Your source for expert commentary on IP management issues.
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Editor-in-Chief, Anatole Krattiger
Why This Topic Is Important
Once a public sector technology has been protected under IP, transferred for commercial development,
and even released on the market, its supporting contracts and relationships need to be maintained. In
some cases disputes or IP infringement by third parties may arise, issues which must be addressed and
resolved. These are responsibilities that public sector institutions must anticipate and be prepared to
uphold in order for it and its technology agreements to be perceived by the market as a credible and
Key Implications and Best Practices: Section 15
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.
- A fundamental best practice in IP management, regardless of whether an institution is public or private and whether located in a developed or developing country, is to view intellectual property as an evolving and dynamic asset requiring ongoing attention, management, monitoring, and policing. Only such an “IP cultivation” will allow institutions to protect the value and utility of the intellectual property.
- A country’s statutory code, combined with a reliable system of fair adjudication and judicial enforcement, is the requisite basis for enforcing institutions’ IP rights. Supporting policies that promote this legal infrastructure is essential.
- Court action is often stymied because of cost, length of procedure, legal uncertainty, the decision maker’s lack of expertise, confidentiality/publicity, the difficulty of seeking action in foreign jurisdictions, and the negative impact on existing business relationships. But public and private institutions alike should always have the flexibility to opt for court action if this seems to be in their best interests.
- Policymakers should strive to promote policies and advocate for laws that encourage alternative dispute resolution procedures as the best alternatives for settling differences between parties to an agreement. These procedures are particularly important in international contract dispute resolution.
- Governments and public institutions can help make arbitration or mediation procedures accessible and available by identifying and supporting neutral institutions that can provide cost-efficient, timely dispute-resolution services. The World Intellectual Property Organization offers such services through the WIPO Arbitration and mediation center.
- Pursuant to the TRIPS Agreement and the Doha Declaration provisions on parallel trade, countries can implement patent rights exhaustion regimes that either permit or restrict parallel importation. As a result, developing countries can decide whether or not to allow parallel importation for all or for particular IP rights. Despite the evident benefits of parallel trade, there are also disadvantages, and both the benefits and the risks should be carefully considered. (Drawbacks of broad parallel importation practices include the reduction in incentives for investment in the pharmaceutical and agricultural sectors and the reduction in incentives for rights holders to donate products at low cost or free of charge to developing countries due to fear of reimportation to lucrative developed country markets. Re-importation hinders the ability of governments in different countries to maintain price controls on pharmaceutical products within their territory and reduces the willingness of rights holders or licensed local owners to supply particular markets.)
Administration of Technology Licenses
by Hans H. Feindt
Alternative Dispute-Resolution Procedures: International View
by Eun-Joo Min
Parallel Trade: A User’s Guide
by Duncan Matthews, Viviana Munoz-Tellez