4.1.1 IP Policy Examples
An Intellectual Property (IP) policy is the foundation for any institution’s Technology (Tech) Transfer function. Without a solid, written policy, IP management and Tech Transfer are chaotic and inefficient at best, and can even be disastrous. Several decades of IP/Tech Transfer policy trial and error in the United States and a few other countries has produced a set of common guidelines that provide the basis for most Public Sector Research Institution (PSRI) IP policy models. That said, each institution has unique traditions and perspectives that naturally lead to tailored variations on these basic guidelines.
Here’s a presentation about an overview of Institutional IP/Tech Transfer policy framework and issues.
Hundreds of PSRI have developed IP/Tech Transfer policies and many are good models for development and/or improvement of any institution’s IP policy. The World Intellectual Property Organization (WIPO) has made available many of these policy documents in an online database on their website. In addition, WIPO has also created a basic IP/Tech Transfer policy template, and an accompanying document explaining policy choices presented by the template.
4.1.2 IP Ownership Models
Ownership of IP created by PSRI inventors is a foundational principle of Tech Transfer. The starting point for any organized IP management and Tech Transfer process is to establish clear and reliable rules that solidify that ownership. Without such a firm framework, IP/Tech Transfer is a foolhardy endeavor; but, with these proven-reliable and justified rules, IP/Tech Transfer will become a very welcome addition to the mission of the institution.
Different models for IP ownership at PSRI exist, each with their advocates; these are described in the WIPO IP Policy Guidelines. In the most common, the “U.S. model,” patentable IP made by institution personnel is owned solely by the institution. However, under this model, copyrightable matter is usually owned by the creator, not the institution. Trade secret ownership is very ambiguous under this model since, in the United States, trade secrets are not created by universities.
In other models, patentable IP is owned by the inventor, rather than the institution. The WIPO IP Policy Guidelines explains the advantages and disadvantages of these different ownership models in the Tech Transfer process. An area of considerable debate is the policy on ownership of IP developed under research contracts at the PSRI: should the IP developed under such contracts be owned by the funder or the institution whose personnel made the invention underlying that IP? Certainly, funders (particularly companies) are strong advocates for funder-ownership. Others, particularly those who believe institutional ownership of inventions is vital to a sustainable Tech Transfer program, are advocates for institutional IP ownership. Since this is an area of debate and because research funding often depends on how such IP ownership issues are handled, a variety of IP ownership variations in sponsored research contracts have evolved.
Related reading resources:
- Here’s a presentation describing more details of these ownership variations.
- In this article in a special issue of les Nouvelles, the Journal of the Licensing Society International reviewed the four basic models of IP ownership and discussed the pros and cons of each.