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
Intermediate Accounting, Volume 2, 13th Canadian Edition by Donald E. Kieso t...
Institutional IP Policy
1.
2. What should an institutional
policy touch on?
How to decide these issues?
How to implement?
3. IP that is included
Who is covered
Ownership of IP
Disclosures
Dispute resolution
Protection of certain
communities/Conflicts
Responsibility for Management
Splitting the money
4. 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?)
5. Researchers
Students
Staff members
How about visitors?
Members of the local community
allowed to use facilities?
How to reconcile issues over
collaborating partners?
6. 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
8. 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
9. 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
10. Initiates management
Can be used to pass information to:
› Internal stakeholders (academic
management)
› External stakeholders
When is something truly a disclosure?
11. 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
12. 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
13. 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?
14. Does TT get a portion of
revenues automatically?
What other functions will
they be given
How to fund over
‘dry spells’?
15. Communication plan
Also needs to see almost immediate
services being available
Practices (next section) are a critical
piece of the puzzle