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MIHR
PIPRA
Fiocruz, Brazil
bioDevelopments- Institute
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The IP Toolbox
Topic Guide for Senior Administrators
Why This Topic Is Important
The types of IP protection that are available constitute the fundamental toolbox that your institution can
use to protect and promote the transfer and development of inventions. This section provides interpretive
introductions to each of the main types of IP protection that are relevant in agriculture and medicine,
including patents, trademarks, plant variety protections (or plant breeders’ rights), database protections,
and regulatory data exclusivity. Most chapters describe the IP laws in the context of specific countries,
while some provide more general treatments of the legal IP concepts including those developed as
international standards in TRIPS and UPOV.
Key Implications and Best Practices: Setcion 4
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.
- The implementation of a broad institutional IP policy, consistent with the institution’s mission, can foster the integration of the various forms of IP protection in furtherance of an institution’s mission and goals.
- For public sector institutions, trademarks can be a valuable element in an institutional strategy that aims at fostering a positive image (or brand) and generating value. Because of the broad value of trademarks, they assist institutions in maintaining a good image and brand, thus serving as a tool for senior management in maintaining and enhancing the institution’s reputation, standing, and value.
- Scientists can gain a lot from regularly reviewing newly issued patents from around the world. Patents often disclose much more than scientific publications but are generally overlooked as valuable sources of scientific and technical know-how. Such an information-gathering approach requires appropriate staff training and the availability of good Internet connections, which make it possible for patents to be downloaded. All patent office Web sites provide patents free of charge as does the Worldwide Intellectual Property Organization (WIPO).
- A sound patenting strategy is an extremely useful tool to bring inventions to fruition that make an impact on economic development and meeting public sector goals.
- Although many public sector institutions have for years provided their improved germplasm free of charge or at nominal costs to breeders and farmers, the protection of improved varieties can be a critical tool in furthering broad access and simultaneously meeting commercial and humanitarian objectives through appropriate “market segmentation.”
- In many countries, but not in the United States, patent law includes a broad research exemption. This should not be confused with possible restrictions on materials obtained through material transfer agreements. Although extremely useful, material transfer agreements should be used judiciously, particularly when intellectual property is also embedded in material. This aspect also requires well-trained licensing/technology-transfer personnel and good management systems.
- The delivery of innovation for the greater public good by public sector institutions is not necessarily inconsistent with appropriate patent and other forms of IP protection. Trade secret protection in particular may be a valuable—and cost effective—means of achieving greater accessibility by disadvantaged members or groups of society. Whereas academic institutions in particular may regard such protection as inappropriate, it should be remembered that their mission is gradually shifting and increasingly include the delivery of products. This requires adjustments in the way information and knowhow are managed. In turn, the changes require much internal discussion and sometimes culture change.
- Senior management’s backing of the technology transfer office is important as is its support in the implementation of rigorous IP-related policies and procedures (such as those related to confidentiality).
 Abstract
Data Protection and Data Exclusivity in Pharmaceuticals and Agrochemicals
by Charles Clift
Abstract:
The chapter discusses the meanings of data protection and data exclusivity in the context of the provisions of the Trade-Related Aspects of Intellectual Property Rights agreement. In addition, it outlines the relationship between data exclusivity and patent protection and briefly reviews the possible costs and benefits of introducing data exclusivity laws. Finally, the chapter explains that countries need to consider the costs and benefits when negotiating bilateral trade agreements that might require the introduction of these laws.
Abstract
IP and Information Management: Libraries, Databases, Geographic Information Systems, and Software
by John Dodds, Susanne Somersalo, Stanley P. Kowalski, Anatole Krattiger
Abstract:
The last decades have seen a revolution in knowledge management, library services, and information resource database configurations. The use of integrated computer networks and the ability to produce and distribute information have had far-reaching implications for IP (intellectual property) protection. In order to demonstrate IP laws and their application, this chapter will use, as its primary example, Geographic Information Systems and Remote Sensing (GIS/RS), a technology that presents interesting and complex IP issues.
Abstract
Plants, Germplasm, Genebanks, and Intellectual Property: Principles, Options, and Management
by John Dodds, Anatole Krattiger, Stanley P. Kowalski
Abstract:
In ever-increasing numbers, institutions are establishing technology transfer offices (TTOs). These offices serve a variety of functions, all of which must be integrated to cost effectively transfer technologies and to benefit the institutions. A critical function of the TTO is to proactively manage intellectual property (IP) issues pertinent to crops. Crops can be covered by more than one form of IP rights protection, often simultaneously. These rights protections include trademarks, trade secrets, plant and utility patents, and plant variety protection (PVP). Closely related is the importance of careful and organized gene-bank management, a critical component of an overall IP and tangible property management system. PVP provides one type of protection that allows TTOs to responsively serve clients and generate revenue. PVP is a form of IP rights protection for crops with potentially global applications, and either a PVP office, or a PVP subsection in the TTO, would be wisely established by an institution. In addition, this chapter provides important information to assist in establishing a national PVP office and in the selection and implementation of various types of IP rights protection for crops and germplasm.
Abstract
The Statutory Toolbox: An Introduction
by John Dodds, Anatole Krattiger
Abstract:
This chapter presents the main forms of statutory intellectual property (IP) protection with emphasis on utility patents, trademarks, geographical indications, copyright, and trade secrets. Basic questions with regard to who can get protection, the subject matter of each form of protection, statutory requirements, and certain exceptions. The chapter concludes with short sections on institutional aspects including employee agreements, how to mark the protected intellectual property, how to integrate the various rights, and how to identify infringement. The authors conclude that the form of protection chosen for a given invention should be guided by the mission of the institution (whether public or private), the purpose of the work it conducts, and the nature of the invention, or other IP, that will be subject to IP rights protections.
Abstract
Trademark Primer
by William Needle
Abstract:
Trademarks, in the broadest sense, encompass a range of indicators for goods and/or services, including service marks, collective marks, certification marks, trade names and trade dress. A trademark, which may be a name, symbol, feature, or design, functions as an indicator of source and identifies and distinguishes a good or service, enabling customers to ascertain the quality of the good (or service) based on the trademark. Unlike other forms of intellectual property rights (for example, copyrights and patents), the rights extended by trademarks are not generated from the creative activity of an author or inventor, but rather via their use in commerce, and it is the customer’s association of the trademark with a specific product (or service) that is the key factor in establishing rights. The relative effectiveness of a trademark depends on its degree of distinctiveness. By way of classifying trademarks, a hierarchy based on strength of protection, from fanciful to merely descriptive, has been established. Whereas fanciful trademarks are inherently distinctive because they are terms invented solely for a specific purpose (for example, Kotex), descriptive marks (for example, Chap-Stick) must acquire secondary meaning to become protectable. In the United States, trademarks are protected by both state and federal laws. Although federal trademark registration is not necessary to assert trademark rights, it affords many advantages and benefits to the owner, and hence is by far the preferred means of protection. It is important to remember, however, that trademarks must always be maintained, protected, and correctly used. Their strength, and therefore value, is directly linked to public perception.
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