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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
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Why This Topic Is Important
While national policies shape the overall environment, innovation itself is carried out in and by institutions.
It is, therefore, the development and implementation of institutional policies and strategies that most
directly impact upon how innovations will emanate from your country’s public investments in R&D. This
section provides an overview of the most important institutional policies in guiding the management of
innovation and technology transfer while maintaining the integrity of research institutions’ core public
missions of research and/or education.
Key Implications and Best Practices: Section 5
- As the creator of inventions and technologies, your role in technology transfer is critical. So please read on!
- Your role can best be carried out if you have good relations with the technology transfer office and officers. But fulfilling your role also requires a good knowledge of and 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. Become familiar with the content and the meaning of the various provisions and how they may affect you.
- 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 in such a way as to allow you and the TTO to determine how your inventions can—and should—be used to spur economic growth and contribute to the greater public good.
- Remember, few inventions will lead to blockbuster products, make millions of dollars, or save billions of people. Have realistic expectations, especially regarding what it will take for your invention to make a difference. It is not bad to love your own creations as long as you have realistic expectations.
- More and more philanthropic donors 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 just one reason why a close relationship with your TTO is important, and becoming even more so.
- 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.
- One of the most important responsibilities you have is to disclose any potential conflict of interest. You are not guilty of anything if you have a potential, perceived, or even real conflict of interest. Most problems arise when conflicts are not disclosed. Clear conflict of interest policies that are followed and implemented in a transparent manner is all that is required to manage them.
 Abstract
Conducting IP Audits
by Michael Blakeney
Abstract:
This chapter explains how important it is for a research institute to audit both the intellectual property (IP) that it generates and the third party IP that its researchers utilize. Such an audit will have the practical consequence of enabling the research institute (when appropriate) to secure ownership, maintain, and manage the IP for which it is responsible.
Abstract
Conflict of Interest and Conflict of Commitment Management in Technology Transfer
by Alan B. Bennett
Abstract:
The potential for personal interests to influence institutional decisions in universities and public sector research institutions continues to grow. This is because of the increasing activity in intellectual property (IP) management and technology transfer undertaken by these institutions. The activities have the potential to generate both personal and institutional financial gain, making conflict of interest and conflict of commitment issues unavoidable. This chapter explains the nature of these conflicts and discusses the policies, regarding conflict of interest, of several universities, offering them as potential models for crafting these indispensable policies.
Abstract
Ownership of University Inventions: Practical Considerations
by B. Jean Weidemier
Abstract:
Several factors help to establish who owns a university invention and what rights the university may, or may not, have. These factors include whether (1) there are express or implied agreements to assign ownership, (2) the inventor is employed by the university, (3) the invention was made within the scope of employment, and (4) where and when the invention was made. Under U.S. law, individuals own their inventions, except where there is an express agreement providing for assignment of ownership of inventions to an employer or where an implied agreement to assign is found because the employee was hired or assigned to invent or solve a specific problem or served the employer in a fiduciary capacity. Therefore, in addition to implementing clearly delineated policies, it is critically important for a university to absolutely require all employees and visitors to sign invention assignment agreements (IAAs) on their date of arrival. It is unwise to rely on policy statements to determine whether or not a university employee owns his or her invention: universities should always obtain signed (express) agreements, and both the employee and the technology transfer office should retain copies. Research contracts with the government and other sponsors should have a checklist item on the existence of IAAs for the principal investigator and other researchers (whether or not a university should have undergraduates routinely sign IAAs is up to each university). Upon termination of employment, personnel should be asked to sign an exit form indicating that they have disclosed all inventions falling within the terms of the IAA to the university licensing office.
Abstract
The Role of the Inventor in the Technology Transfer Process
by Anne C. Di Sante
Abstract:
Without inventors, there would be no technology to transfer. But without technology transfer professionals, there would be limited transfer of technology. Good relations between inventors and technology transfer professionals are therefore essential for the commercialization enterprise to succeed. Relationships should be established long before the transfer services of the technology transfer office (TTO) are required. A healthy relationship will allow technology managers to negotiate both faculty and business concerns about licensing agreements. Making sure that the inventor is sympathetic to the aims of the TTO will also make it much easier for everyone to understand how a technology may meet market needs, recognize potential licenses, and determine whether a licensee is fulfilling its obligations. For all of these reasons and more, a TTO should always go the extra mile to educate, develop, and maintain good working relationships with inventors.
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