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, regardless of whether an institution is public or private and whether located in a developed or developing country, is 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.
- A technology transfer office must have systematic procedures to administer, monitor, and enforce its technology licenses. This includes compliance with royalty payments and reporting obligations in a nonconfrontational manner.
- A TTO should regularly review active license agreements. This specifically includes ensuring that milestones are met and royalties paid.
- Potential patent infringements should be monitored continuously through sound surveillance protocols, and action taken to remedy infringement is an essential part of IP asset management. The lack of patent enforcement can lead to a loss of patent rights.
- If litigation seems to become inevitable, credible communication that the IP owner is serious about protecting its IP assets will go a long way to bringing infringers to the table to discuss the issues and negotiate a mutually beneficial outcome. Importantly, early communication with potential infringers and good license and licensee diligence, are the foundations for policing and maintaining intellectual property, irrespective of whether the intellectual property is owned by a public or a private entity.
- Essential to contract management is a well-organized electronic filing system, possibly with archival, working, and computer files with integrated interactive modules organizing data on contacts, inventions, patents and license applications, royalties, receipts, and reporting. A TTO should establish such a system as early as possible and before the number of agreements and licenses becomes large.
- The online version of the Handbook allows users to download an electronic contracts-management system free of charge.
- Most IP disputes should not end up in litigation, as there are many options and strategies for resolving disputes. Good contracts and good licensing practices anticipate that disputes arise with partnerships and licenses.
- Mediation and arbitration can be effective dispute-settlement procedures, provided they have been agreed upon and established in contract clauses at a time when a license or partnership is being negotiated—and before any problems arise.
- The success of an arbitration or mediation depends largely on the “quality” of the arbitrators and mediators. The challenge is often to find candidates who have arbitration/mediation skills, have experience with the specialized knowledge of the disputed subject matter, and are acceptable to both parties.
Administration of Technology Licenses
by Hans H. Feindt
Alternative Dispute-Resolution Procedures: International View
by Eun-Joo Min
Parallel Trade: A User’s Guide
by Duncan Matthews, Viviana Munoz-Tellez
Policing Intellectual Property
by H. Walter Haeussler, Richard S. Cahoon