SlideShare a Scribd company logo
 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
  communities/Conflicts
 Responsibility for Management
 Splitting the money
 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?)
 Researchers
 Students
 Staff members
 How about visitors?
 Members of the local community
  allowed to use facilities?
 How to reconcile issues over
  collaborating partners?
   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
 Open source?
 Academic publications
 Open innovation
   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
 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
 Initiates management
 Can be used to pass information to:
    › Internal stakeholders (academic
      management)
    › External stakeholders
   When is something truly a disclosure?
   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
 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
 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?
 Does TT get a portion of
  revenues automatically?
 What other functions will
  they be given
 How to fund over
  ‘dry spells’?
 Communication plan
 Also needs to see almost immediate
  services being available
 Practices (next section) are a critical
  piece of the puzzle
Marcel D. Mongeon
             +1 (905) 390 1818
marcel@mongeonconsulting.com

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Institutional IP Policy

  • 1.
  • 2.  What should an institutional policy touch on?  How to decide these issues?  How to implement?
  • 3.  IP that is included  Who is covered  Ownership of IP  Disclosures  Dispute resolution  Protection of certain communities/Conflicts  Responsibility for Management  Splitting the money
  • 4.  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?)
  • 5.  Researchers  Students  Staff members  How about visitors?  Members of the local community allowed to use facilities?  How to reconcile issues over collaborating partners?
  • 6. 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
  • 7.  Open source?  Academic publications  Open innovation
  • 8. 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
  • 9.  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
  • 10.  Initiates management  Can be used to pass information to: › Internal stakeholders (academic management) › External stakeholders  When is something truly a disclosure?
  • 11. 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
  • 12.  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
  • 13.  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?
  • 14.  Does TT get a portion of revenues automatically?  What other functions will they be given  How to fund over ‘dry spells’?
  • 15.  Communication plan  Also needs to see almost immediate services being available  Practices (next section) are a critical piece of the puzzle
  • 16. Marcel D. Mongeon +1 (905) 390 1818 marcel@mongeonconsulting.com