Management of IPR portfolio & ToT

Management of IPR portfolio (bundle of IPRs possessed by an individual or institute) and transfer of protected technologies In agriculture we are familiar with release of varieties or other technologies to the farmers, which is in fact technology transfer

Licensable / assignable IPR Copyright Trademark Design Patent Plant variety right Integrated circuit design Trade secret

Which IPR is not licensable or assignable? Geographical indication. GI protected goods can be, however, transferred by trade agreement between parties without compromising the product quality and GI tag. Also, biological resources and traditional knowledge are not transferrable by assignment or licensing. Biological resources are transferrable through Material Transfer Agreement (MTA).

Management of IP requires: Capacity building – in IPR management, information and documentation, patent search and analysis, patent drafting, licensing, valuation of IP, negotiating licensing deals. IPR awareness. IPR policy – of the concerned country, state, organization, university or company etc.

The owner of technology has three options for transfer of technology (e.g. a variety). The three options are: Do not go for registration and freely transfer the variety (technology) to the users. Protect (register) the technology, and give it free to the users with or without condition. Protect the technology first and then give on license for commercialization.

Transmission by operation of law Four ways of transfer can be applied: Assignment License Transmission by operation of law By placing in public domain (for free use, as varieties are released now by SAU) If there is joint ownership of the IPR, it is to be transferred by consent of all the owners.

License and assignment Both are made through legal (registered) agreements Assignment means transfer of ownership rights over the property to the assignee by an agreement to that effect License is a legal agreement between IP owner (licensor) and the buyer (licensee) whereby the licensor grants permission for using his/her IP or technology in mutually agreed terms defining the purpose, territory and the period of time.

Licensing is the most effective for creating value and transfer of technology. Domestic license: Here the territory is defined is a state (e.g. Meghalaya) or a locality (e.g. Dhankheti). Specific license: This license is confined to a country (country specific license). Worldwide license: It is global license without territorial limits. Sublicense: In this, licensee is allowed to sublicense the IP protected licensed technology or product.

Hybrid license: It is a license where there are two or more types of IPR are involved, owned by different parties. E.g. multimedia production – IP owners: lyricist, music composer, photographer, sound designer, choreographer etc. Cross license: A cross-licensing agreement is an agreement according to which two or more parties grant a license to each other for the exploitation of product involving patents owned by each. The term "cross licensing" implies that neither party pays royalty to the other party, however, this may be the case.

Package license: Here the package is specified which has to be adhered while dealing in the product. e.g. Lux soap is licensed for distribution, then the package, the types of paper, the weight, length, breadth, shape, etc. are also specified. Label license: Here label is specified. e.g. if a factory is licensed to make the label of Lux soap, the details of the label are specified in the license.

Implied license: The license terms are implied, determined by various situations and circumstances surrounding the matter. e.g. an article given to the newspaper for publication. Compulsory license: It is a license granted by the government in certain emergent situations to some parties without permission of the IP owner. CL provisions are provided in the Patent Act 1970 and the PPV&FR Act 2001.  

Franchise: It is also a license but with too many details about the rights and responsibilities of the licensor and the licensee. Good knowledge of licensing is necessary for writing franchise agreement. Mortgage: Mortgage is a kind of assignment. Proprietor of an IPR can offer his property on mortgage to a person for a sum of money. The mortgagee will enjoy all rights including ownership right till the mortgage is in effect. On expiry of the mortgage period, the mortgagor will return the money to the mortgagee and get back the property.

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