Home > Topics > Institutional Policies and Strategies > IP Strategy > Editor's Summary, Implications and Best Practices

IP rights systems fulfill four purposes:

• they provide incentives for innovation
• allow for the packaging of intellectual assets into innovative processes
• encourage the diffusion of technical information, and
• allow the capturing of added value through the control intellectual assets

IP rights, and particularly patent specifications, also provide a more easily transmissible and protectable embodiment for these disembodied intellectual assets. This packaging greatly facilitates innovation. An IP system—especially a patent system—plays a key role in diffusing technological information. Finally, intellectual property management does not just lead to the protection, but actually to the control, of intellectual assets. If an organization—especially a public institution—fails to obtain IP rights for its inventions, it risks losing control over them. This may result in private entities appropriating elements of the value without major regard to the mission of public institutions, or could lead to the intellectual assets becoming useless because nobody invests in the further development of the assets.

An institution can use its IP strategy to extract the maximum benefits from its innovations; this allows it to take advantage not only of immediate opportunities but also position itself to take advantage of future opportunities, such as overseas expansion. Technology transfer offices should construct contracts and licensing arrangements so as to take advantage of all possible long- and short-term opportunities.

Organizations should have both external and internal IP strategies. An external IP strategy involves exploiting inventions (by developing them in-house, selling them, or licensing them) and what might be termed litigation, licensing, and learning. Litigation denies IP rights to others; licensing allows them to others. The issue of learning also presents a paradox. Outlicensing technologies does not only give others access to these technologies but also provide learning opportunities for the organization. This strategy is especially effective if an institution’s aim is to diffuse technology as widely as possible.

IP strategies should include valuating intellectual property, gathering information about the intellectual property of third parties, coordinating the efforts of various people, and educating the staff about the value of intellectual property. This chapter discusses three different ways to accurately valuate IP; each one is appropriate to an institution of a particular size and type. Patents can be useful sources of information, such as for scientists, since the patent application may be the first and only publication about a competing innovation. Researchers should thus perform patent searches as well as literature searches. It is for IP managers to decide when to build the skills of their employees and when to hire out. Good IP rights management relies upon good communication between IP managers and other key players. Finally, staff need to be made aware of how they can contribute to the value of their institution’s intellectual property—and how they can compromise that value.

With a good IP strategy, an organization can use its intellectual property to achieve its goals. However, if innovating institutions do not try to influence the exploitation of their own inventions, then others will do it for them in ways that may not conform with their organization’s objectives. This is one of the fundamental reasons why the public sector should take IP management seriously.

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

• There is an ongoing debate over how IP systems can achieve the optimal balance between private rights and public benefits. However, experience suggests that IP rights systems, if soundly applied and used by the public sector as well as by the private sector, are better than any of the alternatives that have been proposed in achieving public goods objectives.
• Support policies that allow public-sector institutions to use, protect, and exploit intellectual property (patents, copyrights, trademarks, trade secrets, and plant variety protection systems).
• Incorporating IP policies into national public sector institutions is one need. But such policies should span across the broader area of general trade and industry policies.
• It is important to create an effective, enforceable system for protecting and promoting local innovation. An infrastructure should be in place to enforce the system, for the diffusion of knowledge, and for the promotion of the benefits of the IP system to potential users.

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

• If yours is an R&D-related organization, it may be wise to combine the role of IP manager with that of technology transfer office (TTO) manager. Combining the roles will help control the exploitation of technology produced by the organization and provide advice on research contracts with external organizations.
• The management of IP rights is a way not just of protecting, but of controlling, the underlying intellectual assets that IP rights protect. Public-sector institutions, especially, will want to control their intellectual assets so that they can be used (and licensed) for the greater public good.
• The first step to creating an IP-management strategy is to take a resource-based view of an organization’s operations.
• All organizations want to extract the maximum benefit from their innovations, whether they do so through licensing or the sale of intellectual assets. This applies equally to monetary benefits as it applies to humanitarian and social benefits.
• Successful institutional IP management requires organizing resources and coordinating expertise. Many experts are needed: legal specialists, patent and general counsel, R&D and licensing managers, and business specialists.
• Senior managers need to guide and oversee the management of the organization’s intellectual property.

For Scientists

• Conduct patent searches along with literature searches when preparing your research projects. A patent application is often the only or the first publication available that describes a competing technology.
• Communication between researchers and IP specialists is very important.

For Technology Transfer Officers

• All organizations want to extract the maximum benefit (monetary or otherwise) from their innovations, whether they do so through licensing or sale of intellectual assets.
• Just as a patent attorney drafting claims will frame them as broadly as the prior art allows, thereby ensuring that the full scope of patent protection is maintained even as new uses for the invention are developed, so your office should construct contracts and licensing arrangements so that you can take advantage of all the possibilities.
• By outlicensing technologies, you will not only give others access to your technologies but also provide learning opportunities. This strategy is especially effective if your institution’s aim is to diffuse technology as widely as possible.