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 you and your institution must anticipate and be prepared to
uphold in order for you and your technology agreements to be perceived by the market as 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, 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 of intellectual property and maximize its utility.
- 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.
- 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 technology transfer office which companies might be practicing your inventions.
- Keep laboratory records and notebooks organized, ideally consistent with your institution’s laboratory notebook policy. These can be essential for drafting patent applications, prosecuting patents and, if necessary, pursuing litigation.
- 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.
- If your university or institution is in litigation with a partner you have been collaborating with, do not let disputes interfere with your research or your relationships with colleagues at the other institution. Many companies litigate with other parties while, at the same time, negotiating on other licenses or joint ventures with that party. litigation is nothing personal and should never influence your research collaboration. Notwithstanding this, you should always be cautious when speaking about matters related to the topic of dispute. It is best never to comment on ongoing litigation matters.
Policing Intellectual Property
by H. Walter Haeussler, Richard S. Cahoon