Your source for expert commentary on IP management issues.
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Editor-in-Chief, Anatole Krattiger
Why This Topic Is Important
The section highlights for technology transfer managers a range of specific strategies and mechanisms
that are being employed to facilitate access to new technologies. These include both contract-based
approaches and organizational approaches. Your office can adopt these practices and even build them
into its policies. By doing so, you will increase the range of opportunities for putting your scientists'
inventions to work.
Key Implications and Best Practices: Section 2
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.
- Licensing and valuation practices between a public sector institution and product-development partnerships show that one valuation formula is to ask for the licensees in developing countries to take over responsibility for future patent costs but to ask for no up-front fees, no milestone payments, and no running royalties. Any financial return to the university should be derived from opportunities in developed countries.
- Both nonexclusive and exclusive licenses can be applicable to meeting socio-economic goals. Within exclusive licensing, there are many feasible options, such as exclusivity limited to a certain field of use, or geography, or for limited periods of time.
- Certain equitable access provisions in licenses can be instrumental in enabling competition in low- and middle-income countries.
- The practice of reserving rights for humanitarian use may require additional work and will likely not generate licensing revenue; conversely, such provisions, if used in a strategic way, are unlikely to lead to loss of revenues.
- Potential licensors of intellectual property connected to critical agricultural and health care technologies will be motivated by your institution’s demonstrated IP capacity, and will be more likely to enter into more licensing agreements.
- If you are a licensor, put yourself in the position of the other party. If the roles of licensor/ licensee were reversed, would your position seem unreasonable? Inflexibility may be detrimental when the licensee has technologies you may wish to utilize.
- IP managers should be cautious of simply imitating the open licensing procedures of the software industry. Such licenses are not generic enough to cross fields of endeavor, and it is still unclear whether and to what extent biotechnology innovations in general will lend themselves to open source licensing.
- The public sector must specify in writing exactly what it wants to accomplish with a commercial partner, detailing when and how this will be achieved by specifying milestones—and related penalties should these milestones not be fulfilled.
- Avoid “best effort” clauses in agreements. Instead, make the extra effort to draft comprehensive contracts with articulated milestones. This up-front investment in time and effort will pay off if a problem arises. During the drafting and negotiation of agreements containing milestones, do not hesitate to involve people from other departments (including business schools), outside consultants, and experts in the relevant industries and markets.
- Developing meaningful milestones that provide the appropriate balance of incentives, rewards, and penalties requires detailed preparations, a sound understanding of the processes related to developing and marketing the product, realistic forecasting of product potential, persistence in quantitative forecasting and in putting together a master plan for the entire product rollout, and above all, a mission-driven mindset.
Ensuring Global Access through Effective IP Management: Strategies of Product-Development Partnerships
by Robert Eiss, Kathi E. Hanna, Richard T. Mahoney
Facilitating Assembly of and Access to Intellectual Property: Focus on Patent Pools and a Review of Other Mechanisms
by Anatole Krattiger, Stanley P. Kowalski
Facilitating Humanitarian Access to Pharmaceutical and Agricultural Innovation
by Amanda L. Brewster, Stephen A. Hansen, Audrey R. Chapman
Open Source Licensing
by Janet Hope
Patenting and Licensing Research Tools
by Charles Clift
Reservation of Rights for Humanitarian Uses
by Alan B. Bennett
Using Milestones in Healthcare Product Licensing Deals to Ensure Access in Developing Countries
by Joachim Oehler
Valuation and Licensing in Global Health
by Ashley J. Stevens