TopTop

Shadow

Search

advanced search
search help

 

ipHandbook Blog

Your source for expert commentary on IP management issues.
Go to the blog

 

About

Editor-in-Chief,   Anatole Krattiger

Editorial Board

Concept Foundation

PIPRA

Fiocruz, Brazil

bioDevelopments-   Institute

Site Guide for Senior Management

As a senior administrator of a university, research institute, or company, you need both an understanding of the IP policy environment and a command of the specific IP management tools available to your organization.

This Site Guide for Senior Management presents you with an executive overview of the general principles of IP and with high-level administrative, strategic, and institutional policy issues that can arise in organizations that either already hold or that seek to develop an IP portfolio and engage in technology commercialization. The Site Guide also recommends 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 senior administrator.

Key Implications and Best Practices for Senior Management

Intellectual Property in the Innovation Context

  • Benefits from public sector health and agriculture investments have tremendous global potential. Government-sponsored research can thus make a big difference in meeting the needs of the poor, nationally, regionally and globally. (more>>)
  • Intellectual property, as a tool to foster innovation, is a compromise, balancing the public domain with limited grants of ownership. An appropriate balance requires sound IP management and capacity to do so in the public sector. (more>>).
  • Balancing public benefit and economic returns can be influenced through government policy. (p. 1). But decisions to place inventions in the public domain can only meaningfully be determined on a case-by-case basis. (more>>)
  • In order to fulfill both commercial and noncommercial goals, public research institutions can, through IP management and licensing strategies, control how their patented inventions are deployed and developed. (more << here and here >>)
  • By working with their respective governments to implement national policies, public sector institutions can help establish a national IP system that fosters best practices in IP management in the public sector. (more>>)
  • Well-crafted contracts based on best practices can be instrumental in achieving global access, provided the entire innovation process is considered from the outset. Such an approach requires preparation, detailed knowledge, and a public sector mission-driven mindset. (more>>)
  • The use of IP rights is not a panacea for the management of innovation, nor is the public domain. Both public and private goods have utility and limitations. The art of innovation management is in using both public and private goods and to manage the interface between them. (more>>)

Institutional Mission and Policy

  • A sound institutional IP policy typically addresses ownership, conflicts of interest and commitment, confidential information, broad IP licensing approaches, and IP generated revenues. (more>>) Other important considerations include ethical guidelines for IP management (more>>) and the reservation of humanitarian rights (also called “philanthropic use” provisions) on IP and the retention of research and teaching rights of all inventions and technologies. (more << here and here >>)
  • An effective institutional IP strategy describes long-term goals and the allocation of resources necessary for their realization. Public sector institutions have much to gain by articulating how their IP management strategies foster global access to innovations. (more>>)
  • IP audits can be useful mechanisms that form the basis for an internal review and revision of an institution’s IP strategy and IP policy. (more>>)
  • Government policies ought to be flexible and enable research institutions to customize technology transfer strategies that align with the institutions’ missions. Different approaches will serve different types of research and academic organizations working within various disciplines and cultures. (more>>)

IP Management Principles and Technology Transfer

  • Technology transfer invariably brings conflicts of interest. These should not be viewed as negative. They can usually be managed in a transparent and consistent manner. (more>>)
  • Technology transfer and licensing are context-specific. (more>>).
  • Licensors, public or private, are more willing to license to institutions that consistently protect third-party property. This builds confidence and thereby promotes licensing and technology transfer. (more>>)
  • A successful approach is to allow maximum flexibility whereby institutions can set, or negotiate, the terms that best fit the mission and goals of the institution and the purpose of the partnership. (more>>)
  • The core element for successful technology transfer is people. The technology transfer office (TTO) should be led by an individual who understands the details of running a business. (more>>).
  • Successfully establishing and operating a TTO will require visible and sustained support, financial and otherwise, from senior administration. Clear mandates will help technology transfer professionals choose among competing priorities. (more>>).
  • This includes the implementation of rigorous IP-related policies and procedures. (more>>)
  • Above all, it requires TTO officers’ ability to assume risks knowing that they have backing from senior management. (more>>)
  • A critical mass of R&D activity is necessary (typically $100-$500 million) to justify the costs of a fully functioning TTO. Consortium approaches to technology transfer can ameliorate this imposing initial requirement by pooling resources and expertise. (more>>)
  • For companies, the ultimate purpose of IP management is to enhance competitiveness and reduce risk. For public sector institutions, the purpose of IP management should be to serve the greater public interest. These are not mutually exclusive goals, and they can be reconciled through sound technology marketing and licensing practices. (more>>)
  • Scientists should be encouraged to use public domain technologies as research inputs whenever feasible to reduce possible future constraints in the downstream commercialization of innovations. In many circumstances, however, relying on patented technologies may be the more effective way to go, particularly when the goal is to develop products. (more>>)
  • Building strong institutional capacity in IP management will enable technology managers and scientists alike to understand the complex array of options that should be considered before publishing research results or filing patent applications. (more>>)
  • An important element during the development of an IP strategy is to document the technologies that already exist in the organization, plus those technologies in development. This can be achieved through an IP audit, among other approaches. (more>>)
  • Management should encourage good laboratory practices and diligent record keeping of data to ensure that research can later be used in possible regulatory filings. Doing so could lower costs and reduce the time to market. (more>>)
  • To benefit from trademark strategies, the maintenance of high quality standards is important, since the trademark (brand) indicates the source and quality of the product. (more>>)

Supporting Entrepreneurship

  • The creation of business incubators as a tool for stimulating local economic development should not be underestimated. Incubated companies have a dramatically higher rate of survival than the average spinouts. (more>>)
  • A spinout often creates enhanced opportunities for its faculty. If spinouts remain in the region, faculty inventors can remain active as consultants. Also, a university’s success with spinouts can attract new talent. But much of the success 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>>)
  • If public sector institutions found ways to reduce the risk of investing in agricultural projects, more venture capital would be attracted. (more>>)
  • Rather than venture capital driving the creation of new companies, it is usually the creation of new companies that attracts venture capital. (more>>)
  • Robust innovation clusters require a commitment to science and entrepreneurship, a strategically situated anchor institution, and reliance on market forces as the engine for technology transfer. Cluster formation will strengthen the ability of local and national economies to absorb new technologies into existing industry or entrepreneurial sectors. (more>>)

Licensing

  • Nonexclusive licensing can be a strategy to maximize the utilization of research tools. Exclusive licensing, on the other hand, can be quite effective for broad dissemination of patented products, particularly when coupled with milestone clauses. Complementary strategies are market segmentation, field-of-use licensing, and the negotiation of tiered pricing clauses. (more>>)
  • The dual goals of economic growth and social/humanitarian benefits through licensing are not mutually exclusive. Indeed, they are often complementary. Much will depend on a sound institutional licensing strategy and on good relationships with licensees. (more>>)
  • Business decisions, more than legal aspects, should determine licensing terms. Nevertheless, lawyers should ensure that the contracts comply with prevailing law. (more>>)
  • Confidentiality agreements rely on a culture of trust, not a culture of secrecy. They protect sensitive information transferred between parties, and, when well managed, and are not inconsistent with public sector missions or the publication of research results. (more>>)
  • Patent licenses are most valuable when coupled with access to associated know-how, which is often shared under confidentiality provisions. Comprehensive staff training in the handling of confidential information from third parties is therefore critical. (more>>)
  • Specific best practices in licensing terms that allow public sector entities to meet public sector goals (ensuring broad access to innovation) include area of use, territory, price, labeling, white-knight conditions, and royalties. (more>>)
  • The key to successful negotiation is having a clear understanding of the value each party brings to a relationship. Value may be monetary or non-monetary. (more>>)
  • Negotiating between public and private sectors ought not be confrontational, but as a first step in a long-lasting and mutually beneficial relationship. Negotiating a fair licensing agreement should thus not be seen as a process of “bargaining” toward a win-win outcome. (more>>)
  • For the public sector, a well-tested and successful approach to negotiating an agreement is to offer initial terms to a company that the public sector organization itself would be willing to agree to if it were on the other side of the negotiating table. (more>>)
  • Senior management can set a positive tone for negotiation that will ensure that deals made with others are a vehicle for building strong relations and trust between parties. (more>>)
  • Networking is essential for successful technology marketing. Technology transfer officers and scientists particularly should be encouraged and given opportunities to network. (more>>)

Managing Risk, Maximizing Benefits

  • As public sector and nonprofit institutions pursue product development, freedom to operate (FTO) will become a strategic component in an organization’s risk-management strategy. Implementing the strategy requires clear pathways of communication and dialogue between science managers, product development, licensing personnel, counsel, and senior management. (more>>)
  • FTO is an interdisciplinary endeavor and considered within the context of the institution’s mission, business development, research and technology transfer, and tolerance for risk. (more>>)
  • The more downstream a research-based institution operates, the more important FTO considerations become. A system should be in place to help decide whether, when, and how a public sector institution should conduct or commission a legal FTO opinion. (more>>)

Maintenance of IP Rights

  • It is important to have the flexibility to opt for legal action if this seems to be in their best interests. But legal action is often complex due to cost, length of procedure, uncertainty as to outcome, confidentiality/publicity, the difficulty of seeking action in foreign jurisdictions, and the negative impact on existing business relationships. (more>>)
  • Encouraging alternative dispute-resolution procedures can be a viable strategy and, indeed, often a preferred one, for settling differences between parties to an agreement. These are particularly important in international contract dispute resolution. (more>>)

Biodiversity, Traditional Knowledge: Access and Equity

  • There is a strong interaction between bioprospecting activity and national scientific capabilities. In countries with strong scientific capability, bioprospecting is robust. Moreover, such capacity increases the negotiating strengths and benefit-sharing opportunities. (more>>)
  • The technology transfer office should work with senior management to establish policies and systems for accessing indigenous or traditional knowledge (TK), bioprospecting activities, and benefit sharing in an equitable manner. (more>>)

Recommended IP Topics for Senior Management:

Recommended Case Studies for Senior Management:

The African Agricultural Technology Foundation Approach to IP Management

Application and Examples of Best Practices in IP Management: The Donald Danforth Plant Science Center

Biodiversity and Benefit-Sharing: University of Illinois at Chicago

Current IP Management Issues for Health and Agriculture in India

Current Issues of IP Management for Health and Agriculture in Japan

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

Diagnostic Tests for Cervical Cancer: PATH

DNA Hepatitis B Vaccine: International Vaccine Institute, Korea

From Science to Market: Transferring Standards Certification Know-How from ICIPE to Africert Ltd.

From University to Industry: Technology Transfer at Unicamp in Brazil

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 Public–Private Partnerships Handle Intellectual Property: The PATH Experience

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

Intellectual Property and Technology Transfer by the University of California Agricultural Experiment Station

IP Asset Sale Involving an Intra-Uterine Device: Population Council

IP Management at Chinese Universities

IP Management in the National Health Service in England

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

Lessons from the Commercialization of the Cohen-Boyer Patents: The Stanford University Licensing Program

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

Malaria Vaccine: Malaria Vaccine Institute and GlaxoSmithKline Biologicals

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

The New American University and the Role of “Technology Translation”: The Approach of Arizona State University

Nicotine Patch: University of California, Los Angeles

Nontoxic Drug Therapy for Chagas’ Disease and Malaria: University of Washington and Yale University

Partnerships for Innovation and Global Health: NIH International Technology Transfer Activities

Patent Consolidation and Equitable Access: PATH’s Malaria Vaccines

Pragmatic and Principled: DNDi’s Approach to IP Management

Reduced-Duration Tuberculosis Treatment: TB Alliance and Bayer HealthCare

Rotavirus Vaccine: NIH Office of Technology Transfer

Somatic Embryogenesis of Grapes: Fundación Chile

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

Successful Commercialization of Insect-Resistant Eggplant by a Public–Private Partnership: Reaching and Benefiting Resource-Poor Farmers

Technology Transfer at the University of California

Technology Transfer in South African Public Research Institutions

Typhoid Vaccine: NIH Office of Technology Transfer and the International Vaccine Institute

The University of California’s Strawberry Licensing Program