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 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.
Administration of Technology Licenses
by Hans H. Feindt
Alternative Dispute-Resolution Procedures: International View
by Eun-Joo Min