Your source for expert commentary on IP management issues.
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Editor-in-Chief, Anatole Krattiger
Why This Topic Is Important
While national policies shape the overall environment, innovation itself is carried out in and by institutions
such as yours. It is, therefore, the development and implementation of policies and strategies within the
institution that will most directly impact upon how innovations contribute to the economy. This section
provides an overview of the most important institutional policies in guiding the management of innovation
and technology transfer while maintaining the integrity of research institutions’ core public missions of
research and/or education.
Key Implications and Best Practices: Section 5
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.
- An IP policy should address, at a minimum, ownership of intellectual property, conflicts of interest and conflicts of commitment, the handling of confidential information, the principles of IP licensing approaches, the sharing of income derived from intellectual property, and any rights the institution will retain (such as for research and for humanitarian uses).
- Public sector institutions will increasingly be expected to define an institutional IP strategy that specifically addresses how IP management will be used to achieve global access/humanitarian benefits of the inventions and products developed at your institution. It should include how the institution deals with incoming third-party intellectual property, how it deals with internally generated intellectual property, and how it will out-license its intellectual property to third parties.
- The process by which an IP policy and IP strategy are developed may be valuable in bringing about internal culture change and create strong support from staff.
- Successful IP commercialization is built on a foundation of good relations between inventors and technology transfer professionals. Such relationships should be established long before the establishment of transfer services of the technology transfer office.
- The importance of IP audits is becoming more and more apparent, in the private sector and even in the public sector, as public entities increasingly deal with third-party intellectual property. IP audits can be useful mechanisms that form the basis for an internal review and revision of an institution’s IP strategy and IP policy.
- Technology transfer invariably brings conflicts of interest. The challenge is to manage them in a transparent and consistent manner without granting any exceptions, irrespective of the prestige of the scientist or the amount of funding they attract. Importantly, potential conflicts of interest should not be viewed in a negative light, provided they are disclosed (and managed). Most problems arise when potential conflicts are not disclosed. Few conflicts of interest are well managed by committees.
- All employees (and visitors in some cases) should be required to sign an invention assignment agreement on their date of arrival. Neither an employee handbook that discusses patent assignment nor a published university patent policy may be enough to ensure that the university is assigned ownership.
Conducting IP Audits
by Michael Blakeney
Conflict of Interest and Conflict of Commitment Management in Technology Transfer
by Alan B. Bennett
IP Management Policy: A Donor’s Perspective
by Zoë Ballantyne, Daniel Nelki
by Robert Pitkethly
Making the Most of Intellectual Property: Developing an Institutional IP Policy
by Stanley P. Kowalski
Ownership of University Inventions: Practical Considerations
by B. Jean Weidemier
The Role of the Inventor in the Technology Transfer Process
by Anne C. Di Sante