Ganguli Setting Ip Policies For Tech Transfer Offices In The Arab Worl1

pganguli©2000-08

Dr. Prabuddha Ganguli CEO

“VISION-IPR”101-201, Sun View Heights, Plot 262,

Sher-e-Punjab, Andheri East, Mumbai 400101, IndiaTel: 91-22-28264348; Fax: 91-22-28264344

e-mail: [email protected]

“Setting IP policies for Tech Transfer Offices in the Arab

World”

Presentation at The Fourth Annual Conference onTechnology Commercialization, Nov 13, 2008 Amman, Jordan.

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“Knowlitics” ®…...…..a new international

phenomenon Emerging Socio-Political

Dimensions of the Knowledge Trade

IPR plays a decisive role

Transacting Owned Knowledge

“Knowletics” is a registered trademark of P. Ganguli

pganguli©2000-08©pganguli2002

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Minds to Market

idea stage

Freezing of optionsPosition in the protectedKnowledge grid

Idea Feasibility

Ideas demonstrableIdeas Actionable

Idea into product/process

Marketable Products/ProcessesAlignment with market

time

Rea

lisab

le V

alue

of I

P to

Pot

entia

l Val

ue o

f IP

Market acceptabilityCompetitive sustenance

IPRManagement

Product Lifecycle

Value addition to Business & Market

Hi to Low Risk

ScienceTo Technology

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Stem Cells of Institutional IPR

…facilitate the creation of innovations that have the potential to differentiate and value add at various stages of the

Innovation Cycle

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CONCEPTS INNOVATION PROCESS

OUTPUT MARKET

O

ppor

tuni

ties

M

appi

ng in

nova

tion

pa

thw

ays

Stra

tegi

c op

tions

and

pr

ocur

ing

fund

s

W

orki

ng th

roug

h th

e IP

grid

Pa

tent

s &

oth

er IP

R

Filin

gs/R

egis

trat

ions

St

rate

gy fo

r Fo

reig

n Fi

lings

Li

cens

ing

Opt

ions

Jo

int D

evel

opm

ents

IP

R P

ortfo

lio c

reat

ion

St

rate

gic

tieu

ps

Pr

oduc

t / T

echn

olog

y Li

fecy

cle

M

anag

ing

IPR

Por

tfolio

M

onito

ring

IPR

Po

licin

g IP

REn

forc

ing

IPR

Record Maintenance & Updating IPR Information

Internalise Intellectual Property and Strategic Management of IPR

Ref: Intellectual Property Rights.. Unleashing the Knowledge Economy

P. Ganguli ( Tata McGraw Hill, New Delhi 2001)

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Key Institutional ChallengesNeed - Quality inventions at reasonable speed- Inventions that are “patent non-infringing”………create inventions

with “freedom to operate”- Inventions that can be transferred / commercilaised- Inventions that are patentable- Inventions that can be used to enhance and/or

facilitate networking between stakeholders including other research groups, funding agencies, industries, etc.

- Human Resource to meet the challenge at optimum costs

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Optimisation the costs?- IP assisted choice of R&D problems- Documentation of prior art and its analysis

as part of the R&D work- Phasewise IP Review from early stage and

strategu building- Identification and early building of networks

for Technology Transfer Partners. - Building of intra-institutional Human

Resource of IP literates and interfaces to derive maximum from IP Practitioners

- Framework for inter-institutional IP and technology transfer

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The Way Forward1. Creation and

implementation of Institutional Management of R&D process with integrated IPR Policy

2. Creation of critical number of IPR Literates and IPR Professionals to implement the IPR Policy in the R&D Process

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IPR Policy….A national activity•Formulation of Comprehensive National IPR Policies • Ensuring the creation of Frameworks for the Intuitional Policy for Management of IPR • Regional Training of Personnel in Industry and Academia on IPR Management • Focused programme for building of a critical number of “IP Literates” and “IP Professionals” to operate as networked communities of IP Good Practices including the training on how to access and use Patent information in project planning and execution.• Creating a consortium of funding agencies in the region to support technologies developed in institutions to fund IPR related activities including cost of filings, fees of attorneys, etc

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Key elements of an Institutional IPR Policy to facilitate Technology Transfer

Institutional IPR Policy among other items should cover • the modes of innovations in the institution• guidelines for ownership of IPRs, • process for documentation• obligations of confidentiality & disclosure ,• Approaches to IPR transactions that include licensing, assignments, direct sell outs, joint ownerships, etc,• framework for drafting agreements such as employee contracts, non-disclosure agreements, memorandum of understanding (MOU), research contracts, work on hire, work for hire, etc,

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Institutional IPR Policy among other items should cover• defining the signing authorities in the institution • guidelines for the use of the name of the institution, especially in activities involving other institutions, • guidelines for sharing of institutional information research projects, research results and data, • guidelines for clearance of publications based on work dome in the institution or in collaboration with the institution• guidelines for the transfer of material, samples, etc (biological and non-biological), • guidelines for transfer of knowhow, etc.

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• Guidelines for applying, procuring and utilizing funds from diverse funding agencies, for collaborative work, consultancy, etc., • Setting conditions for technology transfer, resource sharing & collaborations, • Approaches to policing and enforcement institutional IPR,• Modes of technology marketing and business development of innovations • Explicit rules for benefit sharing from the revenues generated from the IPRs between the institution and the innovators. • Clarifying all definitions of the terms used in the IPR Policy to avoid misinterpretation. • Consequences of non-compliance of the Institutional IPR Policy. • The funding of the Institutional IPR activities

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Creating Institutional IP Policy..the process

A priority status signaled by the Head of the institution, such as the Vice Chancellor of the university, the Director of the institute and/or all the associated key functional heads, such as Deans of Academics, Administration, R&D, etc. to ensure adequate resource allottment to the activity in the Institution.

An office with executive authority must be identified to champion the IPR activities and be responsible for the development and implementation of the IPR Policy in the institution.

e.g. an office that is equivalent to the Office of the Dean of Research and Development or the Dean of Academic Activities , etc

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Benchmarks for the selection of the office to lead the IPR Policy ProcessThe Office should :

a) facilitate the R&D dynamics in the institution leading to the creation and utilization of institutional IPR assets;

(b) link with other institutional functions promote the harmonious development,

(c) act as the conduit for interactions with external funding agencies, industries, etc and

d) has the authority to negotiate deals on behalf of the institution;

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Institute a formal “IPR Cell”

comprising of

a cross-functional core team

with defined responsibilities

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Role of the IPR Cell from initiation of policy to implementation: Be entrusted with a time-bound task of drafting an institutional IPR policy, based on the Vision and Mission of the Institution

Mapping the dynamics of various intra-institutional activities

Mapping the inter-institutional linkages and interactions

Examining human resource policy to formulate a fair benefit- sharing arrangements between the innovators and the Institution on earnings from the IPR developed.

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Role of the IPR Cell from initiation of policy to implementation: Establishing an IPR Management Committee with structured and focused executive roles

Defining signing authorities for agreements, MOUs and acting as interface between law firms and the institution

Acting as a conduit for institutional communication on matters of technology transfer

Conducting IPR awareness workshops involving the stake holders so that grassroots level feedback is obtained at the nucleation phase of the IPR Policy to ensure buy-in by the stakeholders

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What the Institutional IP Policy Should Lead to…..

• Achieving the VISION and MISSION of the Institution.

• Stimulation of creativity and inventiveness through Framework for Competence and Knowledge Building

• Rationalisation of investment in human and capital resources. Avoidance of duplication of R&D

• Optimal use of “Extra-institutional” knowledge• Integration of the Institutional Innovation Process

with a wide range of R&D and Business Partnerships©VISION-IPR 2002

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• Timely Protection and Management of Institutional Knowledge Assets…

• Encouragement of partnership with other developers especially with SMEs in the Innovation Supply Chain..

• Earnings from innovations to pay for further research and acquiring other technologies ( e.g. licensing and cross-licensing)

• Recognition to inventors and enhancement of ethical standards in the Institution

• Transparent Benefit Sharing from IP earnings .

©VISION-IPR 2002

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• Creating and retaining leadership in the Knowledge Market.

• Academic Freedom to operate in a global environment.

• Guarding the Institution from taking on undue Financial and Legal liabilities.

• Effective enforcement of Institutions IPRs• Enhancement of Institutional Image• Assuring Long Term Growth of the Institution .

©VISION-IPR 2002

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EVOLVING ROLES ..........

IPR Cell

WINDOW TO IPR INFORMATION

IN PROJECT TEAMSResearch ProposalsIdentify innovationsAppropriate IPR protectionPublication clearance

GATEWAYAttorneysIPR AuthoritiesNational/International agencies

TECHNOLOGY TRANSFER CHECK POSTAgreements/ContractsLicencingClearance for use

INSTITUTIONAL IPR

AWARENESS

SUPPORT LEGAL PROCEEDINGS

POLICING IPR PORTFOLIO

TRACKING COMPETITION IPR monitoring Planning oppositions, blocking moves, etc.

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How can this be implemented in the Arab World

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T

O

S

O

L

V

E

HAYAT(Life)

Agriculture food and nutrition

Health

Biotechno-logy

MA'LUMA (Information)

IC Technologies

Application and integration of technologies

BEE'A(Environment)

Environmenttechnologies

Energy

Sustainable development

MUJTAMA’(Society)

Decision Making

Economic integration

Good governance

Education

Trends and changes in society

Citizenship

Values and knowledge

NUMUW(Development)

Nanotechno-logies

New materials

Production technologies

TO INTEGRATE all the elements of the Arab Science and Technology system

SHABAKA (Network) For research networking and researchers' mobility.

IBDA‘ (Innovation) To transform knowledge into products and services.

MULKIYA (Proprietorship) For technology transfer and the management of

intellectual property and patents.

ISTITHMAR (Investment)To create the suitable environment to promote

investment in technology.

SHARAAKA (Partnership) To support research in SMEs and entrepreneurship.

– To solve problems and to answer to market and society needs for sustainable development and employment creation by the implementation of trans-national and multidisciplinary collaborative scientific research and technological development– To maximize their impact by combining technological, industrial, social and cultural aspects.

Towards a Values –based knowledge society in The Arab World-Arab Science And Technology Program (5X5=1) ; IZDIHAR (prosperity)

Ref: The Arab Science and Technology Foundation (ASTF), Dr. Samir Hamrouni, www.astf.net

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Case Studies

Examples form some operating projects in India

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Idea clustering in open forum by Department of Biotechnology (DBT)

Delhi University

Cadila PharmaceuticalsPvt Ltd (CPL)

DeptOfBiotec(GOI)

CPL as industryInterested in the conceptFor commercialisation

Idea Generation In Open DBT Forum

DBT interested inCreating & Nurturing alliances

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The Project• Delhi University though of a Naked Eye Visible

Agglutination Test (NEVA) ..simple, bedside, rapid, and as good as ELISA.

• CPL identified it as a good India Centric Product Concept for Commercialisation.

• Project funding both by DBT and CPL• Technology developed by DU, Knowhow

transferred to CPL, CPL developed it into a commercial product

• A 3-Party MOU between DBT-DU-CPL signed• DU received lump-sum and milestone payments

from CPL

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DBT --- Industry Initiative

National Institute ofImmunology NII


NII: Basic Science for Leprosy Vaccine

CPL: Under license Developed it to a commercial marketable Product

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Industry Initiative National PPP spinoffs


Further Identified innovative indications For Immuvac

CSIR

DST

DBT

NMITLI

SIBRIRESEARCH GRANTS

PRDSF

Scheme

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Industry Initiative National PPP spinoffs

CPL

CSIR

DST

DBT Clinical

Basic Science

SIBRI

Basic Science

ProductDevelopment

Basic Science

ProductDevelopment

5 Institutions

5 Institutions

1 Institutions

4 Institutions

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SBIRI of DBT 'Small Business Innovation Research Initiative (SBIRI)

Scheme

• Grants and Loans• Only Grants• Only Loans

For Industry-Publicly Funded Institutions

DBT has engaged M/s Biotech Consortium India Ltd. (BCIL) as SIBRI Management Agency to manage the funds on behalf of DBT

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PRDSF of DSTPharmaceutical Research and Development Support Fund (PRDSF)was created under the administrative control of (DST) inJanuary, 2004. Government’s budgetary contribution of Rs.150 crores as corpus to this fund. Interest accrued is used to assist R&D Projects in modern and Indian Systems of Medicines jointly proposed by industry/academic institutions/laboratories and to create national facilities.

Indian scientists are engaged in the development of medicines forseveral diseases such as malaria, filaria, cancer, ulcer, tuberculosis,Etc., and vaccines for rotavirus, cholera, DNA rabies, tuberculosis,HIV, malaria, etc.

The leads obtained from the screening of new chemical entities, extracts from plants, traditional preparations, microbes and fungal sources are at different stages of discovery chain like pre-clinical and clinical trials.

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NMITLI of CSIRNew Millennium Indian Technology Leadership Initiative (NMITLI)

A unique “Team India” public-private partnership.

With a workable benchmark of short project cycle with high-risk low investment, has emerged the concept of generously funded time bound and resulted oriented projects.

This has emerged as the biggest funding route for biotech sector. The initiative so far is worth Rs 1500 million.

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Directed Basic ResearchDirected Basic ResearchSelected Thrust Areas of National significance for the development of Platform Technologies.

•Initiate Directed’ Basic Research with Industry Inputs and Involvement in a Consortia Mode so that the knowledge generated finds would benefit Indian Society or the results would benefit Indian Industry or our strategic national interests.

Courtesy: Dr. R. Chidambaram, Principal Scientific Adviser to Government of India

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““Directed”Directed” BasicBasic

ResearchResearch

Pre-Pre-CompetitiveCompetitive

Applied Applied ResearchResearch

AppliedAppliedResearchResearch

And And ProductProduct

DevelopmentDevelopment

Basic Basic ResearchResearch Type:Type:

Participation:Participation: Universities,Universities, National National LaboratoriesLaboratories

Universities, NationalUniversities, National Laboratories and Laboratories and

IndustryIndustry

IndustryIndustry

SocietalSocietalInterestInterest

IndustryIndustryInterestInterest

Varieties of Needed Research & Varieties of Needed Research & Development EffortsDevelopment Efforts

-----------------------

-- --- ----

--------------------

---

Industry-Industry-Consortium Consortium Mode(e.g.CAR)Mode(e.g.CAR)

The Department of Atomic Energy has been very successful in directing basic research to areas of relevance to their mandate and has benefited greatly from it.


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Some Typical Areas of Some Typical Areas of "Directed Basic Research""Directed Basic Research"

Can approach from both sides (Examples)Societal InterestBasic Science behind Ayurveda Health Related Macromolecular Crystallography Megaprostheses implantsNanoelectronics Cyber Security (SETS)Automotive Electronics (CAR)Industry/ Strategic InterestDirected Basic Research would prepare the students better to

join R&D Centres in Industry and participate in national societal

andstrategic programmes.


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Creating Institutional Human Resource in IPR

“Model IPRinternaliseTM – Integrating Intellectual Property Rights in technical

education” by Jabade, Abhyankar and Ganguli [World Patent Information 30 (2008) 220–224]

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How do we Innovatively Infuse IPR

into Structured

Innovation Processes without negatively impacting creativity? …..

And yet make it amenable to integration with management systems

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“IPRinternalise™” ..A Pathway to seamless Integration of IPR into

Innovation Processes

Consider IPR as “in-vivo” activities within the Innovation Cell

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Path to IPRinternalise

Bridging the gaps at the early innovation phasealso ensuring appropriate documentation

Creation of IPR

LITERATE human

resource

Development of IPR

LITERATE intra-

institutional human

resourceInteractive dynamic interaction creating an

“Enabling Environment”

Intra institutional working groups of researchers, IPR

LITERATE resource

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Establishing Communities of IP Creators, IP Enablers and IP Practitioners

Hub and Spoke IP Core GroupsNetworking for

peer to peer interaction and learning

Exploiting EXISTING

Government channels

Utilize power of IT TOOLS

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Student Project-problem identification

Do we know what is known?

Do we know what is protected?

Do we know how to bypass what is known and protected?

Do we know how to “DESIGN SOLUTIONS”

Do we know how to ENGINEER AN “INVENTIVE STEP”

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Output Development of IP expertise and capability within Technical Educational Institutions

Creating an urge to “Internalise IP” as a process of innovation And learning

Enhance quality of Technically qualified students and Provide emerging career opportunities

Building of a “CREATIVE LEARNING ETHICAL SOCIETY”

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Patents and other IPR in a cost effective process

Technology transfer and benefit sharing

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An Effective tool

to

develop open, inspired prepared and enriched minds

and

Seamlessly integrate IPR in Technical Education

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Hub Spoke Model Peer to peer transfer of IPR literacy and Expertise

Hub to create spoke ………Spoke to become hub to create spoke…chain propagation

HUB Institution Spoke Institute 3

Spoke Institute 2

Spoke Institute 1

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IPRinternaliseA Scalable Model

Cost Effective

High Adaptability within Core Groups

Peer to Peer Transfer of Literacy and Expertise

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References1. Some of the approaches taken by various countries in setting up policies and implementation processes have been complied by the World Intellectual Property Oganisation (WIPO) in its website1. www.wipo.int/ip-development/en/strategies/national_ip_strategies.html2. “Model IPRinternaliseTM – Integrating Intellectual Property Rights in technical education” by Jabade, Abhyankar and Ganguli in World Patent Information 30 (2008) 220–2243. South African Bill “ Intellectual property rights from publicly financed research and development bill” [B46 – 2008] www.pmg.org.za/bill4. Creating and Embedding an Intellectual Property Rights Policy in an Educational or Publicly Funded R&D Institution ; P. Ganguli; Journal of Intellectual Property Rights 8, 478-485 (2003) ].