Your source for expert commentary on IP management issues.
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Editor-in-Chief, Anatole Krattiger
Why This Topic Is Important
The licensing contract and relationship is the most common channel through which both technologies and
the rights to develop and sell products are transferred between entities. This section provides detailed
explanations of both the strategies and the mechanics of successful licensing.
Key Implications and Best Practices: Section 11
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.
- Licensing is highly context specific. For this reason, blanket policies on minimum requirements for licensing terms applicable to public sector institutions can discourage creative and beneficial deals and reduce the potential for national institutions to forge international linkages.
- Notwithstanding the above, public sector institutions should, as a matter of policy, consider the routine incorporation of philanthropic use provisions in their licenses and should always retain research and teaching rights to any of their inventions.
- The dual goals of economic growth and social/humanitarian benefits through licensing are not mutually exclusive. Indeed, they are often complementary.
- Companies regularly license their own varieties to third parties as a strategy to maximize returns on investment and reach markets that the company itself cannot easily reach. Conceptually at least, public sector plant breeding institutions have much to gain from variety licensing as a strategy of serving markets they do not typically reach.
- Overall, the successful licensing of varieties between and among public and private sectors is contingent on the strength of plant variety protection legislation. Such legislation can support the interests of the variety owner and the farmer, facilitates the transfer of technology, and provides incentives for further investments.
- Recognizing that patent applications are usually filed early in the research stage and require full disclosure, companies typically keep inventions developed later on as trade secrets. These may include the best mode for commercial manufacture. Patent licenses are most valuable when coupled with access to associated know-how. Comprehensive and enforceable trade secret laws are thus conducive to the transfer of know-how through licensing. The two, disclosed patents and protected secrets, are thus complementary.
- Using trademarks as a strategy allows public and private institutions to capture more added value. To benefit from trademarking strategies, internationally accepted legislation is important. Also important is the maintenance of high quality standards and stewardship, since trademarks (and geographical indications) provide the consumer with information on the source of the products.
- Although IP rights are governed by national statutory protection, contract law is arguably even more important than statutory protection law, as contracts allow institutions to exchange intellectual property in an orderly and predictable manner.
- Along with investing in a country’s R&D infrastructure and capacity, it is important to sustain long-term growth. human and institutional capacity in IP management adds value to R&D efforts. In- and out-licensing in particular enhance an institution’s economic and social impact. Among a government’s top priorities should be providing support to public sector institutions for establishing and operating effective technology transfer offices, coupled with training programs for creating capacity commensurate with the complexities of modern biotechnological products. Ideally, these capacities should reside at the institution level because of the context-specific nature of licensing.
In-Licensing Strategies by Public-Sector Institutions in Developing Countries
by Kanikaram Satyanarayana
Trade Secrets and Trade-Secret Licensing
by Karl F. Jorda