IP Tools, Innovation & Commercialisation of IP

1. IP Tools, Innovation & Commercialisation of IP Options to assist developing countries in positioning themselves to reap the benefits of a stronger IP regime, with special reference to the role of IP management in research organisations Rosemary Wolson Intellectual Property Manager: UCT Innovation University of Cape Town 021-650-2425/083-784-3648 Rosemary.Wolson@UCT-Innovation.co.za

2. Context • TRIPS here to stay • Reduced flexibility in implementing IPRs • Need to acquire, absorb & diffuse technology • IPRs as enabler or obstacle? • Role of research organisations in promoting development • Especially indigenous innovation • Situated within broader policy framework • Tailored to needs & environment • Not proposing a solution • But a step towards one?

3. UniversityKnowledge & Technology Transfer Basic & applied research Know-how & IP Knowledge & technology transfer Revenue Commercial- isation: economic benefit Publication: academic benefit To community: social benefit

4. Institutional Technology Transfer • Relationship between academic/public sector research & private sector • TTO as facilitator • Research contracts (incl collaboration agreements) • Publication • Freedom-to-operate • IP • Licensing • Policy/regulatory affairs • Research & innovation value chain

5. Research & Innovation Value Chain Research Invention disclosure Intellectual Property Licencing Spin-out company

6. US Bayh-Dole Act (1980) • To remedy situation in which federal govt owned IP arising from federally-funded research, but failed to exploit it • Recipients of federal grants given right to own IP, in exchange for undertaking to exploit it • Report • Seek patent protection • Take active steps to commercialise • Share income with inventors • Use balance for research or educational purposes

7. Bayh-Dole Licence Conditions • Exclusive or non-exclusive • US govt entitled to non-exclusive, worldwide, royalty-free licence • March-in rights of US govt • If in the public interest • Manufacture substantially in US • Preference to small business

8. Benefits of Bayh-Dole • New products on the market • Job creation • New businesses established • Typically close to licensing university • Tax revenue • Regional economic development • Or would these benefits have been generated notwithstanding?

9. Other Experiences • Similar TTO model adopted • But usually without Bayh-Dole-type legislation • Very mixed data on ROI • Substantial investment needed • Time lag to realise returns – 10 years + • Lack of skilled staff • Patent & marketing costs • US average around 3% of research budget • UK average closer to 1% of research budget • Europe even lower?

10. Options for Developing Country Institutions • Bearing in mind severe pressure on resources • Distinguish appropriate roles • ‘Pre-licensing’ TTO • Licensing TTO • Broad definition of TTO • ‘Minimal’ functions eg reduce risks • Active facilitation of collaboration • ‘Regulatory affairs’ – compliance • Licensing • Tailor according to needs

11. Options for Licensing Practices (I) • Strategic patenting • Licensing prefered over assignment • Non-exclusive v exclusive licensing • Exclusivity where licensee can practice • Appropriate fields of use, territories, duration • Minimum performance/diligence provisions • Open source as a model

12. Options for Licensing Practices (II) • Market segmentation • Incl differential pricing • Developing v developed country markets • Public v private sector • Requirement to deliver in developing countries • Compulsory sub-licensing – incl know-how • ‘Humanitarian use’ clauses • Preference for local firms • Donation of technologies unlikely to yield profits or serving public interest

13. Points to Consider • Not an exhaustive list • A licence = a contract = subject to negotiation • Influenced by parties’ respective bargaining power • How to ensure that technology is made easily accessible to those who can benefit from it • Must be determined case-by-case - on the whole

14. Supportive Policies (I) • Motivation for govt intervention • Main benefits captured outside institution in broader economy • Bayh-Dole? • UK Lambert Report • SA low proportion of ‘unencumbered’ research

15. Supportive Policies (II) • Training & capacity-building • Learning by doing, context-specific • Funding for patent filing, prosecution & marketing • Centralised TTO • National or regional • Limitations • Potential benefits

16. Complementary Policies • Rooted in a well-functioning national system of innovation • Co-ordination of efforts of different government depts, agencies & stakeholders • Avoid duplication • Avoid conflicts • Seek synergies

17. R&D Support • Increased public spending on R&D • Incentives for promoting private R&D investment • Tax relief • Matched funding • PPPs • Environment conducive to attracting: • FDI • Tech transfer (international) • Meaningful research collaboration • Support for local firms and research institutions to exploit their IP

18. IP-Related Mechanismsto Explore • Taking advantage of TRIPS flexibilities where available • Must be appropriate to national context • Sui generis rights for protection & exploitation of IKS • Utility models/‘petty patents’ • Geographical indications • ABS for protection of biodiversity • Competition law

19. Bilateral • Balancing undertakings for stronger IP protection with measures to ensure that users of system can ultimately benefit • Medium- to long-term objective • Capacity-building • Tech transfer (including know-how) • Provision of research infrastructure • ‘Genuine’ collaborations

20. Multilateral • Alignment of countries with similar interests to lobby • Co-ordinating role of multilateral institutions • Clearing-house facilities • Administration of multilateral funds • Facilitation of tech transfer of technologies of particular public interest • Multilateral agreement on access to basic science and technology?