Technology Transfer and Intellectual Property Rights Presentation at ASCI 29 th January 2016 Krishna Ravi Srinivas PhD

IPR as a strategic Asset IPR can be used a strategic asset in technology transfer. The scope and breadth of IPRs owned is important to use it as a strategic asset. Hence companies file many patents related to one innovation/technology which often results in a patent thicket. This makes inventing around difficult and enables to negotiate better deals in technology transfer. So laboratories should not stop with filing few patents but think in terms of building patent portfolios and should file many patents related to an invention including process patents. On the other hand the cost of filing and maintaining these assets should also be looked into. Hence they should strike a balance between patent nothing and patent everything attitude.

Linking IPR policy with business strategy For laboratories that are heavily into applied research or R&D IPR policy should be part of business strategy because IPRs can be filed for many purposes. Patenting can be for defensive purposes so that even if the technology is not commercialized no body else is able to copy it or infringe. Patenting should be from early stages of an invention till the R&D results in tangible outcomes. While ideas per se cannot be patented, new/novel processes, techniques and inventions that have utility can be patented. So it is better to have a strong IP portfolio related to the core activity of the R&D center. Linking IPR policy with strategy is important and it should be considered not just from the revenue angle.

Publish or Patent or Both In key research projects publishing first or public disclosure in conferences may hamper patenting. So prior to publication or presentation the potential for applying for IP should be assessed. If necessary the publication/presentation should be done in such a way that it does not amount to public disclosure of the key element or becomes part of prior art. Publishing after applying for patent is fine but care should be exercised in disclosing information as till patent is granted and even after that there could be opposition. Often public disclosure is part of prior art and if the invention is largely based on what was disclosed/published it could affect grant of patent. This is important for technology transfer and commercialization as a technology is covered by many patents and if a key patent application is rejected then the value of invention will be affected.

Publish or Patent or Both So research centers should have clear cut policies on IP and publication/disclosure. In many companies, key novel compounds are coded and information is kept secret. Not even all in a research team may get to know full details. It will be a good practice to vet information disclosed in publications /presentation in preparation to ensure that IP claims are not affected. IP team and R&D team should interact continuously and the potential for IP should be identified in the early stages itself and if necessary filed. This is important for IP protection for new compounds and early leads in drug discovery. As organizations give importance to patent/IPR also scientists should not think that only publications matter for recognition. So they should think of IPR issues at all stages of R&D.

IPR, number, quality and value Organizations should strike a balance between claiming IP on everything and free disclosure/no IP policy. Numbers may be impressive but commercial value/income may not be significant. So quality and value should be factored in assessing applying for IP. Maintaining patents is expensive, time consuming and so is monitoring whether are there any infringements. These can be outsourced to professionals. Valuation of IP assets should be undertaken periodically so as to assess their utility and potential for income. As far as possible licensing and commercialization should be encouraged than holding on to IPRs. So in technology commercialization the total value of IP of an organization should be taken into account.

Licensing Broadly there can be exclusive and non-exclusive licensing. While licensing a technology protected by IPR on non-exclusive basis may appear to be attractive as license income may appear to be more, firms prefer exclusive licensing if technology protected by IPR is very important. Non-exclusive licensing may be done to prevent monopoly control over a product or use of invention but in commercialization it all depends on importance of technology, availability of alternate technologies and commercial value of technology. So licensing strategy should be developed and the options should be explored before taking a decision. The terms of licensing may include reach through royalties, restrictions on use of technology. Royalty can be on basis of revenue or a lump sum or a combination of these. However if the period for which royalty is to be paid is less than the life of the patent then it may amount of to no royalty in some years. Hence it is better to maximize royalty when the patent term is valid and as technology may become obsolete or substitutes may be developed or its commercial value may decline, licensing agreements should be done in such a way that commercial gain is maximized.

Licensing Licensing of a patent does not exhaust the other options for use of the patent including own use. So licensing terms should be drafted and negotiated carefully. Non-disclosure, prohibition on sharing technology and similar terms can be added where necessary. Remember that maximizing the revenue from IPR and protecting it is important in short and long term. Cross-Licensing is an option when the IP holder also needs access to technology from a firm that needs technology from the IP holder. But research centers should not opt for cross-licensing without evaluating all options including alternative technologies. While a single patent may be licensed often patents are offered in bundle to cover many aspects relating to a technology. Process and product patents can be offered as a bundle. But this varies from industry to industry. Where processes are important but substitutes are available or can be developed, licensing of product can provide more commercial benefit, if the product has no substitute. In pharmaceutical, agro-chemicals and other industries where the core of the invention/technology is associated with a single compound product related IPRs matter most. It could be a compound or a modified gene or a modified protein.

Licensing So understand the industry specific aspects and the market for technologies. Liberal import of technologies has ensured that buyers have more options. This cuts in both ways. R&D Centers can claim IP protection in many countries & also strive for licensing technology in different markets. So awareness of international dimension of IP, innovation and technology markets is important. If it is better to get a technology under licensing and use it for developing an invention and benefit from that, then such options should be explored at R&D stage itself than thinking in terms of developing everything in house. This again calls for assessing options such as cost of technology acquisition vs. internal development, alternative technologies and their role and cost in over all R&D and commercialization. For example if access to a patented gene can result in a valuable invention that can be protected then it may be better to get it under license than undertake R&D for it.

Licensing and Public Welfare In addition to traditional licensing there are options such humanitarian licensing agreements, licensing based on differentiation in markets, licensing with agreement to share technology etc. These are used for diffusion of technology in public interest and to improve access to technology. Organizations like PIPRA are helping universities to draft and choose such licenses. So if a research center prefers public welfare over commercialization it should first get IPR at least for defensive purposes and put it to best use through such licensing including transfer of technology.

Case Study: Bt Cotton in China and India