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Law of technology transfer and interlinking issues


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Lectures Delivered by Dr. Tabrez Ahmad

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Law of technology transfer and interlinking issues

  1. 1. Dr. Tabrez Ahmad Professor of Law Dr. Tabrez Ahmad, 1
  2. 2. Dr. Tabrez Ahmad, 2
  3. 3. Agenda              Introduction Essentials of Technology Transfer Technology Transfer in todays economy Negotiating Technology Transfer Agreements Main Technology Transfer Agreements The sale or assignment of IP Rights License or License Contract Know-How Contract Franchise Acquisition of Equipment and Their capita goods Consultancy agreements Joint venture agreements The Turn Key Projects Dr. Tabrez Ahmad, 3
  4. 4. What is “Technology Transfer”?  WIPO says technology transfer (TOT) is:  “defined as transfer of new technologies from universities and research institutions to parties capable of commercialization”  or in the sense of transfer of technologies across international borders, generally from developed to developing countries.  Generally TOT consists of knowledge or IP rights that are: licensed in the form of intellectual property, the subject of formal consulting or training agreements, communicated in the work place or research settings diffused by publication or other means. Dr. Tabrez Ahmad, 4
  5. 5. What is “Technology Transfer”?  The WIPO website then refers to two manuals on licensing  Successful Technology Licensing  development/en/strategies/pdf/publication_903.pdf  "Exchanging Value - Negotiating Technology Licensing Agreements: A Training Manual”  Dr. Tabrez Ahmad, 5
  6. 6. What is “Technology Transfer”?  Technology transfer is the process of sharing of  skills, knowledge, technologies, methods of manufacturing, samples     of manufacturing and facilities among governments and other institutions to ensure that scientific and technological developments are accessible to a wider range of users who can then further develop and exploit the technology into  new products, processes, applications, materials or services. It is closely related to (and may arguably be considered a subset of) knowledge transfer. Dr. Tabrez Ahmad, 6
  7. 7. What is “Technology Transfer”?  The reference to  skills, knowledge, technologies, methods of manufacturing, samples of manufacturing and facilities is probably wide enough to refer to the subject of transfer  But there are more locations of transfer. Transfer can be  between Public Universities or Government Research Institutes and       private industry between the research and development (R&D) departments and the other departments of a single business between various entities or branches of a business group in a franchising operation from the franchisor to the franchisee between international organisations and national organisations between industrialised economies and developing economies And so on Dr. Tabrez Ahmad, 7
  8. 8. What is “Technology Transfer”?  And while the WIPO emphasises licensing as the major vehicle for technology transfer there are other methods of transmission  Government local participation requirements in foreign firms     setting up in the jurisdiction  Note Chinese requirements and EU response Legitimate reverse engineering Access to publicly available knowledge through patent data bases Industrial espionage Straight out infringement activity Dr. Tabrez Ahmad, 8
  9. 9. Essentials of Technology Transfer             Whether it is allowed between sharing countries Whether it is allowed between sharing parties Issues if you are technology giver Issues if you are a technology taker Issues of Intellectual Property in the targeted technology What should be the nature of contract Which law will follow Which forum will follow Method of adjudication Damages for breach of contact How and where to enforce the award Sharing of green technology Dr. Tabrez Ahmad, 9
  10. 10. Utilization of Patent Information as a Technology Transfer Tool: Databases, Content and Access Conditions Dr. Tabrez Ahmad, 10
  11. 11. Dr. Tabrez Ahmad, 11
  12. 12. Patent System  Patent system has always been concerned with “technology transfer”  A patent specification is a teaching document:  Should explain to a person skilled in a field of technology exactly  what has been invented and  how to put it into practice Dr. Tabrez Ahmad, 12
  13. 13. Volume of Patent Documents  There is an enormous number of patent documents  WIPO statistics for 2004  850,000 first filings  1,600,000 applications to patent offices  5,000,000 patents in force  European Patent Office  holds 60,000,000 patent documents Dr. Tabrez Ahmad, 13
  14. 14. TOPICS      Range of patent documentation Types of information in patent documents Way information is presented How information may be accessed Some uses of information Dr. Tabrez Ahmad, 14
  15. 15. Patent Documentation  Specifications in granted patents  Specifications in applications not granted  Specifications in petty patents, innovation patents, utility models  Provisional application descriptions  Decided cases in patent litigation  Abstracts of inventions used to search  Official gazettes, bulletins of patent offices  References between sources  Official patent indexes Dr. Tabrez Ahmad, 15
  16. 16. Patent Documentation  Data bases for computer searching  Data bases of national or regional offices  Specialist patent information providers  Patent agent firms  Individual enterprises  Government reports, discussion papers, draft legislation, etc  Compilations of patent statistics Dr. Tabrez Ahmad, 16
  17. 17. Types Of Information  Technological and  Bibliographical information Dr. Tabrez Ahmad, 17
  18. 18. Technological Information  Description of the state of the art prior to the invention  Detailed description of the invention in a form to instruct a person skilled in the art  Drawings or formulae  A claim or claims defining embodiments Dr. Tabrez Ahmad, 18
  19. 19. Bibliographical Information  Dates names and addresses of:  the inventor,  applicant for right,  person claiming to be eligible for grant,  patent representative, agent or attorney  Classification symbols  IPC symbols  Maybe national patent classification  Title of invention  Abstract of description  Representative drawing or formulae Dr. Tabrez Ahmad, 19
  20. 20. Advantages of Patent Documents  Current and recently granted patents and applications often       contain most recent technological information publicly available in field. Often only source of information Detailed explanations of technology Detailed information in all fields Source of linking references Standard form of patents Bibliographical items standardised by INID code Dr. Tabrez Ahmad, 20
  21. 21. Advantages Of Patent Documents  Classifications systems allow key to searching and analysis  Abstracts assist sifting for relevance  Bibliographical information allows contact with wide range of parties  Standard formats allow creation of consistent data bases  Patent family identifiable both by technology and territorially Dr. Tabrez Ahmad, 21
  22. 22. International Patent Classification  National patent classifications developed  USPTO 1831, German patent Office 1877, UK 1880  Once prior art included foreign patent documents was need for international system  WIPO and Strasbourg Agreement 1971  IPC system (8th edition)  8 main sections of technology  21 subsections  129 classes  639 subclasses  7,314 main groups  61,397 groups (and rising)  All identified by key symbols Dr. Tabrez Ahmad, 22
  23. 23. INPADOC  International Patent Documentation Centre- 1972  Established by WIPO and Austrian Govt  Now administered by EPO  Contains  Title, IPC classification symbols, any national classification symbol, relevant dates,eg filing, amendment, search, registration, names of inventor. Applicant, patentee, addresses. Contact information etc.  Machine readable, computer storage, fully searchable  Information collected from national and regional patent offices  Particularly useful in capacity to generate “patent families” Dr. Tabrez Ahmad, 23
  24. 24. INPADOC forms of access            Patent Classification Service (PCS) Numerical database (NDB) Patent Family and Numerical List (PFS/INL) Patent Application Service (PAS) Patent Applicant Priorities (PAP) Patent Inventor Service (PIS) Patent Register Service (PRS) Patent Gazette (IPG) Watch CAPRI project WIPO services for developing countries User guides in particular fields Dr. Tabrez Ahmad, 24
  25. 25. Other Classifications  ECLA- European Classification  134,000 sub divisions  EPO claims more precise, homogeneous and systematic than IPC  Concordance with IPC  USPC- United States Patent Classification  400 classes, with class number  many subclasses all with detailed identifying symbols  Table of concordance with IPC Dr. Tabrez Ahmad, 25
  26. 26. Other Sources Of Information  Derwents World Patent Index (WPI)  Chemical Abstracts Service (CAS)  Private sources  eg Siemens,  Hitachi, etc     Patent Office data bases (free) International Organisations (eg WIPO Patentscope) (free) Commercial companies (fees) Note there are database providers and patent information and analysis service providers Dr. Tabrez Ahmad, 26
  27. 27. The uses of information.  Testing novelty or inventive step  Information about the state of technology and method  Planning information  Management information Dr. Tabrez Ahmad, 27
  28. 28. The users of information.  Patent offices  Governments and government departments and agencies  Researchers and teachers in higher education  Research and development institutions  Industrial enterprises Dr. Tabrez Ahmad, 28
  29. 29. Use as technical information           Determine most recent products and methods Accumulate and understand technological advance Locate related technology Identify technology trends Adapt research priorities R&D plans strategically targeted Allows “design around” or complementary development strategies Reduce incidence of “reinventing the wheel” Suggest solutions to analogous problems in other fields Indicator of feasibility Dr. Tabrez Ahmad, 29
  30. 30. Use as management tool - Government  Monitor foreign patent applications in own country to level of foreign ownership and control in economy  Indicate trend of technology in foreign country  Can assist identifying import levels Monitor domestic applications to identify  Level of domestic innovation  levels of R&D success Information to assess trends in economy Identification of activity in differing sectors Planning tool Monitoring and analysing patents in a foreign country may reveal much about that countries economic and industrial development and assist trade policies       Dr. Tabrez Ahmad, 30
  31. 31. Use as management tool - Enterprises  Source of technological information for R&D  Compile and maintain IP inventory  Key performance targets and measures for Overall enterprise activity  Particular divisions or departments  Research teams or individual researchers Searching by inventor allows to monitor who is generator of new technology Screen and monitor competitors Use information to oppose competitors acquiring rights, seek revocation, defend infringement actions Identify potential collaborators for cross licensing, patent pooling      Dr. Tabrez Ahmad, 31
  32. 32. Use as management tool - Enterprises  Use information to decide if should buy out competitor, merge or sell out to competitor  Identify possible ways to designs around others rights  Identify possible improvement patents on others patents  And so on Dr. Tabrez Ahmad, 32
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  34. 34. Europe and China Technology Transfer  Warns that EU companies subject to Chinese requirements that threaten unwanted Technology Transfer  Compulsory joint ventures for markey access  Public Contracts and procurement  Design Institutes  Certification for Access  Dr. Tabrez Ahmad, 34
  35. 35. Compulsory joint ventures in exchange for market access  Access to the Chinese market in some designated     sectors, sectors, such as  car manufacturing  manufacture of railway locomotives and rolling stock, foreign companies must enter into joint ventures with Chinese companies. Approval to form a joint venture or to operate may depend on the supply of specific technology, includ ing future improvements of this technology. In some cases, the partner cannot be freely chosen and may be a competitor or concurrent Joint Venture partner of another competitor. In other cases, enlargement of a preexisting investment may require the set up of local R&D Centre or other forms of transfer of Knowhow. Dr. Tabrez Ahmad, 35
  36. 36. Public contracts/procurement  To take part in public tenders,foreign companies must ensure that part of their production is local  up to 80%in some cases  Production by foreign subsidiaries in China is often not considered as local  Instead, foreign firms have to work with a Chinese general contrac tor, to which their technology has to be transferred in full.  Specific rules about bidding requirements of technology transfer, to g ive the contract to whichever company promises the greatest transf er of know how Dr. Tabrez Ahmad, 36
  37. 37. Design institutes  For many projects, in particular the manufacture of machinery and equipment, China requires mandatory wide ranging review of industrial drawings and designs by Chinese de sign institutes .  The drawings and know‐how may later be used by other Chines e projects to duplicate and use the design in other locations of China. In addition to transferring ,  Foreign companies often have provide detailed technical documentation and to train Chinese staff so that, in future, they can design the machinery or equipment independently Dr. Tabrez Ahmad, 37
  38. 38. Certification and licenses for market access  Many products have to be certified by a Chinese certification in stitution or are subject to a license by a Chinese ministry before they are allowed on the Chinese market.  Some certification procedures require inspections of production plants in right holders' home countries.  In some cases, the Chinese inspectors may come from competito r companies and they may ask technical questions which are no t strictly necessary for certification. Dr. Tabrez Ahmad, 38
  39. 39. Business advice  The European SME IPR HELPDESK provides detailed advice and strategies for businesses seeking to work in China or with Chinese partners how to minimize the risks of unwanted technology transfer and deal with the four major risks. Dr. Tabrez Ahmad, 39
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  41. 41. Australian Government Innovation Strategy POWERING IDEAS An Innovation Agenda for the 21st Century released on 21 May 2009 • Strategy from 2009 to 2020 - a 10 year reform agenda - From the office of Senator Kim Carr - Minister for Innovation, Industry, Science and Research Dr. Tabrez Ahmad, 41
  42. 42. Australian Innovation Performance  Declined between 1997 and 2007       (Howard Years … political motivation for assertion?) From 5th to 18th on World Economic Forum Global Competitiveness Index multifactor productivity grew on average1.4% annually between 1982 - 1996 But between 1997 - 2007 only 0.9% Commonwealth spending on science & innovation fell 22% as share of GDP to 0.58 % GDP in 2007 Business spending on R&D collapsed in 1990’s and despite recovery still lags competitors Firms introducing innovation static at 1 in 3 Dr. Tabrez Ahmad, 42
  43. 43. Competitors          China’s R & D spending grown 22% annually since 1996 Australia’s R & D spending grown by 8% annually Israel spends 4 % of GDP on R & D Finland, Japan, South Korea, Sweden spend 3% GDP Austria, Denmark, Germany, Iceland, Switzerland, Taiwan, USA spend 2.5% GDP Australia spends 2% GDP Russia and South Africa doubled R & D spending in 10 years Share of R & D in non OECD countries increased from 11.7 to 18.4% New entrants making rapid improvements, older players investing to maintain position Dr. Tabrez Ahmad, 43
  44. 44. Australian National Innovation Priorities  Public research funding to support high quality research       into areas of challenge. Develop strong base of skilled researchers. Fostering industries of the future to secure commercialisation. More effective dissemination of new technologies. Encouraging a culture of collaboration within research community and between researchers and industry. International collaboration. Public and community participation. Dr. Tabrez Ahmad, 44
  45. 45. Research capacity  International experience - 75% private sector patents draw on public sector research.  Universities and public research organisations like CSIRO crucial   Need to renew public funded research workforce, research infrastructure and method of sharing results Dr. Tabrez Ahmad, 45
  46. 46. Government Action on Public Research Capacity  Progressively increase number of research groups at world class level  Use “mission-based funding compacts” to promote collaboration  Universities encouraged by funding models to form research “hub and      spokes” Universities encouraged by funding models to pursue “industry driven” research Address gap in funding indirect research costs - new funding program Increase capacity to participate in domestic and international collaborations Increase capacity to participate in multidisciplinary research Invest in research infrastructure - various funding mechanisms listed in Strategic Roadmap for Australian Research Infrastructure: - $580 m for university research and infrastructure, - $901 m for projects identified in roadmap and Super Science Initiative - Education Investment Fund 2009 - 10 Dr. Tabrez Ahmad, 46
  47. 47. Government action on public research skills  Workforce strategy to address expected shortfalls in supply     of researchers Double number of Australian Post Graduate Awards (APAs) Increase dollar amount of APA (10% increase 2009 - 10) Increase students in higher education generally and mathematics and science particularly to enlarge pool of potential Higher Degree by Research students Create viable career paths for researchers  Early Career Researcher grants - Mid Career Research grants (Future Fellowships)  Senior researcher grants (Australian Laureate Fellowships) Dr. Tabrez Ahmad, 47
  48. 48. Business Innovation  Business drawn to innovation by competitive advantage and profit motive.  Australia had few large business with fund capacity - so challenge is medium and small business innovation funding. Dr. Tabrez Ahmad, 48
  49. 49. Government role Business Innovation  Aim to increase proportion of businesses engaging in innovation by 25% over 10 years.  Enterprise Connect  Clean Business Australia  Clean Energy Initiative  Increase businesses investing in R & D  R & D tax credit system  Support innovative responses to climate change  Clean Business Australia  Green Car Innovation Fund  Clean Energy Initiative  Global Carbon capture and Storage Institute  Climate Change Action Fund Dr. Tabrez Ahmad, 49
  50. 50. Government role Business Innovation  Improve innovation skills in workplace  Enterprise Connect  Education Revolution strategy  Support firms get ideas to market  Climate Ready  Green Car Innovation Fund  Commonwealth Commercialisation Institute  Work with Private sector to increase supply of venture capital  Government initiatives to respond too credit crisis “the stimulus”  Innovation Investment Follow-on Fund  Maintain dialogue with Industry about innovation  Enterprise Connect  Industry Innovation Councils  Pharmaceutical working group model Dr. Tabrez Ahmad, 50
  51. 51. Public Sector Innovation  Government must lead by example  Take advice from Australian Public Service Management      Advisory Committee Australian National Audit Office Use public procurement to drive research, innovation technology development  Commonwealth Government Procurement Guidelines 2008 Coordinate approach to information management  Australian Government Information Office Consider options for reform of Patent system and support intellectual property education for researchers and business Improve management and regulation of biotechnology and nanotechnology  A new national Enabling Technologies Strategy Dr. Tabrez Ahmad, 51
  52. 52. Collaboration • Australia ranks last in OECD on the level of collaboration between public researchers and private industry. To improve Government will: • Seek to double level of collaboration between Universities, public sector research institutions and business : Mission based funding compacts Enterprise Connect Researchers in Business Program Industry Innovation Councils Joint Research Engagement Scheme Royal Institution of Australia • Increase international collaboration Australian Research Council grants open to international applicants Specific multilateral projects eg Square Kilometre Array radio telescope project Dr. Tabrez Ahmad, 52
  53. 53. Collaboration  Renew Cooperative Research Centres (CRC)  Collaborating to a Purpose  new guidelines 2008 introduce “public good” as a funding criterion  encourage research in humanities, arts , social sciences,  Increase focus on needs of end users  Improve Enterprise Connect services to individual firms  Seek to develop regional clusters and networks linking researchers, educational institutions and business  Promote proven models for linking public funded and not for profit researchers with industry  Eg CSIRO’s national Research Flagship  CSIRO ICT Centre  Dr. Tabrez Ahmad, 53
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