Home > Topics > Innovation and IP Management: A Contextual Overview > Ensuring Developing-Country Access to New Inventions: The Role of Patents and the Power of Public Sector Research Institutions > Editor's Summary, Implications and Best Practices

University technology transfer professionals are becoming more aware of their obligation to ensure that the poor have access to medicines that have been developed from basic research conducted in their universities. However,

1. Many university administrators, technology transfer officers, and businesspeople are unaware of the need for new health technologies in developing countries.
2. Few people know how to incorporate patenting and licensing practices into global access strategies.
3. Best practices for global access strategies have not yet been defined.

This chapter describes several possible strategies for ensuring both that the poor have access to technologies and that for-profit companies have incentives to develop those technologies. The Association of University Technology Managers (AUTM) has formed Technology Managers for Global Health (TMGH), whose purpose is to draw attention to global health issues and compile and promote a collection of best practices, policies and licensing terms that can then be distributed to AUTM members and others. The National Institutes of Health (NIH) has issued guidelines on the patenting and licensing of research tools as a way to increase global access to health innovations. However, awareness is only the first step; none of these strategies will work unless they meet the needs of both research institutions and the companies they work with.

When universities implement consistent and effective licensing strategies, they not only stimulate investment in research but also ensure that the products of that research are affordable and widely available in developing countries.

Careful patent-filing strategies can help ensure that developing countries have access to the technologies they need.

• When using a prohibition of filing strategy, one does not file for patent protection in developing countries if there is a very large market for the product in developed countries.
• It may be a good idea to file a patent in developing countries if those countries create the primary demand for the drug or vaccine in question. Patents can provide incentives for private sector development, and also provide powerful tools for consolidation of resources via aggregation of developing world markets.

Hence, questions to consider include: whether it is better to prohibit or to require filing patents in developing countries, whether patents encourage private-sector investment by aggregating the developing world market, what kind of license should be granted, and what requirements for development milestones, product delivery in developing countries, pricing, or sublicensing options work best.

There are a number of licensing strategies:

• Licenses can be exclusive, nonexclusive, or a combination thereof;
• Specifying milestones, such a requirement that the licensee has to contribute a minimum toward the development of a product earmarked for developing countries;
• Requiring that companies deliver products to developing countries;
• Pricing controls in developing countries;
• Sublicensing, which ensures that the licensee finds partners who can move the product to developing countries

However, as the chapter points out, there are no clear answers as to how best to increase global access to necessary technologies. Each of the above strategies has been tried, but they are all relatively new and each situation will require a tailored solution. There are no one-size-fits-all approaches. The chapter concludes by urging everyone to build upon their own experiences and find creative solutions.

Key Implications and Best Practices

Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.

For Government Policymakers

• Public research institutions (such as universities, medical schools, and other non-profit institutions that are engaged in biological, medical, and agricultural research) should be allowed to protect their inventions. A system that allows technologies to be patented and licensed will both help countries to reach their economic goals and better serve the poor.
• Encourage and fund national technology transfer managers’ associations to whatever extent feasible. Such associations are working to determine best practices in licensing.
• Promote regional and international networks that strive to promote best practices in technology transfer, licensing, and IP management.

For Senior Management (university president, R&D manager, etc)

• Ensure that technology transfer officers have ample opportunities for professional development and networking. Technology transfer is a field in which much information is shared informally. Professional societies (both national and international) are excellent resources.
• A one-size-fits-all licensing policy is rarely effective. Technology transfer offices should be allowed to use different licensing strategies, depending on circumstances.
• Make an ongoing effort to raise staff awareness about the role of technology transfer, IP management, patenting practices, and licensing.

For Scientists

• Your sustained interest in your invention is important if it is to reach the marketplace and benefit those who most need it.
• It is important to collaborate with your technology transfer officers so that your research can be further developed.

For Technology Transfer Officers

• Join professional national and international licensing societies whenever possible. Consider becoming active in the Association of University Technology Managers (AUTM).
• Ensure that your institution has robust and reasonably flexible patenting and licensing policies. Work toward making these policies into industry norms.
• The patenting and licensing of research tools and research materials (where broad access stimulates innovation) should be handled differently than the patenting and licensing of fundamental inventions such as compounds that require significant follow-on investments.
• It is important to realize that creative licensing strategies will help your institution gain the greatest benefits from the research it conducts. Such strategies include the following: the judicious balancing of exclusive and non-exclusive rights, definition of field of use (whether application-based, geography-based, or crop-based), setting appropriate milestones, requiring to deliver products to developing-country markets, and exercising control over pricing.
• Institute educational programs in your organization that raise awareness about the importance of technology transfer and IP management. These programs should be interesting, informative, and entertaining. They should motivate the administration, staff, and scientists to seriously think about the role of intellectual property in advancing health and agriculture.