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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?

1 2 3

11.Ownership of IP rights

Type

By State

Examples of countries

USA 1982 Bayh Dole Act By Inventor Italy, Sweden, German, Japan By Institutions USA, Japan, Kenya

12. Benefit Sharing

S/N

for sharing 2 3 4 Sharing principle

and R&D Institutions

Only net revenue is shared Net revenue = gross income – Duration of income stream administrative expenses Sharing can be in terms of equity As long as there is revenue stream i Revenue receipt even after inventor leaves employment 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 Commercia lization 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 generation, utilization of protection IP and assets organizations and universities promote the by commercial research 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