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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
This section provides valuable guidance on how, when, and where—and whether—to file for intellectual
property protection for the best chance of success in developing that technology for real world
applications.
Key Implications and Best Practices: Section 10
- The use of IP rights is not a panacea for the management of innovation, nor is the public domain. Both public and private goods have utility and limitations. The art of innovation management is in using both public and private goods and to manage the interface between them.
- Because public domain technologies play an important role in publicly funded research, defensive publishing can be used by public sector research institutions to help expand and reinforce the accessibility of technologies in the public domain. Academic institutions in particular should be encouraged to publish, in addition to considering IP protection.
- Because of the case-specific applicability of defensive publishing, blanket policies that require defensive publishing deny the opportunity to use research results strategically in combination with IP rights protection.
- Few institutions anywhere in the world have transparent incentives for researchers or technology transfer officers to prepare defensive publications. Encouraging publication with maximum inventive disclosure through a balanced set of incentives for researchers and technology transfer officers is a useful strategy.
- Scientists should be encouraged to use public domain technologies as research inputs whenever feasible to reduce possible future constraints in the downstream commercialization of innovations. In many circumstances, however, relying on patented technologies may be the more effective way to go, particularly when the goal is to develop products.
- Building strong institutional capacity in IP management will enable technology managers and scientists alike to understand the complex array of options that should be considered before publishing research results or filing patent applications. Development of protocols and strategies will clarify options and retain and maximize value.
- One such capacity centers on the decision of whether patents for an invention should be filed in a manner that does not delay publication of research results. Provisional patent applications, where possible, offer one such avenue.
- An important component of developing an IP strategy is to document the technologies that already exist in the organization, plus those technologies in development (for example, through an IP audit). Other essential components of such a strategy are the promotion of international patent protection and the concrete steps an institution is taking to drive innovation and technology transfer.
- Management should encourage good laboratory practices and diligent record keeping of data to ensure that research can later be used in possible regulatory filings. Doing so could lower costs and reduce the time to market.
 Abstract
Defensive Publishing and the Public Domain
by Sara Boettiger, Cecilia Chi-Ham
Abstract:
IP (intellectual property) rights can reward innovators and encourage investment in developing new products and services. However, the exclusionary power of IP rights can sometimes have negative effects, making technologies less accessible and, thereby, potentially impeding innovation. To make informed decisions about how to balance access and protection requires an understanding of both the traditional IP rights system (patents, copyrights, trademarks, and trade secrets) and alternative mechanisms for preserving access to technologies. This chapter provides a brief introduction to the public domain and defensive publishing and examines issues concerning the choice behind the choice of whether to publicly disclose or to patent an innovation. Discussing the strategic use of defensive publishing in IP management, the chapter considers both the utility of defensive publishing and its limitations for supporting broad innovation. After an examination of the public domain and how it relates to other open-access concepts, such as open source and the commons, the chapter focuses on the practical considerations involved when using public-domain technologies and defensive publishing to manage intellectual property.
Abstract
A Guide to International Patent Protection
by Ann S. Viksnins, Ann M. Mccrackin
Abstract
Patenting Strategies: Building an IP Fortress
by John Dodds
Abstract:
A comprehensive intellectual property (IP) portfolio can be of substantial value to both private and public sector entities. Patents are a key element of IP portfolios and must be managed according to the mission, objectives, and motivations of the organization that owns them. Large companies can afford an offensive patent strategy, but small companies may not have the resources for this. Therefore, it is extremely important for private sector entities, especially small- and middle-sized companies, to design and implement an effective and cost-efficient strategy for patent management. For public sector entities, patent strategies will focus on advancing social welfare, and the mission of the institution will therefore drive objectives. A key factor to consider is the method of IP protection: patent, trademark, copyright, or trade secret. The costs of maintaining each of these IP categories are different. Although research institutes and companies will likely wish to reduce costs as much as possible, key technologies still need to be protected properly. A company can reduce costs by focusing the patent protection on those geographic areas where it has business. A university can reduce costs by selectively prosecuting patent applications with broad claim structures, strategically licensing technologies, and enforcing patent rights if and when necessary. To build a strong basis of protection, several forms of IP may be used for the same invention or improvement.
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