1.7 Intro to IP Management

1.7.1 Types of IP and Their Uses

There are several types of IP. The most important in the Tech Transfer world include patents, trade secrets, copyrights, trademarks, and plant breeder’s rights. In some countries, there is also a lower level patent called, depending on the country, “petit patent,” “utility model,” “utility innovations,” and others. Each has different characteristics, mechanisms for control, and rights granted to the owner.

Patents are the primary “currency” of the Tech Transfer realm. They are issued by the national government on inventions that meet certain criteria, they give the owner (“the assignee”) the right to stop others from making, using and selling the patented invention as claimed in the patent. Patents last twenty years from the date they were first filed in the national patent office. They are usually relatively expensive to prepare, file and prosecute. Getting a patent requires a significant amount of persuasion and argument with the national patent office. Patents that are well crafted on inventions with economically valuable inventiveness can have significant financial value. Patents are public documents.

Trade secrets are not registered with any government agency and are maintained by the owner through management practices that protect confidentiality. Although a patent must fully enable the practice of the claimed invention, there are always opportunities to integrate a fully enabled patent and some trade secret aspects of the surrounding technology.

A copyright protects the expression (written, imaged, digital, etc.) of an idea but not the ideas themselves. Copyrights are good for protecting written materials (books, manuals, syllabi), software and artwork.

Trademarks are designs and words that protect a brand. Clever TTPs can use combinations of patents and trademarks to protect certain valuable inventions. Examples include “Goretex” fabric, “Gatorade” beverage, “Escalator” moving stairway, etc.

Plant breeder’s rights is a general umbrella term to describe the various types of statutory protection allowed for plants. These include Plant Variety Protection Certificates and other names that all give the owner patent-like rights in plant types that satisfy patent-type criteria. 

1.7.2 The TTP’s Role in IP Management

Different TTOs use different types of IP management. In some offices, the TTP plays a very direct role in the development and filing of a patent application. In others, the TTP manages outside professionals for detailed IP work. This Guidebook follows the model in which the TTP is the manager of overall IP strategy and implementation – but does not directly prepare, file, and prosecute IP protection procedures. In this manager/facilitator role, the TTP is responsible for understanding the invention, formulating and articulating the inventiveness, and working with the inventor(s) to develop a potential patent application. After developing a solid understanding of the patent scope of the invention, the TTP hands this to an IP professional (patent lawyer or agent) for conversion into a formal patent application. The TTP is responsible for shepherding the overall process to ensure the inventors and patent professionals agree on the content of the patent application. The TTP oversees the process, ensuring that the potential patent claim coverage will be market relevant and support the value proposition. The TTP’s oversight is similar with other forms of IP protection. The TTP should always know the status of IP protection of any inventions under their management. Also, it is the TTP’s responsibility to create the “IP suite” of several IP types covering a technology (see Topic 5: Basic Tech Triage: Assessing and Selecting Disclosures, Section 1.5.6).

1.7.3 Working with Patent Searchers, Agents and Law Firms

The TTP is the center-point of a three-way IP team that includes the inventor and outside IP professional. The TTPs must facilitate the process between the three parties. The TTO and TTP must establish certain ground rules regarding the management of any IP process with any outside IP professional. In particular, the TTO/TTP must clarify that the TTO is the client and the TTP is the key representative of the client. The TTO/TTP must also clarify that the inventor/creator is not the client. However, the TTO/TTP should expect the outside IP professional to treat the inventor with all due respect and professionalism. The outside IP professional must operate with the basic principle that the TTP is the final decision-maker on all IP decisions – unless the TTP has delegated some authority to the inventor. We recommend that the TTO have written rules on engagement by outside IP professionals, discuss these rules with these professionals, and obtain full cooperation and agreement on their implementation. 

1.7.4 Developing an IP Strategy for Tech Transfer

A vital responsibility of the TTP is to develop a strategy for successful Tech Transfer of a particular invention. When the TTP first encounters the invention (typically, by first reading the invention disclosure (see Topic 5: Basic Tech Triage: Assessing and Selecting Disclosures), the TTP should begin thinking about how best to protect the invention with available IP and/or Tangible Property. Tangible Property are physical things that are owned, used, and transferred (see Track II (Mid-level TTP), Topic 7: Discussions with Industry as Part of Tech Triage, Section 1.7.6). Developing an overarching strategy involves thinking about the potential IP tools, and in parallel, considering the future potential applications and countries where the invention will have possible value. Once the TTP understands the invention and conducts a patentability analysis, they can begin to more definitively propose the feasible types of IP. They must also consider geographical scope and potential – where will the invention have potential licensable value and what forms of IP/Tangible Property will be relevant there? Once the TTP has formulated a preliminary IP/Tangible Property plan based on these assessments, they should consider the cost-effectiveness of all aspects of this IP/Tangible Property plan. The cost of such a plan will largely depend on if and when the TTP has secured a private sector partner (a Licensee) who will shoulder IP expenses. If there is no Licensee to help pay for such expenses, the TTP/TTO must have a plan for optimizing property cost-effectiveness, which is likely to include abandoning some IP types, countries, or certain patent filings. 

1.7.5 IP Management and Interaction with Potential/Existing Licensees

Some PSRIs/TTOs allow commercial partners to own the IP created by PSRI personnel. In such cases, there is little IP management interaction – the institution gives up ownership and management of its invention. This Guidebook assumes a different model in which the PSRI never gives up its IP ownership. This model is used in all U.S. universities, and a rapidly growing majority of universities and government agencies globally. With this ownership model, the TTO/TTP must implement certain rules that will: 1) maintain this absolute ownership rule, while 2) providing the commercialization partner (Licensee) integrated management of the licensed IP. These rules for sole ownership but co-management should be developed and implemented by the TTO, stated during the license negotiation process, and made clear in the License Agreement contract. These rules include transparency of all documentation to and from national IP offices regarding the protection of the licensed IP, timely sharing of all information, responsiveness and shared decision-making. The rules should also make it clear that the TTO/TTP have the final say in all IP decisions. That said, a good TTP will understand and empathize with the Licensee and allow the Licensee to be as fully engaged and empowered as reasonably possible to make IP decisions in partnership with the TTO/TTP. The co-management rules also must address how outside IP professionals are paid. Such outside professionals must also understand that the TTO/TTP remains the client, even though a private sector co-manager (the Licensee) has entered the picture. These rules must be modified and adapted for the eventuality of the Licensee creating its own IP that should be managed in concert with the licensed IP. 

1.7.6 Bioproperty and Other Tangible Property in Tech Transfer

Tangible Property is very different from IP. IP is not a physical thing — it is “intangible” property, like stock certificates, insurance policies, money and saving account statements. Tangible Property is physical — actual things, matter, “stuff.” Examples include clothing, cars, laptops, books etc. In the world of Tech Transfer, important tangible things include cell-lines, research animals, whole plants, seeds, DNA, microbial cells, virus particles, etc.

Often, inventions in the life sciences involve Tangible Property. In such cases, the TTP must consider not only the IP possibilities for the invention, but also if and how the Tangible Property can be managed for Tech Transfer purposes. A key fact to remember is this: Tangible Property is different than IP – they have very different properties, rights, control mechanisms and management requirements. Sometimes, an invention is protected by Tangible Property mechanisms and IP – nonetheless, these property types are very different. Biological Tangible Property is so prevalent and important in the Tech Transfer world that it has a special term: “Bioproperty.”