Home > Topics > Monitoring, Enforcement, and Resolving Disputes > Policing Intellectual Property > Editor's Summary, Implications and Best Practices

Intellectual property is not a static asset. It is dynamic, requiring ongoing, coordinated, skilled management practices that will protect its value and maximize its utilization. This is a fundamental IP best practice, regardless of whether an institution is public or private, located in a developed or developing country or if its mission is directed towards commercial or public interest concerns. As this chapter points out, a university’s intellectual property cannot be simply shelved and forgotten. Intellectual property, with patents as a particularly cogent example, should be managed, monitored, maintained and policed in a continual “cultivation” of IP rights.

As the chapter makes clear, it is important to initially understand some basic, albeit oft misunderstood, terminology and concepts. For example, infringement is conceptually analogous to trespass, in that it too is an invasion and/or misappropriation of another’s exclusive property right. Hence, identifying and taking action to remedy infringement is an essential part of IP ownership, which requires a systematic, best practices approach involving informed policies and institutionalized procedures.

Maintaining the integrity and value of university intellectual property is, as the chapter points out, a systematic, strategic process. First, it is important for a university technology transfer office to consider claim structure and scope when drafting and filing patent applications. Unless the claims of a university patent are sufficiently broad so as to confer clear economic potential, prospective licensees will be reluctant to enter into commercialization agreements or partnerships. Second, it is important to stay vigilant, establishing surveillance protocols for possible infringement of university patents. For example, inventors should be contacted on a regular basis and asked if they know of anyone who is or might be infringing their patents; technology transfer staff members should review key media related to the technology on a regular basis to watch for potential infringers.

When evaluating potential infringement of university patents, it will be essential to have a basic understanding of the categories of infringement:

• Literal infringement, where each and every element of a patent claim is found in the alleged infringing product or process
• Doctrine of equivalents infringement, where the alleged infringing product or process is substantially the same as the patented product or process
• Contributory infringement, where a party contributes to infringement of a patent by selling a component that has no other use but as part of a patented product
• Inducement to infringement, where one actively and knowing aids and abets another who is directly infringing a patent

Surveillance is not only sound business practice, but is essential to maintaining and preserving patent rights. For example, the lack of surveillance and action can lead to a loss of patent rights pursuant to two defenses in equity:

1. Laches, which is when the patentee waits too long (an inexcusable delay) before taking action against a presumed infringer
2. Equitable estoppel, which is when the presumed infringer, relying on actions or communications from the patentee, reasonably believes that he can practice the patented product or process

Patent infringement may lead to a suit. However, litigation is expensive, risky, uncertain and often protracted. Hence, alternative dispute resolution procedures such as mediation or arbitration are usually preferable options. Often a settlement, such as mutually agreeable license terms, can be amicably reached. But, if litigation becomes inevitable, then a series of questions need to be addressed. These include whether to use in-house or external counsel, whether to file suit based on patent infringement or breach of contract, and where to actually file the lawsuit (that is, venue).

The chapter concludes by stating that good license and licensee hygiene is the foundation for policing and maintaining university intellectual property. In this regard, university technology managers should:

• Review the university’s license agreements on a regular basis
• Talk to the university’s licensees about the marketplace
• Take heed if licensees complain that there are infringing activities occurring
• Act quickly to contact possible infringing parties so as to inform them of their unauthorized activities

Credible communication, with conviction, that the university is serious about protecting its IP assets will go a long way to bring infringers to the table to discuss the issues and negotiate a mutually beneficial outcome.

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

• Intellectual property is a dynamic asset that public sector institutions should continually manage, maintain and protect. Via adequate funding, and other means of support, public sector technology transfer offices will be enabled to properly manage their institutions’ IP assets, making the most out of the value of these IP portfolios.
• As an IP system develops in a country, a clearly written statutory code, combined with a reliable system of enforcement and fair adjudication, becomes increasingly indispensable. Support policies and promote legislation that builds this legal infrastructure. It is a long-term investment that will pay off handsomely.

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

• University policy should help guide when making critical decisions as to whether or not to seek patent protection for inventions arising out of its laboratories. Of course, these decisions should be consistent with the university’s overall institutional mission.
• Public-sector generated intellectual property should be managed according to best practices, yet this management will likely differ considerably from private-sector practices. For example, whereas broad claim patents will foster a public-sector institution’s mission of widespread distribution and access to technologies, narrow claim, defensive patents are more appropriate for promoting public-sector objectives of protecting proprietary products and processes.

For Scientists

• Help your institution’s technology transfer office to monitor activities, conducted by third parties, which appear to be infringing on its IP rights.
• Help your institution’s technology transfer office to monitor licensees, such that they are acting in a manner that is faithful and pursuant to the terms of their agreements.
• Keep your institution’s technology transfer office informed about any intellectual property arising from your research program. That is, help them to harvest valuable inventions.
• Work with your institution’s technology transfer office and patent counsel to draft patent applications that make the greatest contribution towards serving your institution’s mission.
• Keep laboratory records and notebooks organized, ideally consistent with your institution’s laboratory notebook policy. These will be essential for drafting patent applications prosecuting patents and, if necessary, pursuing litigation.

For Technology Transfer Officers

• Establish a system in the technology transfer office for evaluating university-generated intellectual property, for example whether or not to seek patent protection, and, if patenting is chosen, how to best draft patent claims and prosecute the patent applications.
• Vigilantly monitor and guard your institute’s intellectual property. This will require detecting potential infringing activities of non-licensed third parties and unauthorized activities of licensed parties.
• Understand that patent infringement litigation is really a final recourse. Litigation is unpredictable, risky and expensive. Therefore, consider other options such as licensing negotiations or alternative dispute resolution techniques (mediation or arbitration).
• When considering a possible case of patent infringement, deciding when to involve patent counsel, and whether to use in-house or external counsel, are critical considerations. Establish a general set of guidelines (such as if there is a valid business reason to proceed with an infringement action) for arriving at such a decision.