IPR and Public-Private Technology Transfer

Professor Prabuddha Ganguli [PhD] CEO VISION-IPR

103 B SENATE, Lokhandwala Township, Akurli Road, Kandivli East, Mumbai 400101, India Tel: 91-22-8873766 e-mail: ramugang@vsnl.com

Presentation made at the WIPO-CSIR Workshop on Licensing and Technology Transfer; New Delhi; India, July 4-8, 2005

Technological Innovation .Societal Progress

Creative exploitation of knowledge in Selection of seeds leading to the Green Revolution and enhancing agricultural productivity Development of nutritive food supplements, vaccines, medicines, methods of treatment to improving community health Inventing novel devices for diverse applications, including, facilitating learning processes and providing systems for communication Deciphering secrets of life creating processes, integrating with communication technologies to give biotechnology

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Knowlitics ... ..A new international

phenomena
Emerging Socio-Political Dimensions of the Knowledge Trade

Transacting Owned Knowledge

Knowletics TM applied for in India by P. Ganguli

IPR plays a decisive role

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Strategic Linking of Knowledge Incubators with Business Enterprises

Integrate IPR in the knowledge generation and transfer process Where does one start????
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YESTERYEARS

TODAY

RESEARCH MODELS

TOMORROW.

ISSUES RESEARCH PROCESSAPPROACHES SOCIETAL IMPACT KNOWLEDGE OWNERSHIP BENEFITS SHARING

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TODAY

TOMORROW. RESEARCH MODELS

YESTERYEARS
DOWNSTREAM RESEARCH

UPSTREAM RESEARCH

Typically Applications Typically Conceptual Private Funded Institutions State Funded Institutions Targeted End Points Open-Ended Knowledge Generation Optimized use of Public Domain Enrichment of Public Domain Knowledge Value Addition as measure of knowledge Credits: Enhanced Peer Recognition competitive edge Profits,Market dominance Proprietary Issues p.ganguli2001

YESTERYEARS

TOMORROW

RESEARCH MODELS

TODAY MIDSTREAM Partial Funding By Private Enterprises in Upstream Research Issues on knowledge Flow Benefits Sharing Publications Research Schemes, Peer Group Recognition etc. Free use by Funding Agency?? Diffused Ownership!!
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YESTERYEARS

TODAY

RESEARCH MODELS

TOMORROW.
TURBULENCE RAPIDS

Blurring of boundaries between Upstream & Downstream Research Overlap between disciplines Quantification of Ownership Formalized benefit Sharing by Partners Overlapping Claims by different owners Challenges to Ownership Criteria Anti competition or Monopolistic p.ganguli2001 Issues

IRP Multi-tier innovation process Optimized use of global knowledge base Intra-Enterprise resources Extra-Enterprise inputs Global/National licensing issues Intricate exclusive/non-exclusive benefits Sharing Organizational frameworks for rapid diffusion of innovation to business

Sociology of Technology
Organization of technology Best Practices and Value Chain of the Business is difficult to transfer Cooperative governance in the innovation process Small Suppliers to Big Companies very effective systems. National Technology Mission
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Enterprise Networking

Expertise Centres

Large Enterprises

SME
SME

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Demand for Patents World wide

10000000 9000000 8000000 7000000 6000000 5000000 4000000 3000000 2000000 1000000 0
1785760 2306840 2774582 629611 640202 683874 685382 702280 9586045 7114126 5899089

Total Filings

4461369

3434628 1965487

1595950

First Filings
721657 826572 751046

624495 593882

1991 1992 1993 1994 1995 1996 1997 1998 1999 2000
Ref: Intellectual Property Rights.. Unleashing the Knowledge Economy P. Ganguli ( Tata McGraw Hill, New Delhi 2001)

Annual Patent Globalization Index (PGI)

12 Globalization Index 10 8 6 4 2 0 1991 1992 1994 1995 1996 1997 1999 2000 1.86 2.66 3.34 4.01 5.5 8.85 10.59

PGI 1.69

PGI = (Total Number of Patents Filed Worldwide) - (Number of First Filings Worldwide) (Number of First Filings Worldwide)

Ref: Intellectual Property Rights.. Unleashing the Knowledge Economy P. Ganguli ( Tata McGraw Hill, New Delhi 2001)

A decade of changes
Enabling national policies and incentive schemes to encourage R&D, technology development and transfer Growth of financial institutions Moving into the new IPR Paradigm Maturing of the IPR infrastructure Several national agencies including industry associations providing IPR awareness and facilitation programmes International agencies getting involved in developmental activities at grass roots.. e,.g. UNIDO Projects, NGOs, WIPO and others.
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Developments in India
Moving into strong IPR Regime in a phased manner during the last 35 years while growing its infrastructure and economy. IPR is now a necessity to give its economy the required competitive edge
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Indian National S&T Policy 2003

salient features
Vigorously foster scientific research in universities and other academic, scientific and engineering institutions; and attract the brightest young persons to careers in science and technology, by conveying a sense of excitement concerning the advancing frontiers, and by creating suitable employment opportunities for them. Also to build and maintain centres of excellence, which will raise the level of work in selected areas to the highest international standards

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Indian National S&T Policy 2003

salient features

Provide necessary autonomy and freedom of functioning for all academic and R&D institutions so that an ambience for truly creative work is encouraged, while ensuring at the same time that the science and technology enterprise in the country is fully committed to its social responsibilities and commitments
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Indian National S&T Policy 2003

To substantially strengthen enabling mechanisms that relate to technology development, evaluation, absorption and upgradation from concept to utilization. To establish an Intellectual Property Rights (IPR) regime which maximises the incentives for the generation and protection of intellectual property by all types of inventors. Provide a strong, supportive and comprehensive policy environment for speedy and effective domestic commercialisation of such inventions All efforts are made to have high-speed access to information, both in quality and quantity, at affordable costs; and also create digitized, valid and usable content of Indian origin. pganguli2005

.. Salient features

Indian National S&T Policy 2003

Salient Features
Support innovation in all its aspects through a comprehensive national system of innovation covering science and technology as also legal, financial and other related aspects Set in mechanisms to achieve synergy between industry and scientific research by creation of Autonomous Technology Transfer Organizations as associate organizations of universities and national laboratories to facilitate transfer of the know-how generated to industry Encourage scientists and technologists to transfer the know-how generated by them to the industry and be a partner in receiving the financial returns Encourage Industry to financially adopt or support educational and research institutions, fund courses of interest to them, create professional chairs etc. to help direct S&T endeavours towards tangible industrial goals
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India Post TRIPS. An Audit

1st (1999) and 2nd Patents Amendment Act (2002) with Patent Rules 2003; 3rd amendment bill introduced in December 2003 has lapsed; Patent Ordinance 2004 on December 26th 2004. The Bill for the 3rd Amendment was passed in Lok Sabha on 22/3/05 and in Rajya Sabha on 23/3/05 The Trademarks Act 1999 and TM Rules 2002 (rules notified on September 15, 2003) Copyright Act 1957 with Copyright rules 1958 followed by International Copyright Order 1999. Designs Registration Act 2000 with Design rules 2001 Geographical Indications Act 1999 with GI rules 2002 Protection of Layouts for Integrated Circuits Act 2000 The Protection of Plant Varieties and Farmers Rights Act 2001 Bio-diversity Act 2002 pganguli2005

India Post TRIPS. An Audit

Designs Registration Act 2000 with Design rules 2001 Geographical Indications Act 1999 with GI rules 2002 Protection of Layouts for Integrated Circuits Act 2000 The Protection of Plant Varieties and Farmers Rights Act 2001 Bio-diversity Act 2002

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Approaches to Industry Academic Technology Collaboration

Only Memorandum of Understanding Singed (MOU) with no formal IP Clauses / Policies Essentially no awareness of the issues.

Instructions for Technology Transfer and IPR

Ministry of Science and Technology has issued the guidelines "Instructions for Technology Transfer and Intellectual Property Rights", which would help in enhancing the motivation of scientists, research institutions and universities in projects funded by the Department of Science and Technology, Department of Biotechnology, Department of Scientific and Industrial Research and Department of Ocean Development.
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Guidelines for Technology Transfer and IPR

Ownership of Intellectual Property: Institutions shall be encouraged to seek protection of intellectual property rights in respect of the results of R&D. They may retain the ownership of such IPR. Institutions would mean any technical, scientific or academic establishment where research is carried out through funding by the central/state government.

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Guidelines for Technology Transfer and IPR

Transfer of Technology: The institutions shall take the necessary steps to commercially exploit patents on exclusive or non-exclusive basis. Royalty to Inventors: The owner institution is permitted to retain the benefits and earnings generated out of the IPR. The institution may determine the share of inventor(s) and other persons from such actual earnings. However, such share(s) shall be limited to one third of the actual earnings.

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Guidelines for Technology Transfer and IPR

Norms for Private Industry: IPR generated through joint research by institution(s) and industrial concern(s) through joint efforts can be owned jointly by them as may be mutually agreed to by them through a written agreement. The institution and industrial concern may transfer the technology to a third party for commercialisation on exclusive/non-exclusive basis. The third party, exclusively licensed to market the innovation in India, must manufacture the product in India. The joint owners may share the benefits and earnings arising out of commercial exploitation of the IPR. The institution may determine the share of the inventor(s) and other persons from such actual earnings. Such share(s) shall not exceed 1/3rd of the actual earnings.
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Guidelines for Technology Transfer and IPR

Patent Facilitating Fund: The owner institution(s) shall set apart no less than 25% of the revenue generated from IPR, to create a Patent Facilitating Fund. The Fund shall be utilized by the owner for updating inventions, filing new patent applications and protecting the IP rights against infringement and for building competency in the area of IPR and related issues.

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Guidelines for Technology Transfer and IPR

Information : The institutions shall submit information relating to the details of the patent obtained, the benefits and earnings arising out of IPR and the turnover of the products periodically to the department/Ministry which had provided funds. March In Rights: The Government shall have a royalty-free license for the use of intellectual property for the purposes of the Government of India.
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Several Government Sponsored Schemes

A few Examples

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Promotion of technology transfer national schemes

Stress on academic-industry-government teamwork for targeted deliver of business oriented results through innovative funding schemes such as New Millennium Indian Technology Leadership Initiative (NMITLI) http://www.csir.res.in/nmitli/nmitli.html; Drugs & Pharmaceutical Research http://dst.gov.in/scprog/tecdev/drugspharmares.htm; Instrumentation Development Programme http://dst.gov .in/scprog/tecdev/instrdevprog.htm; Grants to IndustryPATSER Programme Aimed at Technological Self Reliance (PATSER) http://dsir.nic.in; Home- Grown Technology Programme (HGT) http://www.tifac.org.in/; Department of Information Technology http://www.mit.gov .in/R&D/projects/index.htm#about
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Research and Development by Industry (RDI) consisting of: In-house R&D in industry R&D by Scientific and Industrial Research Organisations (SIROs) Fiscal Incentives for Scientific Research

Programme Aimed at Technological Self-Reliance (PATSER) consisting of: Development of new or improved technologies. Development of special/custom built capital goods. Scheme to Enhance the Efficacy of Absorption and adaptation of Transfer of Technology (SEETOT) imported technology. consists of: Studies and interactions National Register of Foreign concerning technology evaluation Collaborations (NRFC) and pre-industry feasibility of Transfer and Trading in major sectors/products. Technology (TATT) Technopreneur Promotion Promotion and Support to Programme. Consultancy Services (PSCS) including Consultancy International Cooperation Development Centre (CDC) Chart 3

 National IPR Facilitating Centers National Research Development Council (NRDC) Partnering innovators, entrepreneurs, institutions to protect their innovations in India and abroad and also help to commercialise their IPR Technology Information and Forecasting Cell (TIFAC) Facilitating patent searches, funding and facilitating filing of patents, partnering in commercialisation of IPR National Innovation Fund Working with grass-root innovators to protect their innovations and also to facilitate technology transfer/ IPR commercialisation Technology Incubation Programme DST Funded incubation centers set up to facilitate entrepreneurship development and IPR development and transfer
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Promotion of technology transfer national schemes

Mission Led Projects

Strategic Technologies to build competitive capabilities 4 National Level Projects led by the Principal Scientific Advisor to GOI TIFAC : Universities, Indian Institute of Technology ( set of them) and industries. IPR will belong to Universities and IITs. First rights to refusal to industry. Govt. will have march-in rights. Just initiated. Liberal licensing and benefit sharing will be developed.

LESSONS
Identification of relevant problem Investments by private industry in their R&D labs Active link and utilising facilities and expertise in Publicly Funded Institutions and Government Authorities Speedy science to development process/product technology for commercial venture.

Exploring global partners for the steps role of international organisations?, governments?, transnational companies? pganguli2003

The Present Trend

Creation of Institutional IPR Policies Active Involvement of Industry Associations Introduction of courses on IPR in various institutions IPR Awareness Workshops in Institutions, Judiciary, Enforcement Agencies, Courses on Licensing Strategies, Development of IPR Manuals for the SME Sector, etc WIPO Partnering in this process.
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...Several Science and

Technologies getting orphaned due to non availability of funds to progress IPRs on global scale .inadequate infrastructure, management skills, negotiation acumen, inadequate venture capital culture ...No clout to negotiate due to fragmented technologies ..lack of patent information base search skills, avoiding of pganguli2003

Social cost of granting wrong patents

.high cost of litigation when is traditional knowledge legitimate prior art and under what circumstances should it be considered as sociopiracy
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Government
Constitute integrated single window National IPR Commission National IPR literacy Mission Thrust Development of competition law as balancing positive measures to control overuse of misuse of IPR. Exploit geographical indicators to national advantage.

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Government
Re-structure the judiciary & enforcement machinery for professional and speedy response to IPR issues Introduce enabling National Taxation Policy to encourage IPR trade. Networks for protection of grass root innovation and innovators
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Government
Easy and cost effective access to IPR information. Set-up IPR training institutes to prepare technically qualified attorneys Urgently modernize the IPR Administrative Set-ups in the country Establishment of IPR facilitating centres in the country.
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Institutional IPR Policy s Integrating IPR into institutional mission, strategy & project management s Effective Use of IPR information and international alliances s Identifying areas of possible infringements s Licensing strategy s Policing of institutional IP assets s Litigation strategy s IPR audit s Effective utilisation of International Conventions.
s

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