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.
 Abstract
Conducting IP Audits
by Michael Blakeney
Abstract:
This chapter explains how important it is for a research institute to audit both the intellectual property (IP) that it generates and the third party IP that its researchers utilize. Such an audit will have the practical consequence of enabling the research institute (when appropriate) to secure ownership, maintain, and manage the IP for which it is responsible.
Abstract
Conflict of Interest and Conflict of Commitment Management in Technology Transfer
by Alan B. Bennett
Abstract:
The potential for personal interests to influence institutional decisions in universities and public sector research institutions continues to grow. This is because of the increasing activity in intellectual property (IP) management and technology transfer undertaken by these institutions. The activities have the potential to generate both personal and institutional financial gain, making conflict of interest and conflict of commitment issues unavoidable. This chapter explains the nature of these conflicts and discusses the policies, regarding conflict of interest, of several universities, offering them as potential models for crafting these indispensable policies.
Abstract
IP Management Policy: A Donor’s Perspective
by Zoë Ballantyne, Daniel Nelki
Abstract
IP Strategy
by Robert Pitkethly
Abstract
Making the Most of Intellectual Property: Developing an Institutional IP Policy
by Stanley P. Kowalski
Abstract:
An institutional IP (intellectual property) policy forms the very foundation of IP management and, as such, serves as the starting point for a system of institutional best practices. The IP policy should be entirely consistent with the mission of the institution. Whether the role of the institution, as defined by its mission, is primarily disseminator of knowledge through teaching and publication, generator of research, technology transfer engine, or promoter of economic development through education and service and/or through technology transfer, the institutional IP policy should be drafted and enforced in a manner consistent with the mission. Doing so will bring efficiency and clarity to IP management, since all the components of the policy, including IP ownership, patenting, confidentiality, and disclosure can be written into the policy. Moreover, the intellectual property will serve the mission in a way that strengthens the institution’s credibility, reputation, and public image.
Abstract
Ownership of University Inventions: Practical Considerations
by B. Jean Weidemier
Abstract:
Several factors help to establish who owns a university invention and what rights the university may, or may not, have. These factors include whether (1) there are express or implied agreements to assign ownership, (2) the inventor is employed by the university, (3) the invention was made within the scope of employment, and (4) where and when the invention was made. Under U.S. law, individuals own their inventions, except where there is an express agreement providing for assignment of ownership of inventions to an employer or where an implied agreement to assign is found because the employee was hired or assigned to invent or solve a specific problem or served the employer in a fiduciary capacity. Therefore, in addition to implementing clearly delineated policies, it is critically important for a university to absolutely require all employees and visitors to sign invention assignment agreements (IAAs) on their date of arrival. It is unwise to rely on policy statements to determine whether or not a university employee owns his or her invention: universities should always obtain signed (express) agreements, and both the employee and the technology transfer office should retain copies. Research contracts with the government and other sponsors should have a checklist item on the existence of IAAs for the principal investigator and other researchers (whether or not a university should have undergraduates routinely sign IAAs is up to each university). Upon termination of employment, personnel should be asked to sign an exit form indicating that they have disclosed all inventions falling within the terms of the IAA to the university licensing office.
Abstract
The Role of the Inventor in the Technology Transfer Process
by Anne C. Di Sante
Abstract:
Without inventors, there would be no technology to transfer. But without technology transfer professionals, there would be limited transfer of technology. Good relations between inventors and technology transfer professionals are therefore essential for the commercialization enterprise to succeed. Relationships should be established long before the transfer services of the technology transfer office (TTO) are required. A healthy relationship will allow technology managers to negotiate both faculty and business concerns about licensing agreements. Making sure that the inventor is sympathetic to the aims of the TTO will also make it much easier for everyone to understand how a technology may meet market needs, recognize potential licenses, and determine whether a licensee is fulfilling its obligations. For all of these reasons and more, a TTO should always go the extra mile to educate, develop, and maintain good working relationships with inventors.
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