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About
MIHR
PIPRA
Fiocruz, Brazil
bioDevelopments- Institute
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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
reliable.
Key Implications and Best Practices: Setcion 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 is, 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.
- Your institution’s technology transfer office should have systematic procedures to administer, monitor, and enforce its technology licenses. This includes compliance with royalty payments and reporting obligations in a nonconfrontational manner.
- Public and private institutions alike should always have the flexibility to opt for legal action if this seems to be in their best interests. But legal action is often stymied because of cost, length of procedure, legal uncertainty, a decision maker’s lack of expertise, confidentiality/publicity, the difficulty of seeking action in foreign jurisdictions, and the negative impact on existing business relationships.
- Encouraging alternative dispute resolution procedures can be a viable strategy and, indeed, often a preferred one, for settling differences between parties to an agreement. These are particularly important in international contract dispute resolution.
- Public sector institutions should have an institutional policy on the use of arbitration and mediation.
- 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.
- Where permitted by national legislation, parallel importation may provide universities and public sector research institutes with lower-cost access to legitimate imports produced in other markets.
- For universities and research institutes in particular, parallel importation may have substantial benefits as it allows for the lower-cost import of copyrighted products (books, computer software, periodicals, and related products). Hospitals may also benefit from parallel-trade imports by access to cheaper, patented pharmaceutical products. Sometimes, however, the final cost of the parallel-imported product is higher than locally supplied goods, while quality and warranty may be lower.
- But parallel importation also has drawbacks. These 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 re-importation to lucrative developed country markets.
 Abstract
Administration of Technology Licenses
by Hans H. Feindt
Abstract:
The National Institutes of Health Office of Technology Transfer (NIH OTT) administers technology licenses for the NIH, generating substantial royalties (in the millions of dollars). Although this revenue flow is important, the NIH OTTs principal mission is the timely introduction of new products and technologies into the marketplace to ensure that the fruits of NIH research and development are made commercially available to serve the greater public good. The NIH OTT utilizes six types of technology licenses:
- commercial evaluation licenses (also known as options)
- patent commercialization licenses (either exclusive or nonexclusive)
- nonexclusive patent licenses (for internal use)
- biological materials licenses
- software licenses
The NIH OTT insists that licenses are drafted with well-defined financial terms and clearly delineated reporting obligations, so that both parties to the license (NIH as licensor and, for example, a biotech firm as licensee) understand their respective obligations. The NIH OTT seeks to build cooperative relationships with its licensees in order to facilitate problem solving discussions, resolve outstanding issues, and identify possible opportunities for advancing commercialization of products and/or services. As a best practices licensor, the NIH OTT carefully manages license administration by monitoring commercial development performance benchmarks, reviewing sales reports, and enforcing other license obligations. The office will also, if necessary, impose sanctions in license enforcement and implement procedures for dealing with infringement of its patents. The policies, protocols, and procedures of the NIH OTT have broad applicability to both developed and developing countries; scientists, administrators, technology managers, intellectual property professionals, and even attorneys can learn from the NIH OTT, a good example of an office operating effectively, efficiently, and profitably by employing best practices.
Abstract
Alternative Dispute-Resolution Procedures: International View
by Eun-Joo Min
Abstract:
As multinational technology-development partnerships have become more common, so have disputes between the parties. Litigation, however, is not the only option for resolving such disputes. In fact, for partnerships between entities in developing and developed countries, litigation may be a complicated, time-consuming, expensive, and doubtful process. Arbitration and mediation may offer the promise of more effectively resolving disputes, and this chapter explains how these methods work, their advantages and disadvantages, and suggests which questions should be asked (especially for a developing country institution) to begin to establish a dispute prevention and resolution strategy. The chapter offers both strategic and practical insights about how to use these mechanisms to resolve disputes and preserve partnerships.
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