims by different ownersIntricate exclusive/non-exclusive benefits
Challenges to Ownership Criteria
Sharing
Anti competition or Monopolistic IssuesOrganizational frameworks for rapid
diffusion of innovation to business
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Sociology of Technology
• Organization of technology
• Best Practices and Value Chain of the
Business is difficult to transfer
• Cooperative governance in the innovation
process
• Small Suppliers to Big Companies … very
effective systems.
• National Technology Mission
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Enterprise Networking
Expertise
Centres
Large Enterprises
SME
SME
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Demand for Patents World wide
10000000
9586045
9000000
8000000
7114126
7000000
5899089
6000000
Total Filings
4461369
5000000
3434628
4000000
3000000
2306840
1785760
1595950
1965487
2000000
1000000
0
First Filings
2774582
629611
624495
593882
640202
721657
683874
685382
702280
826572
751046
1991 1992 1993 1994 1995 1996 1997 1998 1999 2000
Ref: Intellectual Property Rights.. Unleashing the Knowledge Economy
P. Ganguli ( Tata McGraw Hill, New Delhi 2001)
Annual Patent Globalization Index (PGI)
Globalization Index
12
10
8
6
4
2
0
1991 1992 1994 1995 1996 1997 1999 2000
PGI 1.69
1.86
2.66
3.34
4.01
5.5
8.85 10.59
PGI = (Total Number of Patents Filed Worldwide) - (Number of First Filings Worldwide)
(Number of First Filings Worldwide)
Ref: Intellectual Property Rights.. Unleashing the Knowledge Economy
P. Ganguli ( Tata McGraw Hill, New Delhi 2001)
A decade of changes
• Enabling national policies and incentive
schemes to encourage R&D, technology
development and transfer
• Growth of financial institutions
• Moving into the new IPR Paradigm
• Maturing of the IPR infrastructure
• Several national agencies including industry
associations providing IPR awareness and
facilitation programmes
• International agencies getting involved in
developmental activities at grass roots….. e,.g.
UNIDO Projects, NGOs, WIPO and others.
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Developments in India
Moving into strong IPR Regime in a
phased manner during the last 35 years
while growing its infrastructure
and economy.
IPR is now a necessity to give its
economy the required competitive edge
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Indian National S&T Policy 2003
…salient features
• Vigorously foster scientific research in
universities and other academic, scientific and
engineering institutions; and attract the brightest
young persons to careers in science and
technology, by conveying a sense of excitement
concerning the advancing frontiers, and by
creating suitable employment opportunities for
them.
• Also to build and maintain centres of excellence,
which will raise the level of work in selected areas
to the highest international standards
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Indian National S&T Policy 2003
…salient features
• Provide necessary autonomy and freedom of
functioning for all academic and R&D
institutions so that an ambience for truly
creative work is encouraged, while ensuring
at the same time that the science and
technology enterprise in the country is fully
committed to its social responsibilities and
commitments
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Indian National S&T Policy
2003
.. Salient features
To substantially strengthen enabling mechanisms that
relate to technology development, evaluation,
absorption and upgradation from concept to utilization.
To establish an Intellectual Property Rights (IPR) regime
which maximises the incentives for the generation
and protection of intellectual property by all types of inventors.
Provide a strong, supportive and comprehensive
policy environment for speedy and effective domestic
commercialisation of such inventions
All efforts are made to have high-speed access to information,
both in quality and quantity, at affordable costs;
and also create
digitized, valid and usable content of Indian origin.
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Indian National S&T Policy 2003
… Salient Features
Support innovation in all its aspects through a comprehensive
national system of innovation covering science and technology as
also legal, financial and other related aspects
Set in mechanisms to achieve synergy between industry and
scientific research by creation of Autonomous Technology Transfer
Organizations
as associate organizations of universities and national laboratories
to facilitate transfer of the know-how generated to industry
Encourage scientists and technologists to transfer the know-how
generated by them to the industry and be a partner in receiving the
financial returns
Encourage Industry to financially adopt or support educational and
research institutions, fund courses of interest to them, create
professional chairs etc. to help direct S&T endeavours towards
tangible industrial goals
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India Post TRIPS…. An Audit
• 1st (1999) and 2nd Patents Amendment Act (2002)
with Patent Rules 2003; 3rd amendment bill
introduced in December 2003 has lapsed; Patent
Ordinance 2004 on December 26th 2004. The Bill for
the 3rd Amendment was passed in Lok Sabha on
22/3/05 and in Rajya Sabha on 23/3/05
• The Trademarks Act 1999 and TM Rules 2002 (rules
notified on September 15, 2003)
• Copyright Act 1957 with Copyright rules 1958
followed by International Copyright Order 1999.
• Designs Registration Act 2000 with Design rules 2001
• Geographical Indications Act 1999 with GI rules 2002
• Protection of Layouts for Integrated Circuits Act 2000
• The Protection of Plant Varieties and Farmers Rights
Act 2001
• Bio-diversity Act 2002
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Approaches to Industry –
Academic Technology
Collaboration
Only Memorandum of Understanding
Singed (MOU) with no formal IP
Clauses / Policies
Essentially no awareness of the issues.
Instructions for Technology Transfer and
IPR
Ministry of Science and Technology has issued the
guidelines "Instructions for Technology Transfer and
Intellectual Property Rights", which would help in
enhancing the motivation of scientists, research
institutions and universities in projects funded by the
Department of Science and Technology, Department of
Biotechnology, Department of Scientific and Industrial
Research and Department of Ocean Development.
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Guidelines for Technology
Transfer and IPR
Ownership of Intellectual Property:
Institutions shall be encouraged to seek protection of
intellectual property rights in respect of the results of R&D.
They may retain the ownership of such IPR. ‘Institutions’
would mean any technical, scientific or academic
establishment where research is carried out through funding
by the central/state government.
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Guidelines for Technology
Transfer and IPR
Transfer of Technology:
The institutions shall take the necessary steps to
commercially exploit patents on exclusive or non-exclusive
basis.
Royalty to Inventors: The owner institution is permitted to
retain the benefits and earnings generated out of the IPR. The
institution may determine the share of inventor(s) and other
persons from such actual earnings. However, such share(s)
shall be limited to one third of the actual earnings.
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Guidelines for Technology
Transfer and IPR
Norms for Private Industry:
IPR generated through joint research by institution(s) and
industrial concern(s) through joint efforts can be owned
jointly by them as may be mutually agreed to by them
through a written agreement. The institution and industrial
concern may transfer the technology to a third party for
commercialisation on exclusive/non-exclusive basis. The
third party, exclusively licensed to market the innovation in
India, must manufacture the product in India. The joint
owners may share the benefits and earnings arising out of
commercial exploitation of the IPR. The institution may
determine the share of the inventor(s) and other persons
from such actual earnings. Such share(s) shall not exceed
1/3rd of the actual earnings.
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Guidelines for Technology
Transfer and IPR
Patent Facilitating Fund:
The owner institution(s) shall set apart no less than 25% of
the revenue generated from IPR, to create a Patent
Facilitating Fund. The Fund shall be utilized by the owner for
updating inventions, filing new patent applications and
protecting the IP rights against infringement and for building
competency in the area of IPR and related issues.
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Guidelines for Technology
Transfer and IPR
Information :
The institutions shall submit information relating to the
details of the patent obtained, the benefits and earnings
arising out of IPR and the turnover of the products
periodically to the department/Ministry which had provided
funds.
March In Rights:
The Government shall have a royalty-free license for the use
of intellectual property for the purposes of the Government of
India.
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Several Government Sponsored
Schemes
A few Examples
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Promotion of technology transfer
……national schemes
• Stress on academic-industry-government teamwork for
targeted deliver of business oriented results through
innovative funding schemes such as New Millennium
Indian Technology Leadership Initiative (NMITLI)
http://www.csir.res.in/nmitli/nmitli.html; Drugs &
Pharmaceutical Research
http://dst.gov.in/scprog/tecdev/drugspharmares.htm;
Instrumentation Development Programme
http://dst.gov.in/scprog/tecdev/instrdevprog.htm;
Grants to Industry- PATSER Programme Aimed at
Technological Self Reliance (PATSER) http://dsir.nic.in;
Home- Grown Technology Programme (HGT)
http://www.tifac.org.in/; Department of Information
Technology
http://www.mit.gov.in/R&D/projects/index.htm#about
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Research and Development by
Industry (RDI) consisting of:
In-house R&D in industry
R&D by Scientific and Industrial
Research Organisations (SIROs)
Fiscal Incentives for Scientific
Research
Programme Aimed at Technological
Self-Reliance (PATSER) consisting
of:
Development of new or improved
technologies.
Development of special/custom
built capital goods.
Scheme to Enhance the Efficacy of Absorption and adaptation of
Transfer of Technology (SEETOT) imported technology.
consists of:
Studies and interactions
National Register of Foreign
concerning technology evaluation
Collaborations (NRFC)
and pre-industry feasibility of
Transfer and Trading in
major sectors/products.
Technology (TATT)
Technopreneur Promotion
Promotion and Support to
Programme.
Consultancy Services (PSCS)
including Consultancy
International Cooperation
Development Centre (CDC)
Chart 3
Promotion of technology transfer ……national
schemes
• National IPR Facilitating Centers
National Research Development Council (NRDC)
Partnering innovators, entrepreneurs, institutions to protect their
innovations in India and abroad and also help to commercialise
their IPR
Technology Information and Forecasting Cell (TIFAC)
Facilitating patent searches, funding and facilitating filing of
patents, partnering in commercialisation of IPR
National Innovation Fund
Working with grass-root innovators to protect their innovations
and also to facilitate technology transfer/ IPR commercialisation
Technology Incubation Programme
DST Funded incubation centers set up to facilitate
entrepreneurship development and IPR development and transfer
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Mission Led Projects
• Strategic Technologies to build competitive
capabilities…… 4 National Level Projects led by
the Principal Scientific Advisor to GOI
TIFAC : Universities, Indian Institute of
Technology ( set of them) and industries.
IPR will belong to Universities and IITs. First
rights to refusal to industry. Govt. will have marchin rights. Just initiated. Liberal licensing and
benefit sharing will be developed.
LESSONS
• Identification of relevant problem
• Investments by private industry in
their R&D labs
• Active link and utilising facilities and
expertise in Publicly Funded
Institutions and Government
Authorities
• Speedy science to development
process/product technology for
commercial venture.
Exploring global partners for the steps…… role of international
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The Present Trend
Creation of Institutional IPR Policies
Active Involvement of Industry
Associations
Introduction of courses on IPR in various
institutions
IPR Awareness Workshops in Institutions,
Judiciary, Enforcement Agencies, Courses
on Licensing Strategies, Development of
IPR Manuals for the SME Sector, etc
WIPO Partnering in this process.
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…...Several Science and Technologies
getting orphaned due to non availability
of funds to progress IPRs on global
scale
…….inadequate infrastructure,
management skills, negotiation acumen,
inadequate venture capital culture
………...No clout to negotiate due to
fragmented technologies
……..lack of patent information base
search skills, avoiding of “reinventing
the wheel”
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……Social cost of granting wrong
patents
…….high cost of litigation
…………when is traditional knowledge
legitimate prior art
and under what circumstances should it
be considered as socio-piracy
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Government
• Constitute integrated single window National
IPR Commission
• National IPR literacy Mission … Thrust
• Development of competition law as balancing
positive measures to control overuse of
misuse of IPR.
• Exploit geographical indicators to national
advantage.
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Government
•Re-structure the judiciary & enforcement
machinery for professional and speedy response
to IPR issues
•Introduce enabling National Taxation Policy to
encourage IPR trade.
•Networks for protection of grass root
innovation and innovators
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Government
• Easy and cost effective access to IPR
information.
• Set-up IPR training institutes to prepare
technically qualified attorneys
• Urgently modernize the IPR Administrative
Set-ups in the country
• Establishment of IPR facilitating centres in
the country.
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Institutional IPR Policy
 Integrating IPR into institutional mission, strategy
& project management
 Effective Use of IPR information and international
alliances
 Identifying areas of possible infringements
 Licensing strategy
 Policing of institutional IP assets
 Litigation strategy
 IPR audit
 Effective utilisation of International Conventions.

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