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ipHandbook Blog

Your source for expert commentary on IP management issues.
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About

Editor-in-Chief,   Anatole Krattiger

Editorial Board

Concept Foundation

PIPRA

Fiocruz, Brazil

bioDevelopments-   Institute

Site Guide for Scientists

As a research scientist or inventor, you need a familiarity not only with general principles of IP policy and strategy but also the practical matters of running a laboratory and collaborating with the licensee of your invention or of starting your own company to develop the technology.

This Site Guide for Scientists presents you with a summary overview of what you need to know about IP and how you can benefit professionally by engaging others to help manage and commercialize the IP you create. This Site Guide also recommend to you selections from among the 175 chapters and case studies of this Handbook that are most likely to be informative and helpful to you as a scientist and inventor.

Key implications and Best Practices for Scientists

Inventions, Inventors and Innovations

  • Research is one of the very foundations of innovation. Research leads to discovery; discovery fosters invention; inventions nourish innovation. Your work is part of a larger innovation process that spans R&D across the public and private sectors. (more>>) As the creator of inventions and technologies, your role in technology transfer is critical. (more>>) So please read on!
  • As a scientist, you recognize the interconnected web of science, R&D, technological advance, and commercial investment. Take the time to share these insights with your institution’s technology transfer office (TTO) and its senior managers. (more>>)
  • Determining how to translate an invention into an innovation that makes a difference in people’s lives (economically or socially) is one of the principal reasons TTOs exist. (more>>)
  • The emerging global system of innovation in health and agriculture creates opportunities worldwide. This key concept, that public interest can be served through private rights, has profound implications for the management of innovation, technology transfer, market competition, and economic development in every country, regardless of its economic status. (more>>)
  • Countries engaged in reforming their R&D and technology transfer efforts often include royalty-sharing provisions for scientists in publicly funded research institutions. This often requires assignment of ownership rights to the institution and a duty to disclose inventions. This should be seen as an incentive to turn inventions into innovations that benefit society. (more>>)
  • While access to foreign technology is integral to development, it is also important to focus on capturing the national innovation potential of any country. Through the activities of your research program, you may be positioned to facilitate the development of indigenous innovation and traditional knowledge. (more>>)
  • Your continued interest in your invention’s development is important. This will help it reach the marketplace, and especially benefit those who most need it, yet can least afford it. (more>>) Hence, as the inventor, you can significantly influence how your technology is used. For example, you might request that licenses reserve your right to continue research using your inventions or reserve rights for humanitarian uses of your technology. (more>>)
  • Collaboration with private sector entities can significantly contribute to your institution’s broader participation in innovative initiatives, particularly product development. (more>>)

Networks

  • Collaborations create contacts. Contacts build networks. Networks provide opportunities. (more>>)
  • Collaboration is often based on establishing personal contacts and building strong professional networks; these foster the formation of collaborative research projects and are fundamental for effective sharing of know-how and show-how. (more << here and here >>) Accessing other’s intellectual property can be facilitated through networks of committed professionals. (more>>)
  • Keep your TTO informed about your networking activities, particularly if there is a possibility of shared research endeavors. These collaborative research projects, and your network in general, can be starting points for technology transfer and licensing. (more << here and here >>)

IP Management

  • Your role can best be carried out if you have good relations with your TTO. But fulfilling your role also requires an understanding of your institution’s IP policy. The policy will likely articulate ownership of intellectual property, conflict of interest, the handling of confidential information, and more. (more>>)
  • The purpose of such a policy, and more importantly of your institution’s IP strategy, is not just to protect your inventions, but also to control technologies and IP assets such as to determine how these can be managed to spur economic growth and contribute to the greater public good. If your institution does not “own” anything, how can it place conditions upon its use? (more>>)
  • As your institution implements IP policies and patenting strategies, your right to publish is not jeopardized. IP protection and licensing are but one form of knowledge transfer that, if well undertaken, can very much be in the public interest. (more>>)
  • Philanthropic donors increasingly expect to find IP management components in grant applications and to understand how intellectual property will be used to achieve global access and humanitarian benefits. This is one reason why a close relationship with your TTO is important since your colleagues at TTOs may increasingly be required to prepare access strategies as part of your grant applications. (more>>)
  • When your institution conducts or commissions an IP audit, view this as an opportunity to better identify the intellectual property generated in your research program, to improve and streamline the management of third-party intellectual property (allowing you to concentrate more on research), and to contribute to the formulation and execution of an IP strategy that benefits your program and its global impact. (more>>)
  • It is your responsibility to disclose any potential conflict of interest. Know your institutional conflict of interest policy. Most conflict of interest issues arise when procedures are not properly followed. (more>>) You are not guilty of anything if you have a potential, perceived, or even real conflict of interest. It is only a matter of “managing” these conflicts. (more>>)
  • Everyone in your group or laboratory should know the obligations entered into through any agreement that affects your program. (more>>)
  • Increasingly contracts will include milestones. Research schedules and goals may be directly linked to specific milestones, and you need to know how such milestones might impact your program. (more>>)
  • Published information, or research tools provided by a colleague, may be covered by IP rights. This should neither deter nor distract you from good science. An awareness of basic IP management best practices will help you to understand and identify potential IP issues. (more>>)
  • Encourage your TTO to organize occasional seminars on the basics of IP management. This will facilitate communication with your TTO staff and answer your questions about IP management. (more>>)

Laboratory Notebooks and Records

  • Good data management and accurate record keeping through comprehensive laboratory notebooks (more>>), is the foundation for building a portfolio of IP assets. Essentially, best practices in scientific record keeping should be precisely the same as best practices in record keeping for purposes of IP management. (more << here and here >>)
  • The confidentiality of your data may be critical in ensuring global access. Data is a valuable form of intellectual property that can be used in licensing negotiations. (more>>)
  • Confidentiality agreements are meant to protect sensitive information exchanged between parties and are not inconsistent with public sector missions or research publication. Confidentiality agreements rely on a culture of trust, not a culture of secrecy. (more>>)
  • Make an especially strong effort to document the origin of biological and other materials you use in your research, and keep a comprehensive record. (more>>)

Invention Disclosures and Patenting

  • Recognize when you actually have an invention (it is generally much, much earlier than most scientists think)! Invention disclosures are the first step in protecting intellectual property. Disclose early and often. But expect only a small portion of your invention disclosures to lead to patent applications. (more>>)
  • By filing an invention disclosure with your TTO, you are initiating a dialogue. Even if the TTO does not immediately file a patent based on your first invention disclosure, it is a process that has started, and follow-up will be much easier. (more>>)
  • Invite your TTO liaison to visit your laboratory occasionally and discuss with you and your research team what you have been doing. Discussions with technology transfer experts, especially patent attorneys, can help you to identify inventions. (more>>)
  • If patenting and public disclosure are your goals, consult with your institution’s technology transfer manager prior to disclosure. Your institution should have a mechanism to determine whether or not a patent should be filed without significantly delaying publication. Just be aware that premature publication can lead to a loss of IP rights. (more>>)
  • Patents often disclose more technical and scientific information than academic publications. Read published patent applications or issued patents in your field. You can access this information for free on the Internet. (more>>)
  • Your institution’s technology transfer managers will need your input in order to make strategic decisions about where to pursue foreign patent applications. You likely know where different competitors are located and where products arising from your research are needed. (more>>)
  • When you disclose an invention to your TTO officers, inform them of any ideas you may have on the various fields of endeavor in which your invention could find applicability. This will help the TTO plan patent applications and later design license agreements under different field-of-use licenses. (more>>)

Licensing Inventions and Marketing Technologies

  • The “unique selling proposition” of your invention or technology (the features, advantages, or benefits it offers) may not be the science behind the technology, but your invention’s use. (more>>)
  • Technology marketing is a process by which owners of a technology create relationships, between themselves and potential users, which will drive technology development and availability, through commercialization or other methods. (more>>)
  • When speaking to potential licensees or investors, it is often best to, in extremely simple language, stress the potential applications of your invention rather than the superb science. (more>>)
  • Your role in field-of-use licensing is essential. You can provide your TTO with valuable information on licensable components for different applications and entities. (more>>)
  • In agreement negotiations, your role may be to share relevant information, advice and insights. In some cases, especially with collaborative research agreements, you may be an integral member of a team that will address issues such as research plans. (more>>)
  • Detailed aspects of negotiations, such as collaboration or license agreements, are conducted by the relevant offices of your institution. However, do participate in the internal discussions prior to licensing negotiations. Your input will be important and should be valued. (more>>)
  • Material transfer agreements are tools for gaining greater access to tangible materials from a number of sources (scientists from the public and private sectors, both in your own country and abroad). (more>>)
  • In most institutions, you will not be authorized to sign most agreements without review by counsel or by your TTO. Know whether or not you are authorized to sign a given agreement. (more>>)
  • Understand the obligations that are attached to different funding sources. The impact of joint public and private financial support can be complex but will increase, particularly as your institution positions itself strongly within an innovation cluster and engages in product development. (more>>)

Scientists and Entrepreneurs

  • Not all university inventors are entrepreneurs interested in being company founders, and not all spinout company founders from a university are the technology’s inventors. Involvement as a company founder entails a greater degree of risk and commitment to move an invention to commercialization. (more>>)
  • Much of the success of a spinout or start-up will depend on the entrepreneurial spirit at the institution. The more entrepreneurial, the more likely it will be that someone wants to set up a new company. (more>>)
  • Venture capital investors combine a broad view of the market with solid technical expertise. Venture capital investors can be great allies, but will impose, for good reasons, distinct conditions on the project. Be open, patient, and willing to work with investors. (more>>)

Freedom to Operate

  • Collaboration among scientists and the professionals who conduct freedom to operate (FTO) analyses is essential. The scientist can explain the science and technology to help others understand the materials and methods. A scientist is the expert in the area of research and can provide important leads to other scientific groups and publications. (more>>)
  • Teams conducting FTO analyses will also need to understand precisely what the product is, how it was developed, what materials were used, and what reports were prepared. The purpose is to ascertain that all relevant information has been considered in the FTO analysis. (more>>)
  • The results of an FTO analysis may allow you to make better use of technologies in the public domain and inform your choice of research tools or vector constructs. The analysis also may alert you to scientific discoveries and inventions related to your work. (more>>)
  • Knowledge of how to access, manipulate, and mine patent and publication search tools for valuable information will serve you and your program well. Hence, become versed in Internet database search skills, and ask your TTO to organize short patent search workshops. (more>>)

Maintaining IP Rights and Obligations

  • As a scientist, you should regularly review all of the agreements that relate to your projects. This specifically includes ensuring that milestones are met, royalties paid, and that any other obligations are taken care of. (more>>)
  • Your institution should continuously monitor patent infringements through various surveillance protocols. A lack of patent enforcement can lead to a loss of patent rights. Your role in this is important, since you are well connected in the area of your research and can indicate to the TTO which companies might be practicing your inventions. (more>>)
  • If your institution conducts alternative dispute-resolution procedures such as mediation or arbitration, you might be called upon to participate, particularly if aspects of your research program are involved in the ongoing discussions. (more>>)

Biodiversity, Bioprospecting, and Traditional Knowledge

  • When working with colleagues from foreign countries, be aware that those colleagues may be authorized to make collections of biological materials only under specified circumstances, ensuring fair and equitable terms with prior informed consent (more>>) Before proceeding with joint activities, check with your institution’s TTO to make sure that all the requirements have been met. (more>>)
  • Scientists and anyone else accessing biodiversity must ask, and answer, the following questions prior to initiating collecting activities: Under which conditions may I enter another sovereign state’s territory in my scientific capacity? Under which conditions may I collect biological material and related information? Under which conditions may I carry out or export biological material and related information from that sovereign state’s territory? Under which conditions may I make further use of collected biological material and related information? (more>>)

Recommended IP Topics for Scientists:

Recommended Case Studies for Scientists:

The African Agricultural Technology Foundation Approach to IP Management

Biodiversity and Benefit-Sharing: University of Illinois at Chicago

Clearfield Rice: Louisiana State University

Current IP Management Issues for Health and Agriculture in India

Cyclofem® Contraceptive: Upjohn, WHO, and the Concept Foundation

Diagnostic Tests for Cervical Cancer: PATH

DNA Hepatitis B Vaccine: International Vaccine Institute, Korea

Fundación Chile: Technology Transfer for Somatic Embryogenesis of Grapes

Gastrointestinal Medicines from African Aloe: Baylabs (Pty) Ltd.

Golden Rice: A Product-Development Partnership in Agricultural Biotechnology and Humanitarian Licensing

The Groundnut Story: A Public-Private Initiative Focused on India

HIV/AIDS Vaccine: Indian Council of Medical Research

How Intellectual Property and Plant Breeding Come Together: Corn as a Case Study for Breeders and Research Managers

Improved Production of a Natural Product Treatment for Malaria: Oneworld Health, Amyris, and the University of California at Berkeley

IP Management at Chinese Universities

The IP Management of the PRSV-Resistant Papayas Developed by Cornell University and the University of Hawaii and Commercialized in Hawaii

Lapdap Antimalarial Drug: GlaxoSmithKline, WHO-TDR, and the U.K. Department for International Development

The Making of a Licensing Legend: Stanford University’s Office of Technology Licensing

A Model for the Collaborative Development of Agricultural Biotechnology Products in Chile

Patent Consolidation and Equitable Access: PATH’s Malaria Vaccines

Pragmatic and Principled: DNDi’s Approach to IP Management

Saving Forests and Creating a New Cash Crop in the Middle East and Asia: University of Minnesota

Somatic Embryogenesis of Grapes: Fundación Chile

Specific IP Issues with Molecular Pharming: Case Study of Plant-Derived Vaccines

Technology Transfer in South African Public Research Institutions

Weed-Control Additive (or Adjuvant): North Dakota State University