 What should an institutional
  policy touch on?
 How to decide these issues?
 How to implement?
 IP that is included
 Who is covered
 Ownership of IP
 Disclosures
 Dispute resolution
 Protection of certain
  comm...
 Traditional division between Copyrights
  and Patents
 Ignoring of Trade-marks
 Good arguments to be made now that
  a...
 Researchers
 Students
 Staff members
 How about visitors?
 Members of the local community
  allowed to use facilitie...
   Clear statement that IP is owned by X
    [Inventors; Funding Organization;
    Institution?]
    › Choice should be b...
 Open source?
 Academic publications
 Open innovation
   Most important special case
    › transfer of ownership only when paid “full
      economic costs”
    › Meaning of FE...
 Can’t manage what you don’t know
 Initial information gathering
 Gather information relevant
  to initial valuation
 ...
 Initiates management
 Can be used to pass information to:
    › Internal stakeholders (academic
      management)
    ›...
   Who is an Inventor?
    › Patent attorneys can answer
     to a point
 Useful to have some type of
  internal committ...
 Inherent conflicts between supervisors
  and students
 How to protect students?
 Conflict between granting agency and
...
 They say: “It’s not the money, it’s the
  principle”
 They mean: “It’s the money!”
 How to determine?
 Institutional ...
 Does TT get a portion of
  revenues automatically?
 What other functions will
  they be given
 How to fund over
  ‘dry...
 Communication plan
 Also needs to see almost immediate
  services being available
 Practices (next section) are a crit...
Marcel D. Mongeon
             +1 (905) 390 1818
marcel@mongeonconsulting.com
Institutional IP Policy
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Institutional IP Policy

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Points to consider in establishing an institutional (usually university) intellectual property policy. Presentation given as part of an ASEAN-USPTO Program on Technology Transfer in Bangkok, Thailand, July 1, 2009

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Institutional IP Policy

  1. 1.  What should an institutional policy touch on?  How to decide these issues?  How to implement?
  2. 2.  IP that is included  Who is covered  Ownership of IP  Disclosures  Dispute resolution  Protection of certain communities/Conflicts  Responsibility for Management  Splitting the money
  3. 3.  Traditional division between Copyrights and Patents  Ignoring of Trade-marks  Good arguments to be made now that all IP should be brought into a policy  Who decides when IP will be commercialized? (Researcher, funder, administration?)
  4. 4.  Researchers  Students  Staff members  How about visitors?  Members of the local community allowed to use facilities?  How to reconcile issues over collaborating partners?
  5. 5.  Clear statement that IP is owned by X [Inventors; Funding Organization; Institution?] › Choice should be based on: who is best capable of doing the work?  Obligations to sign patent documents › Need for institutional and individual signatures  Consider ‘relief valve’ that lets researchers get ownership back
  6. 6.  Open source?  Academic publications  Open innovation
  7. 7.  Most important special case › transfer of ownership only when paid “full economic costs” › Meaning of FEC  Publication limits  Other issues related to working with industry
  8. 8.  Can’t manage what you don’t know  Initial information gathering  Gather information relevant to initial valuation  Need to balance information required and complexity to complete
  9. 9.  Initiates management  Can be used to pass information to: › Internal stakeholders (academic management) › External stakeholders  When is something truly a disclosure?
  10. 10.  Who is an Inventor? › Patent attorneys can answer to a point  Useful to have some type of internal committee to arbitrate disputes  Can also help with revenue splits
  11. 11.  Inherent conflicts between supervisors and students  How to protect students?  Conflict between granting agency and host institutions  Use of an intermediate authority  Conflicts between inventors and institutions
  12. 12.  They say: “It’s not the money, it’s the principle”  They mean: “It’s the money!”  How to determine?  Institutional portion generally at least 50% after ‘costs’  What do costs mean?  Include overhead, time etc? or just patents and outside personnel?
  13. 13.  Does TT get a portion of revenues automatically?  What other functions will they be given  How to fund over ‘dry spells’?
  14. 14.  Communication plan  Also needs to see almost immediate services being available  Practices (next section) are a critical piece of the puzzle
  15. 15. Marcel D. Mongeon +1 (905) 390 1818 marcel@mongeonconsulting.com
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