IP Ownership, Benefit Sharing and Incentive for Researchers NATIONAL SEMINAR Intellectual Property Rights (IPRs) and its Role in Economic Development organized by the World Intellectual Property Organization (WIPO) in cooperation with the Industrial Property Office of the State Organization for Registration of Deeds and Properties of the Judiciary of the Islamic Republic of Iran Tehran, April 26 to 28, 2014 IP Ownership, Benefit Sharing and Incentive for Researchers Arvind Viswanathan Xellect IP Solutions LLP, India www.xellectip.com

Ownership of IP Generated IP generated from a “Work-For-Hire” situation belongs to the employer Any IP arising from routine course of work also belongs to the employer Any IP from work done outside of work, NOT utilizing resources of employer will belong to creator KNOW YOUR CONTRACT SITUATION TO UNDERSTAND OWNERSHIP OF IP GENERATED BY YOU 2

Other Possible Governing Laws Besides laws governing employment relationships, laws related to: Agricultural Trade Health Industry Science and Technology Educational Institutions Including any laws related to University 3

Bayh-Dole Act in U.S.A. Allows for private monopolization (patenting) of inventions that arises out of public funds/ grants Came into effect in 1980 After much debate over concerns arose that government-owned patents were not being put to good use “Possibly the most inspired piece of legislation to be enacted in America over the past half century.”* *: The Economist, 2002 4

Provisions in the Act for Universities May elect to take title to inventions developed through federal funding File patents on inventions they elect Have written agreements with faculty and staff requiring disclosure and assignment of inventions Share a portion of revenue with inventors May include faculty members, students, researchers, visiting scientists Excess revenue must support research and education 5

Effect of Bayh-Dole Act Contributed to an explosion of university patenting In 1980, 495 patents issued to universities but in 2005, 3,278 patents issued to universities Rise of technology transfer infrastructure in that same time frame 25 technology transfer offices (TTOs) as opposed to 3,300 TTOs 6

Motivation to Invent by Corporations Inventions/ Innovations used to establish or increase market share By introducing product differentiators Innovators generally provided flat sum of money as benefit May also be milestone based E.g. Filing of patents, grant of patents etc. Motivation largely through accolades Certificates, plaques, commemorative actions etc. Inventors extensively use such accolades in marketing themselves E.g. Include it in Curriculum Vitae Makes them highly “employable” 7

Motivation for University Researchers Researcher is a named inventor Will be seen as an expert in the technical area Attracts funding through collaboration and other research projects Students become highly “employable” Institutes become a favourable destination for research projects Can become a hub for entrepreneur Thus, will attract the best talent as students 8

IP Policy in Universities Most institutional IP policies include “share of benefit” accruing from commercialization of IP The university or R&D institution may use the benefit to finance: research infrastructure research projects IP protection IP maintenance The Technology Transfer Office will typically be at least partly funded by the money coming from such commercialization activities 9

Stakeholders of benefit sharing Universities and R&D institutions Inventor(s) Inventor’s research group and/or department and/or college/school Students, research assistants and visiting researchers Governments and public funding agencies Collaborators and sponsors Technology transfer units 10

Country University Faculty Australia X Austria Belgium Canada Denmark Finland France Germany Iceland India Ireland Italy Japan Mexico Netherlands Norway Poland South Korea Sweden United Kingdom United States 11

Proportion of Distribution The distribution proportions differ by institution, and can be very varied depending on the viewpoint of the management and other stakeholders Stakeholder Percentage of Share Inventor 25 - 85% Faculty 25 - 30% University 25 - 50% 12

Stanford University’s Example Net income = gross income -15% (for the administrative costs of the Stanford Office of Technology Licensing (OTL) + any unreimbursed expenses (e.g. patenting expenses) Net income is shared by: 1/3 to the inventor(s); 1/3 to the inventor(s) department (e.g., department of Electrical Engineering); 1/3 to the inventor(s) school (e.g., School of Engineering). Source: http://otl.stanford.edu/inventors/resources.html 13

Institution Inventors Department TTO National University of Singapore 50 20 30 - Nanyang Technological University, Singapore California Institute of Technology, USA 25 75 Moi University, Kenya 40 10 Tohoku University, Japan City University of New York, USA Oklahoma State University, USA McMaster University, Canada University of Muenster, Germany 70 University of Stellenbosch, SA University of Tokyo, Japan 33.3 University of Victoria, Australia 80 Negotiable University of Witwatersrand, SA MIT, USA ICIPE, Kenya ILRI, Kenya 100 University College Cork, Ireland = or <50 35 >15 Unicamp, Brazil 14

A Penny Shared is Worth More Than a Penny Saved Share the Wealth A Penny Shared is Worth More Than a Penny Saved