Intellectual Property Management in Universities and Successful Technology Licensing

Organized by The World Intellectual Property Organization (WIPO)

in cooperation with

The National Institute of Intellectual Property of Chile (INAPI) Santiago de Chile, October 21 to 24, 2013

Theme One: Innovation and Intellectual Property(c) IP Asset Management in the Contexto of the Research Institution

• IP as mechanisms for transfer of intangibles• Country strategy as background for TTO• Managing IAs developed by the TTO or third parties• Concept of IA• Country level written strategic plans• IP Audit tool• Education and incentives• Clusters• Strategy of the TTO• Selection of projects: qualitative valuation

IP as mechanism for transfer of intangibles

• Drucker and the knowledge society.• Nonaka’s theory of knowledge.• From tacit knowledge to explicit knowledge or• Discovering the secrets of human capital.

Country strategy as background for TTO

• Country strategy as background for TTO• Country policies for science, technology and

innovation• Strategy of the TTO• Institutional Policy

Managing IAs developed by the TTO or third parties

• Concept of IA• How to select projects for development

– Audit– Qualitative valuation– Portfolio classification

Concept of IA (Quotes from:Development and Management: A Key Strategy forEconomic Growth – WIPO Document)

• Concept of IA– Potentially valuable knowledge, formally protected or not,

that has been selected for development, protection and marketing.

– Increasingly, private enterprises and academic institutions see patents, trademarks, copyrighted works and other forms of IP as economic assets, the value of which can be optimized by proactive policies and strategies.

– IA’s may be subject to key policies, strategies and practices that are effective in stimulating and supporting the development, accumulation, management and use of IP as an economic asset.

Concept of IA

• There is a growing recognition that proactive governmental policies can enhance the human capital and IP portfolios of Nations.

• The same is true at the level of the TTO.

Country level written strategic plans

• Policy makers can develop and implement written IP strategic plans:– Based in a prior IP audit– Goal-setting and measurement– Identification of “clusters” or target areas for IP asset development– Funding of research and development and “harvesting” of

resulting IP– Coordination of Education and economic policies with IP policies

and planning– Creation of tax and other financial incentives for IP development– Introduction of measures to make IP ownership realistically

affordable to SMEs and nonprofit research institutions, including public-private venture funds and patent application funds.

Country level strategic plan

• This plan may also specify:– strategic goals and objectives, mechanisms, policies,

actions, costs and resources, – links with other planning tools, including

development, economic and education plans. • Many countries have developed stand-alone IP

plans:– economic plans with IP components, – multifaceted strategic plans integrating education,

technology, health, agriculture, commerce, IP and finance.

Country level written strategic plans

• Examples:– Singapore has focused on building up the capabilities of

SMEs and investing selectively in priority areas referred to as “clusters”, such as information technology (IT), biotechnology, and life sciences research.

– Malaysia has created several venture capital funds for technology development, including The Technology Acquisition Fund15 (TAF), The Commercialization of R&D Fund16 (CRDF) and the Malaysia Venture Capital Management Fund17 (MAVCAP). The last of these focuses on “spearheading the country’s change towards a complete knowledge-based economy before 2020”.

IP Audit Tool

• A public policy IP Audit Tool has been developed by WIPO for use by its Member States.

• The public sector audit tool focus- audit provides a factual and analytical foundation for national IP strategy, an analysis on the policies and infrastructure available and needed on a national basis in order to use IP as tool for economic growth.

• After the audit, a written IP plan creates a strategy for developing and managing IP over a period of time.

Education and incentives

• Education is the foundation of IP asset development.

• Incentives and awards:– These include tax incentives, payments, patent

application funds, venture funds for SMEs in cluster areas and financial rewards in private enterprise for inventors and creators.

– In Indonesia, the Ministry of Research and Technology operates Asuransi Teknology National (National Technology Insurance) to safeguard enterprises against the risk of failure of their technology.

Clustering

• Clustering:– Nations successfully implementing IP asset development

and management programs select clusters or target areas in which their enterprises or research institutions may have a competitive advantage, or which harmonize with national needs and capacities.

– In a recent report titled A Practical Guide to Cluster Development, by Ecotec Research and Consulting to the UK Department of Trade and Industry and the English RDAs, the examples of clusters given are Silicon Valley IT Cluster in the USA, the city of London Finance and Services Cluster and the North West UK Aerospace Cluster.

Effects of management of IP assets

• IP assets, when properly managed, can:– motivate and help generate revenues from product sales and– licensing royalties;– increase high value exports;– attract high-value foreign direct investment (FDI) and joint ventures;– help retain and motivate technical personnel;– stimulate research and development (R&D) based industries; – create employment;– support educational and research institutions;– enhance corporate valuation;– promote funding for R&D, which provides and enhances needed– technologies and products;– provide bargaining power in technology transfer negotiations;– help to gain access to goods and technologies through

licensingagreements.

Selection of promising projects for development

• How to select projects for development:– Private audit– Qualitative valuation (to assist in decision as to

which projects deserve continued investments)– Portfolio classification

Qualitative valuation (from ‘Practices of European R&D Institutions - WIPO)

• Valuation can be qualitative or quantative (no reference will be made here of the second), for use in the process of guiding decisions, measuring:– Technical– development status (early stage, proof of concept, pilot,

other)– IP point of view – existence of similar technologies and

their geographical distribution, potential partners– Market poing of view – existing of similar technologies and

their geographical location– Financial

Qualitative valuation (from ‘Practices of European R&D Institutions - WIPO)

• Internally developed ranking criteria (8 leading factors):– Suitability for suggested application– Cost– Development status– Exploitaition rights– Degree of novelty– Marketing interest of partner– Quality of technology information– Sociability of technology provider

Qualitative valuation (from ‘Practices of European R&D Institutions - WIPO)

• Other factors:– Patentability– Patent strength– Status of invention– Market situation– Inventor’s history – supportive or not in the process

of transfer?– Additional services for the Partner (potential for

continuation of collaboration)– To whom shall inventions be licensed– Scientific and management skills of the R&D team

Portfolio classification: technology strength vs. business strength• This classification may be made according to

technology strength, by measuring market attractiveness, and technology strength, for purposes of creating a valulation matrix.

• The other is business strength, measured against market attractiveness, providing measure of business strength, with options to classify technology in 9 quadrants, from ‘protect position’ to ‘build selectively’, on the upper side, to Protect and refocus, to ‘divest’.