Institutional IP Policy

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Information about Institutional IP Policy
Business & Mgmt

Published on July 8, 2009

Author: marcelm

Source: slideshare.net

Description

Points to consider in establishing an institutional (usually university) intellectual property policy. Presentation given as part of an ASEAN-USPTO Program on Technology Transfer in Bangkok, Thailand, July 1, 2009

 What should an institutional policy touch on?  How to decide these issues?  How to implement?

 IP that is included  Who is covered  Ownership of IP  Disclosures  Dispute resolution  Protection of certain communities/Conflicts  Responsibility for Management  Splitting the money

 Traditional division between Copyrights and Patents  Ignoring of Trade-marks  Good arguments to be made now that all IP should be brought into a policy  Who decides when IP will be commercialized? (Researcher, funder, administration?)

 Researchers  Students  Staff members  How about visitors?  Members of the local community allowed to use facilities?  How to reconcile issues over collaborating partners?

 Clear statement that IP is owned by X [Inventors; Funding Organization; Institution?] › Choice should be based on: who is best capable of doing the work?  Obligations to sign patent documents › Need for institutional and individual signatures  Consider ‘relief valve’ that lets researchers get ownership back

 Open source?  Academic publications  Open innovation

 Most important special case › transfer of ownership only when paid “full economic costs” › Meaning of FEC  Publication limits  Other issues related to working with industry

 Can’t manage what you don’t know  Initial information gathering  Gather information relevant to initial valuation  Need to balance information required and complexity to complete

 Initiates management  Can be used to pass information to: › Internal stakeholders (academic management) › External stakeholders  When is something truly a disclosure?

 Who is an Inventor? › Patent attorneys can answer to a point  Useful to have some type of internal committee to arbitrate disputes  Can also help with revenue splits

 Inherent conflicts between supervisors and students  How to protect students?  Conflict between granting agency and host institutions  Use of an intermediate authority  Conflicts between inventors and institutions

 They say: “It’s not the money, it’s the principle”  They mean: “It’s the money!”  How to determine?  Institutional portion generally at least 50% after ‘costs’  What do costs mean?  Include overhead, time etc? or just patents and outside personnel?

 Does TT get a portion of revenues automatically?  What other functions will they be given  How to fund over ‘dry spells’?

 Communication plan  Also needs to see almost immediate services being available  Practices (next section) are a critical piece of the puzzle

Marcel D. Mongeon +1 (905) 390 1818 marcel@mongeonconsulting.com

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