Home > IP Topics Index > Specific Strategies and Mechanisms for Facilitating Access to Innovation > Facilitating Assembly of and Access to Intellectual Property: Focus on Patent Pools and a Review of Other Mechanisms > Editor's Summary, Implications and Best Practices

Biotechnology is complicated. The technology is complicated; the politics are complicated; getting access to intellectual property is complicated. This chapter tackles the latter. It examines how to assemble the intellectual property needed, not just for innovation but also for development and distribution. Providing a brief overview of IP assembly options and mechanisms, it focuses on the pros and cons of patent pools, which are receiving more and more attention as possible tools for improving technology transfer to developing countries.

The chapter considers royalty collection agencies, information clearinghouses, technology clearinghouses, open-source innovation clearinghouses, brokers and other kinds of facilitators, IP management services, IP commercialization agents, integrated commercial services, company-to-company arrangements, and other public technology transfer and financing mechanisms. If you want to understand the full range of options available for assembling intellectual property, this survey is required reading.

Patent pools, however, receive the chapter’s fullest examination. There are many forms of patent pools, but essentially they allow for the interchange (cross-licensing) of rights to essential patents by a number of companies. They also include an agreed upon framework for out-licensing the pooled intellectual property to third parties. A patent pool offers one big benefit: it can cut through patent thickets to provide access to critical technological innovations. But patent pools are also risky: the agreement to share technologies may run afoul of antitrust issues. And there are other pros and cons:

• patent pools allow for the transfer of intellectual property, not the transfer of technology. Know-how and trade secrets may also be required to use the intellectual property.
• patent pools have generally flourished when all companies in a sector are stymied by restrictions on access to intellectual property. This makes them willing to compromise. It is unclear whether or not pharmaceutical companies feel similar inclinations.
• patent pools have been most successful in the electronics industry, since they facilitate industry-wide standards that create larger markets. Again, this may not apply to drug companies.
• patent pools are also expensive to create and maintain.

Despite these reservations, the benefits of patent pools should are strong. They create an efficient “one-stop shop” for intellectual property, eliminate stacking licenses, avert litigation, decrease research and administrative costs, and can greatly improve the speed and efficiency of technological development. It’s worth remembering, however, that patent pools are not the only ways to achieve these benefits.

To help policymakers determine the appropriateness of patent pools for their unique situations, the chapter provides a ten-step checklist for deciding whether or not to set up a patent pool and a ten-step procedure for setting up one. Some legal pitfalls associated with patent pools are pointed out and some general suggestions are offered for identifying and avoiding them. The chapter also provides historical examples of patent pools, both in and out of the field of biotechnology. Diagnostic genetics receives special attention as an area where patent pools may be quite advantageous.

It is clear that patent pools have the power to bust patent thickets, but they are not simple panaceas for managing intellectual property. One solution among many, a patent pool should be carefully considered but not automatically endorsed as the best option for gaining access to intellectual property.

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

• Promote policies and laws which, consistent with national laws and international treaty obligations, foster and enable efficient IP assembly (or in-licensing by national institutions to obtain freedom to operate and the freedom to license bundles of technologies to manufacturers).

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

• Despite the hype and potential benefits about patent pools that have been so successful in the electronics industry, much work remains to be done before they can become routine in the biological sciences.
• In addition to patent pools, there are various other mechanisms for IP assembly. As groundwork for working with partners in IP assembly initiatives, two things will be necessary. First, institutionalization of demonstrable IP capacity is essential. Second, building and cultivating international networks is equally essential.

For Scientists

• IP assembly involves building dynamic networks of committed professionals. Your research efforts can create local, regional and international collaborations; as such, your contributions can be substantial, and your networks make you a valued and essential member of the team.

For Technology Transfer Officers

• Patent pools are one of the IP assembly tactics available. However, patent pools are really only workable when certain, and indeed very specific, circumstances are present. Furthermore, their usefulness should be balanced against the possible perception that they constitute monopolistic cartels.
• There are many options available for assembling intellectual property. Depending on the specific IP issues addressed, different assembly options maybe more favorable. Therefore, know the mechanisms of IP assembly and how and when they should be best applied.