1. 4TH REGIONAL PLANT BIOTECHNOLOGY FORUM – 20 October 2011
Commercialisation of Intellectual Property
TIA IP UNIT
Chyreene Truluck
Intellectual Property Analyst

2. EXAMPLE: TRANSGENIC MULTIVITAMIN CORN6
Transgenic plant
Transform plant and Select and screen transformed plants
Insert into vector
Isolate and amplify gene 5 4 3 1 2

3. USING IP (YOUR OWN OR SOMEONE ELSE’S) TO DERIVE VALUE
WHAT IS COMMERCIALISATION?
USING IP (YOUR OWN OR SOMEONE ELSE’S) TO DERIVE VALUE

4. What is your best route to market? How easy is it to enter?
COMMERCIALISATION STRATEGY
Know the market
Which market is it?
What is your best route to market?
How easy is it to enter?
What are the barriers to entry to market?
Who are the major players in the market?

5. IP is an asset which you can:
ROUTE TO MARKET
Keep rights to yourself
Produce product yourself
Sell the product yourself OR
Use Distributors
IP is an asset which you can:
Commercialise yourself
Sale (Assignment)
Lease (License)

6. COMMON COMMERCIALISATION VEHICLES
IP is an asset which you can:
Commercialise yourself
Sale (Assignment)
Lease (License)
Assign wholly or part of your IP rights
The assignee of the IP will be the owner of the IP

7. COMMON COMMERCIALISATION VEHICLES
Ownership is not transferred to the licensee
Owner refrains from suing for limited activities
Non-exclusive license
Sole license
Exclusive license
IP is an asset which you can:
Commercialise yourself
Sale (Assignment)
Lease (License)

8. Will this advantage be sustainable?
INTELLECTUAL PROPERTY STRATEGY
An IP strategy requires you to think about the process of commercialisation and to determine how and why you want to protect your IP
What does this mean?
Decide on appropriate type of protection
Decide when to protect
Decide on territory in which the IP should be protected
Consider the cost of protecting the IP
Test for IP strategy: Will the strategy enable the technology to have a competitive advantage?
Will this advantage be sustainable?

9. Provided for a limited time period
DECIDING ON TYPE OF IP PROTECTION AND WHEN TO PROTECT
Patents:
Provided for a limited time period
Initial patent may expire but additional patents may be filed for improvements
Plan to licence? May be crucial to attract licensees
If IP is still in development phase: file provisional patent application or PCT application

10. Patent for vector; Trade secret for vector; Trademark for vector
EXAMPLE: TRANSGENIC MULTIVITAMIN CORN 6
Transgenic plant
Transform plant and Select and screen transformed plants
Insert into vector
Isolate and amplify gene
Patent for transgenic plant; Plant breeder’s right for new plant variety; Trademark for variety name
Patent for process; Know how for process; Design registration and Trademark for equipment e.g. Gene gun; Copyright for manuals
Patent for vector; Trade secret for vector; Trademark for vector
Patent for primers, gene sequence, method; Copyright for sequence representations
Copyright for gene sequence results, lab book, theses, publications, protocols 5 4 3 1 2

11. Know-how and trade secret:
DECIDING ON TYPE OF IP PROTECTION AND WHEN TO PROTECT
Know-how and trade secret:
Can provide an advantage over competing products or services
Inexpensive form of protection…however the value can be lost if the secret or confidentiality is lost
Use of this method of protection is often very dependant on the field of the technology
Used when an invention is difficult to reverse engineer
Useful before filing patent application, especially where to do so is premature
If you plan to license know-how may need to provide ongoing support

12. Patent for vector; Trade secret for vector; Trademark for vector
EXAMPLE: TRANSGENIC MULTIVITAMIN CORN 6
Transgenic plant
Transform plant and Select and screen transformed plants
Insert into vector
Isolate and amplify gene
Patent for transgenic plant; Plant breeder’s right for new plant variety; Trademark for variety name
Patent for process; Know how for process; Design registration and Trademark for equipment e.g. Gene gun; Copyright for manuals
Patent for vector; Trade secret for vector; Trademark for vector
Patent for primers, gene sequence, method; Copyright for sequence representations
Copyright for gene sequence results, lab book, theses, publications, protocols 5 4 3 1 2

13. DECIDING ON TYPE OF IP PROTECTION AND WHEN TO PROTECT
Trademarks:
People like to rely on a trusted brand
Brand and protect brand early so when other forms of IP expire customers are familiar with your name sustain commercial activity
Plan to commercialise on own at first and then sell company at later stage when its worth more? it is important to build brand and trademark may be vital

14. Patent for vector; Trade secret for vector; Trademark for vector
EXAMPLE: TRANSGENIC MULTIVITAMIN CORN 6
Transgenic plant
Transform plant and Select and screen transformed plants
Insert into vector
Isolate and amplify gene
Patent for transgenic plant; Plant breeder’s right for new plant variety; Trademark for variety name
Patent for process; Know how for process; Design registration and Trademark for equipment e.g. Gene gun; Copyright for manuals
Patent for vector; Trade secret for vector; Trademark for vector
Patent for primers, gene sequence, method; Copyright for sequence representations
Copyright for gene sequence results, lab book, theses, publications, protocols 5 4 3 1 2

15. Copyright: DECIDING ON TYPE OF IP PROTECTION AND WHEN TO PROTECT
Inexpensive (Automatic)
Only way to protect computer programs as such in South Africa

16. Patent for vector; Trade secret for vector; Trademark for vector
EXAMPLE: TRANSGENIC MULTIVITAMIN CORN 6
Transgenic plant
Transform plant and Select and screen transformed plants
Insert into vector
Isolate and amplify gene
Patent for transgenic plant; Plant breeder’s right for new plant variety; Trademark for variety name
Patent for process; Know how for process; Design registration and Trademark for equipment e.g. Gene gun; Copyright for manuals
Patent for vector; Trade secret for vector; Trademark for vector
Patent for primers, gene sequence, method; Copyright for sequence representations
Copyright for gene sequence results, lab book, theses, publications, protocols 5 4 3 1 2

17. File for IP protection in these territories
DECIDING ON TERRITORY IN WHICH THE IP SHOULD BE PROTECTED AND CONSIDERATIONS OF THE COST OF PROTECTING THE IP
When deciding on territory for protection The market is the most important factor
Market
File for IP protection in these territories
Weigh up cost of protecting against value of IP and company (actual and potential value)
IP strategy should take into account changing value of IP over time
Patent close to expiry not as valuable as at outset
Prior to filing patent applications: know-how and copyright are your biggest asset

18. Patent for vector; Trade secret for vector; Trademark for vector
EXAMPLE: TRANSGENIC MULTIVITAMIN CORN 6
Transgenic plant
Transform plant and Select and screen transformed plants
Insert into vector
Isolate and amplify gene
Patent for transgenic plant; Plant breeder’s right for new plant variety; Trademark for variety name
Patent for process; Know how for process; Design registration and Trademark for equipment e.g. Gene gun; Copyright for manuals
Patent for vector; Trade secret for vector; Trademark for vector
Patent for primers, gene sequence, method; Copyright for sequence representations
Copyright for gene sequence results, lab book, theses, publications, protocols 5 4 3 1 2

19. Refrain from exercising rights
HOW DO YOU OBTAIN VALUE FROM YOUR IP?
Keep rights
Transfer rights
(Assignment)
Refrain from exercising rights
(Licence)
Leverage IP rights…

20. LEVERAGING IP RIGHTS
Obtain a cross licence for someone else’s technology in exchange for your own
Attract further investment
Attract commercialisation partners

21. The IP strategy must be aligned with the commercialisation strategy

22. Thank You
Questions???