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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.

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slide1

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

content of presentation
Content of Presentation
  • IP Politics
  • Stakeholders
  • Need for IP Policies in Universities
  • Key Issues covered by IP Policy
  • Conclusion
slide4
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
slide5
3. The stakeholders
  • Universities
  • Inventors
    • Researcher
    • Students and research assistant
    • Guest researchers
  • Sponsor
  • Industry
  • Collaborators
  • Government
  • Public
  • RTOs
  • National IP Offices
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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

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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
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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
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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

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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
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
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

11.Ownership of IP rights

12 benefit sharing
12. Benefit Sharing

12. Benefit Sharing

Developing IP Policies for Universities and R&D Institutions

13 government rights
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
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
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
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
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
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
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
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
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
22. Conflict of interest and commitments
  • Conflict of interest
  • Conflict of committment

Cont..

23 conflict of interest and commitments
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
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
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..

26 agreements required for implementation
26. Agreements required for implementation
  • Participation Agreement
  • Material Transfer Agreement
  • Confidentiality Agreement
  • Contract Research Agreement
  • Disclosure Agreement
  • Consultancy Agreement
27 requirements
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
slide31

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