ICTSD-UNCTAD Regional Dialogue on IPR, Innovation

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_at_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
University Knowledge 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
RD Support

• Increased public spending on RD
• Incentives for promoting private RD 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?