1. 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

2. 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

3. 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

4. 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

5. 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

6. 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

7. 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

8. 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

9. 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

10. 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

11. 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

12. 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 %
Faculty %
University % 12

13. 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: 13

14. 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

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