WIPO Guidance – Intellectual Property Policy for Universities and Research Institutions for Countries in Transitions Prague, April 21 and 22, 2016 Mr. Michal Svantner Director, Department for Transition and Developed Countries World Intellectual Property Organization (WIPO)

Overview: Why is academic IP important? What is an IP Policy and why is it needed? WIPO Model Intellectual Property Policy for Universities and Research Institutions.

Why is academic IP important…

What…… Who……. Why.……

Industrial property: inventions, designs, brands… Copyright: publications, art, computer software, study papers, databases, legal documents…

What is an intellectual property policy and why is it needed…….

Why IP Policy is needed? Traditional role of universities – creation, storage and transfer of knowledge It is necessary to create conditions and mechanisms for the effective commercialization of R&D outputs in order to get additional revenues Universities and research institutions are the main source of R&D outputs underlying the creation of new products and technologies

Set of principles adopted by an institution to provide clear rules and guidelines for IP asset management.

The main objectives of IP Policy development : Promote scientific investigation and research; Provide certainty in research activities and technology-based relationships with third parties; Set out the Institute procedures surrounding the identification, ownership, protection and commercialization of Intellectual Property; Facilitate the maintenance of records on IP; Ensure the timely and efficient protection and management of IP; Ensure that economic benefits arising from the commercialization of IP are distributed in a fair and equitable manner that recognizes the contributions of the Inventors and the Institution as well those of as any other stakeholders; Enhance the reputation of the Institute as an academic research institution and a member of society as well as the reputation of the Researchers through bringing the research results to public use and benefit.

Issues to be addressed by an IP policy: Awareness Protection Disclosure Ownership Benefit sharing Commercialization/dissemination procedure 3 rd party collaboration Conflict of interest and confidentiality issues Involvement of technology transfer office (TTO)

Advantages: Ensures the timely and efficient protection and management of IP Promotes scientific investigation and research Facilitates the maintenance of records on IP and commercialization Enhances collaboration with 3 rd parties Safeguards the interests of all stakeholders Ensures harmony and balance Brings in business

Challenges: Takes into consideration country specific objectives, history, culture, advantages/disadvantages Designed to help university mission and public interest, while at the same time recognizing the need to take advantage of the created academic IP Takes into consideration all stakeholders interests It has to be understandable and consistent It has to be coherent with national law and in-line with national policy/strategy Takes advantage of globalization/internationalization of IP It should be evaluated

Not just a document. An institution wide strategy, which includes awareness raising, infrastructure creation, human resources, trainings etc.

It should be a balance of interests: institutions authors/inventors/creators other organizations society/public

How can WIPO help….

WIPO Model IP Policy….

Template or set of guidelines on which the universities can base their own IP policies

The provisions of the Model IP Policy are based on existing IP policies of several universities : Bournemouth University King’s College London Oxford Brookes University University of California University of Cambridge University of Debrecen University of Glasgow University of Oxford University of Plymouth

Preparation of an “instruction” for the use of the Model Policy Organize country consultations/events with University Provide follow-up advice and information

Objectives Facilitate the efforts of Universities to elaborate their own IP policies, concerning the rights related to the protection and exploitation as well as the obtainment and transfer of intellectual products, and the manner of determination of the author's share in the fees and other revenues arising from the exploitation of the product, as well as enhancing the moral acknowledgement of authors; To identify the legal and institutional elements of the early stage innovation systems (such as innovation and IP laws, roles of the central innovation promoting bodies, IP policies, TTOs, licensing activities, spin-offs, incubation); To benchmark the best practices in comparison with those of the developed countries;

Objectives – cont. To describe a feasible model for the academic intellectual property in countries in transition, including management methods and protocols for the processes; To provide legal embodiment of IP managements & technology transfer (references to innovation acts, university IP policies); To facilitate the efficient evaluation and maintenance of records on the intellectual works created by the researchers and faculty, as well as other persons falling under the scope of these regulations of the University in the course of their research activities.

The need for an IP policy: To safeguard the University's overall interests in managing collaborative research activities and innovation transfer Significant benefits can be generated through R&D There are several stakeholders in the R&D process each of them contributing to the generation or exploitation of IP. These include: universities researchers/inventors students research sponsors industrial partners mediator organizations (TTOs) organizations exploiting University IP (licensees) investors others.

Components: Scope of the policy; Legal issues relating to the status of researchers; External sponsorship, research collaboration with third parties; Ownership of IP; Disclosure, protection and exploitation of IP; Revenue sharing; Conflict of interest and confidentiality issues.

Scope The policy should apply to all researchers of the Institute, including those with student status and visitor scientists who use the Institute resources and who perform any research task at the Institute. It should cover all IP created by researchers of the Institute. Inventions, technologies, developments, applications, discoveries, improvements, materials, compounds, processes and all other research results and tangible research properties, whether patentable or not. Trade or business secret/know-how: Many different items can qualify for trade secret protection, such as a formula or a process, so long as it provides a business with competitive advantage and the business takes appropriate steps to maintain the secrecy of the information.

External sponsorship, research collaboration with third parties An agreement should be negotiated before commencing any research-related activity in collaboration with external partners. In certain cases it may be beneficial to the Institute to enter into agreements with external sponsors of research and third parties that are exceptions to the provisions of the Policy. Such agreements may be: Research Service Agreement, Cooperative Research and Development Agreement, Material Transfer Agreement, Confidentiality Agreement, etc.

Ownership - Inventorship Generally all rights in IP created by the Researcher in the course of his or her duties and activities of employment belongs automatically to the Institute. However in case of IP created in the course of a sponsored research or other type of agreement with a third party, the ownership should be determined according to the terms of such agreement. In case the Institute waives its rights over the IP, generally the Inventors shall have the option to acquire related IPRs, etc.

Income sharing An incentive to Inventor (s) should be provided by distributing revenue generated from the commercialization of the IP; The principle of sharing revenues should be defined individually for each Institute, taking into account all the stakeholders with whom the Institution's income shall be shared, as well as general economic factors; It is a general principle that the Institute's share increase as the Net income increases; In cases there is more than one Inventor, the Inventor`s share is divided between the Inventors in a proportion which reflects their respective contributions.

Summary recommendations In order to avoid legal conflicts and to ensure the best possible exploitation mode To researcher staff: find out whether the Institute has a policy regarding IP management; consult with the TTO or other official representative of the clinic before consulting your new results or research plans with third parties. If this is not possible, at least sign a confidentiality agreement; before launching any cooperation with third parties, an appropriate agreement should be signed; disclose all IP generated in the course of the clinical or research activity as soon as possible to the clinic; consider protection business exploitation before publishing new results; consider conflict of interest when working at I for outside organizations. To enterprises, external partners: consult with an official representative of the research institute regarding cooperation and IP issues - it is not always enough to visit and negotiate with the researchers

Protect and manage your university/research institution ideas through an effective IP policy!

Thank you for your attention!