SOME KEY ISSUES FOR CONSIDERATION IN A NATIONAL IP STRATEGY

1. Innovation and Technology Management Services T&P 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

2. Content of Presentation • IP Politics • Stakeholders • Need for IP Policies in Universities • Key Issues covered by IP Policy • Conclusion

3. IP Politics

4. 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

5. 3. The stakeholders • Universities • Inventors • Researcher • Students and research assistant • Guest researchers • Sponsor • Industry • Collaborators • Government • Public • RTOs • National IP Offices

6. 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

7. 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

8. 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

9. 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

10. 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

11. 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

12. 10.Ownership of IP rights Who owns the IP rights generated from publicly funded research? • State, • Inventor or • the RTO?

13. 11.Ownership of IP rights 11.Ownership of IP rights

14. 12. Benefit Sharing 12. Benefit Sharing Developing IP Policies for Universities and R&D Institutions

15. 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

16. 14. Privately funded research and Intellectual Property Rights • Who owns the IP assets and why • What type licensing possibilities

17. 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

18. 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

19. 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

20. 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?

21. 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

22. 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

23. 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?

24. 22. Conflict of interest and commitments • Conflict of interest • Conflict of committment Cont..

25. 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..

26. 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

27. 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..

28. Developing IP Policy

29. 26. Agreements required for implementation • Participation Agreement • Material Transfer Agreement • Confidentiality Agreement • Contract Research Agreement • Disclosure Agreement • Consultancy Agreement

30. 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

31. Conclusions • 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