Model Intellectual Property Policy for Universities and Research Institutions in Countries in Transition

Mr.  Michal Svantner, Director, Division for Certain Countries in Europe and Asia, WIPO

Specific featuresof Countries in Transition

Specific features:- lower IP awareness inadequate in comparison with the growing

performance of the industry and export of the products - high cost of international protection of IPRs - low awareness of legal aspects at research institutions, universities

as well as within the business sector - lack of qualified mediating entities such as technology transfer

agencies and IP/licensing agencies - level of economic development and place in the world economic

sharing- lack of match between business and technology needs- EU component- enforcement issues

Background

Heads of the IP Offices of the Visegrad countries in early 2007

During the Strategic Planning Meeting in July 2007 in Moscow

Reconfirmed in Ljubljana at the Strategic Seminar for the Use of IPRs for Development in November 2007

Interregional Symposium on the Use of IPRs Involving Modern Management Methods, Tashkent, January, 22 to 24, 2008

WIPO Tools

Guidance for Elaboration of IP Strategies – revised version will be available shortlyManagement of Academic Intellectual Property and Early Stage Innovation Special Features of the Copyright Systems Nation Branding in Countries in TransitionEnforcement of Intellectual Property RightsRecommendations on Strengthening the Role of Innovative SMEs in CIS countriesTool on IP Teaching in Countries in TransitionTool on Economic Aspects of IP in Countries in TransitionTool on Traditional Knowledge in Countries in TransitionTool on Digitalization of Intangible Cultural Heritage in Countries in Transition

IP Policy - BackgroundIP Policy - Background

Requested by certain countries during the Inter-regional Consultation on Management of Academic Intellectual Property (IP) and Early Stage Innovation in Countries in Transition, Budapest, October 27 and 28, 2010

It is expected that the results of the Model Intellectual Property Policy for Universities and Research Institutions in Countries in Transition will promote and stimulate universities to elaborate their own IP policies.

Objectives

Facilitate the efforts of Universities to elaborate their own IP policies, concerning the rights related to the protection and exploitation as well as the obtainment and transfer of intellectual products, and the manner of determination of the author's share in the fees and other revenues arising from the exploitation of the product, as well as enhancing the moral acknowledgement of authors.

To identify the legal and institutional elements of the early stage innovation systems (such as innovation and IP laws, roles of the central innovation promoting bodies, IP policies, TTOs, licensing activities, spin-offs, incubation);

To benchmark the best practices in comparison with those of the developed countries;

Objectives – cont.

To describe a feasible model for the academic intellectual property in countries in transition, including management methods and protocols for the processes;

To provide legal embodiment of IP managements & technology transfer (references to innovation acts, university IP policies);

To facilitate the efficient evaluation and maintenance of records on the intellectual works created by the researchers and faculty, as well as other persons falling under the scope of these regulations of the University in the course of their research activities.

The need for an IP policy at research institutions

To safeguard the University's overall interests in managing collaborative research activities and innovation transferSignificant benefits can be generated through R&DThere are several stakeholders in the R&D process each of them contributing to the generation or exploitation of IP. These include:universitiesresearchers/inventorsstudentsresearch sponsorsindustrial partnersmediator organizations (TTOs)organizations exploiting University IP (licensees)investorsothers.

Objectives of an IP policy

Promote scientific investigation and research;Provide certainty in research activities and technology-based relationships with third parties;Set out the Institute procedures surrounding the identification, ownership, protection and commercialization of Intellectual Property;Facilitate the maintenance of records on IP;Ensure the timely and efficient protection and management of IP;Ensure that economic benefits arising from the commercialization of IP are distributed in a fair and equitable manner that recognizes the contributions of the Inventors and the Institution as well those of as any other stakeholders;Enhance the reputation of the Institute as an academic research institution and a member of society as well as the reputation of the Researchers through bringing the research results to public use and benefit.

Issues to be addressed by an IP policy

Scope of the policyLegal issues relating to the status of researchersExternal sponsorship, research collaboration with third partiesOwnership of IPDisclosure, protection and exploitation of IPRevenue sharingConflict of interest and confidentiality issues

Scope

The policy should apply to all researchers of the Institute, including those with student status and visitor scientists who use the Institute resources and who perform any research task at the Institute.

It should cover all IP created by researchers of the Institute.

Inventions, technologies, developments, applications, discoveries, improvements, materials, compounds, processes and all other research results and tangible research properties, whether patentable or not.

Trade or business secret/know-how: Many different items can qualify for trade secret protection, such as a formula or a process, so long as it provides a business with competitive advantage and the business takes appropriate steps to maintain the secrecy of the information.

External sponsorship, research collaboration with third parties

An agreement should be negotiated before commencing any research-related activity in collaboration with external partners.

In certain cases it may be beneficial to the Institute to enter into agreements with external sponsors of research and third parties that are exceptions to the provisions of the Policy. Such agreements may be: Research Service Agreement, Cooperative Research and Development Agreement, Material Transfer Agreement, Confidentiality Agreement, etc.

Depending on the relative intellectual and financial contributions of the Institute and the third party to the conception of the intellectual property, it may be appropriate for either cooperating parties to own the intellectual property and/or share in the revenue generated from the commercialization of that.

Any confidentiality provision whose purpose is to delay public disclosure for the purpose of protection should usually not have effect for longer than several months.

Ownership - Inventorship

Generally all rights in IP created by the Researcher in the course of his or her duties and activities of employment belongs automatically to the Institute.

However in case of IP created in the course of a sponsored research or other type of agreement with a third party, the ownership should be determined according to the terms of such agreement.

In case the Institute waives its rights over the IP, generally the Inventors shall have the option to acquire related IPRs.

In some countries the Institute does not acquire any IP rights. Inventors shall be the sole owners.

Service invention - The Institute shall be the IP owner by law.

Expected activities of TTOs in managing IP

Negotiating research cooperative agreements where IP issues are concerned (with the researchers involved)

Receiving invention disclosuresPreparing opinions on patentabilityEvaluting the commercial potential of the invention or other IPObtaining patent protectionSeek exploitation of IP - find commercial development partnersManaging the process of commercialization and disseminate innovation culture among researchers.

Disclosure to the TTO

Why? - The TTO can assist in the evaluation and the commercialization of the invention. Commercialization can lead to benefits for everyone – the inventors, the clinic, businesses, and society.How? - Generally there are IDX forms available at the TTO.When? - It is recommended to report IP as soon as possible and certainly before submitting results and papers for publication and presentation. Protection and successful commercialization of IP might depend on prompt and efficient administration.What? - Every type of IP which is considered to be new and having commercial value.

Public disclosure

Premature disclosure - release of information to the public before a patent application is filed. It can disqualify an invention for patent protection or otherwise jeopardize commercial exploitation.

What are some of the potential disclosures? - Technical presentations, Poster sessions, Abstracts, Grants, Publications, Internet, Other informational and disseminating material.

Publishing vs. patenting - These options are not mutually exclusive – the Inventor can publish and patent without losing any patent rights. However, the decision to pursue patent protection is largely a business decision, while the decision to publish is a scientific one.Publishing vs. know-how/trade secret.Importance of confidentiality agreements - to be used by researchers and institutes.Medical sector - with regard to the social benefits of medical inventions it may also raise the question whether it is ethic handle these solutions as trade secret.

Evaluation and protection

To launch protection and exploitation is business decision, therefore proper scientific and economical evaluation is critical.Patent protection advantages:

exclusive right to exploit the inventionthe invention can be published right after acquiring the priority date

Patent protection disadvantages:lasts for 20 yearsexpensiveone have to file an application in all countries where you need protectionnot every new discovery can be patented

It is important to keep records of the events leading up to one's invention (e.g., laboratory notebooks), as such materials can become important in establishing: the true inventor (s) of an invention and the dates that conception and/or reduction to practice took place.

Income sharing

An incentive to Inventor (s) should be provided by distributing revenue generated from the commercialization of the IP.The principle of sharing revenues should be defined individually for each Institute, taking into account all the stakeholders with whom the Institution's income shall be shared, as well as general economic factors.It is a general principle that the Institute's share increase as the Net income increases.In cases there is more than one Inventor, the Inventor`s share is divided between the Inventors in a proportion which reflects their respective contributions.

Summary recommendations

in order to avoid legal conflicts and to ensure the best possible exploitation modeTo researcher staff:

find out whether the Institute has a policy regarding IP managementconsult with the TTO or other official representative of the clinic before consulting your new results or research plans with third parties. If this is not possible, at least sign a confidentiality agreementbefore launching any cooperation with third parties, an appropriate agreement should be signeddisclose all IP generated in the course of the clinical or research activity as soon as possible to the clinicconsider protection business exploitation before publishing new resultsconsider conflict of interest when working at I for outside organizations

To enterprises, external partners:consult with an official representative of the research institute regarding cooperation and IP issues - it is not always enough to visit and negotiate with the researchers

Thank you for your attention.

Michal SVANTNERDirector

Division for CertainCountries in Europe and Asia

World Intellectual Property Organizatione-mail: michal.svantner@wipo.int

http://www.wipo.int/dcea/en/Tel.:+41-22-338 8046

Fax: +41-22-338 8110