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IPR and Public-Private Technology Transfer
Professor Prabuddha Ganguli [PhD]
CEO“VISION-IPR”
103 B SENATE, Lokhandwala Township,
Akurli Road, Kandivli East, Mumbai 400101, India
Tel: 91-22-8873766
e-mail: [email protected]
Presentation made at the WIPO-CSIR Workshop on Licensing and Technology Transfer; New Delhi; India, July 4-8, 2005
Technological Innovation ….Societal Progress
Creative exploitation of knowledge in
Selection of seeds leading to the Green Revolution and enhancing agricultural productivity
Development of nutritive food supplements, vaccines, medicines, methods of treatment to improving community health
Inventing novel devices for diverse applications, including, facilitating learning processes and providing systems for communication
Deciphering secrets of life creating processes, integrating with communication technologies to give biotechnology
pganguli©2005
pganguli©2002
“Knowlitics™” …...…..A new international
phenomena
Emerging Socio-Political Dimensions of the Knowledge
Trade
IPR plays a decisive role
Transacting Owned Knowledge
“Knowletics” TM applied for in India by P. Ganguli pganguli©2003
Strategic Linking of Knowledge Incubators with Business
EnterprisesIntegrate IPR in the knowledge generation and transfer process
Where does one start????
pganguli©2004
TODAYYESTERYEARS
RESEARCH MODELS
TOMORROW…….
ISSUESRESEARCH PROCESS“APPROACHES”SOCIETAL IMPACTKNOWLEDGE OWNERSHIPBENEFITS SHARING
p.ganguli©2001
YESTERYEARS
RESEARCH MODELS
Typically ConceptualState Funded Institutions“Open-Ended” Knowledge GenerationEnrichment of “Public Domain knowledgeCredits: Enhanced Peer Recognition
Typically ApplicationsPrivate Funded InstitutionsTargeted End PointsOptimized use of “Public Domain Knowledge”Value Addition as measure of competitive edgeProfits,Market dominanceProprietary Issues
UPSTREAM RESEARCHDOWNSTREAM RESEARCH
TODAYTOMORROW.
p.ganguli©2001
TOMORROWYESTERYEARS
RESEARCH MODELS
TODAY
Partial Funding By Private Enterprises in Upstream ResearchIssues on knowledge FlowBenefits SharingPublications Research Schemes, Peer Group Recognition etc.Free use by Funding Agency??Diffused Ownership!!
MIDSTREAM
p.ganguli©2001
TODAYYESTERYEARS
RESEARCH MODELS
TOMORROW…….
Blurring of boundaries between Upstream & Downstream ResearchOverlap between disciplinesQuantification of OwnershipFormalized benefit Sharing by PartnersOverlapping Claims by different ownersChallenges to Ownership CriteriaAnti competition or Monopolistic Issues
IRP Multi-tier innovation processOptimized use of global knowledge base
Intra-Enterprise resourcesExtra-Enterprise inputs
Global/National licensing issuesIntricate exclusive/non-exclusive benefits SharingOrganizational frameworks for rapid diffusion of innovation to business
TURBULENCE RAPIDS
p.ganguli©2001
Sociology of Technology
• Organization of technology• Best Practices and Value Chain of the
Business is difficult to transfer• Cooperative governance in the innovation
process• Small Suppliers to Big Companies … very
effective systems.• National Technology Mission
pganguli©2005
Expertise Centres
SME
SME
Large Enterprises
Enterprise Networking
p.ganguli©2005
Demand for Patents World wide
9586045
7114126
5899089
4461369
3434628
23068401965487
1595950
1785760
2774582
593882
721657624495
640202
826572
751046702280
683874
685382
629611
0
1000000
2000000
3000000
4000000
5000000
6000000
7000000
8000000
9000000
10000000
1991 1992 1993 1994 1995 1996 1997 1998 1999 2000
First Filings
Total Filings
Ref: Intellectual Property Rights.. Unleashing the Knowledge Economy P. Ganguli ( Tata McGraw Hill, New Delhi 2001)
Annual Patent Globalization Index (PGI)
0
2
4
6
8
10
12G
lob
aliz
atio
n I
ndex
PGI 1.69 1.86 2.66 3.34 4.01 5.5 8.85 10.59
1991 1992 1994 1995 1996 1997 1999 2000
PGI = (Total Number of Patents Filed Worldwide) - (Number of First Filings Worldwide)(Number of First Filings Worldwide)
Ref: Intellectual Property Rights.. Unleashing the Knowledge Economy P. Ganguli ( Tata McGraw Hill, New Delhi 2001)
A decade of changes• Enabling national policies and incentive
schemes to encourage R&D, technology development and transfer
• Growth of financial institutions• Moving into the new IPR Paradigm• Maturing of the IPR infrastructure• Several national agencies including industry
associations providing IPR awareness and facilitation programmes
• International agencies getting involved in developmental activities at grass roots….. e,.g. UNIDO Projects, NGOs, WIPO and others.
pganguli©2005
Developments in India
Moving into strong IPR Regime in a phased manner during the last 35 years
while growing its infrastructure
and economy.
IPR is now a necessity to give its economy the required competitive edge
p.ganguli©2005
Indian National S&T Policy 2003 …salient features
• Vigorously foster scientific research in universities and other academic, scientific and engineering institutions; and attract the brightest young persons to careers in science and technology, by conveying a sense of excitement concerning the advancing frontiers, and by creating suitable employment opportunities for them.
• Also to build and maintain centres of excellence, which will raise the level of work in selected areas to the highest international standards
pganguli©2005
Indian National S&T Policy 2003 …salient features
• Provide necessary autonomy and freedom of functioning for all academic and R&D institutions so that an ambience for truly creative work is encouraged, while ensuring at the same time that the science and technology enterprise in the country is fully committed to its social responsibilities and commitments
pganguli©2005
Indian National S&T Policy 2003 .. Salient features
To substantially strengthen enabling mechanisms that relate to technology development, evaluation, absorption and upgradation from concept to utilization.
To establish an Intellectual Property Rights (IPR) regime which maximises the incentives for the generation and protection of intellectual property by all types of inventors. Provide a strong, supportive and comprehensive policy environment for speedy and effective domestic commercialisation of such inventions
All efforts are made to have high-speed access to information, both in quality and quantity, at affordable costs; and also create digitized, valid and usable content of Indian origin. pganguli©2005
Indian National S&T Policy 2003 … Salient Features
Support innovation in all its aspects through a comprehensive national system of innovation covering science and technology as also legal, financial and other related aspects
Set in mechanisms to achieve synergy between industry and scientific research by creation of Autonomous Technology Transfer Organizations
as associate organizations of universities and national laboratories to facilitate transfer of the know-how generated to industry
Encourage scientists and technologists to transfer the know-how generated by them to the industry and be a partner in receiving the financial returns
Encourage Industry to financially adopt or support educational and research institutions, fund courses of interest to them, create professional chairs etc. to help direct S&T endeavours towards tangible industrial goals
pganguli©2005
India Post TRIPS…. An Audit• 1st (1999) and 2nd Patents Amendment Act (2002)
with Patent Rules 2003; 3rd amendment bill introduced in December 2003 has lapsed; Patent Ordinance 2004 on December 26th 2004. The Bill for the 3rd Amendment was passed in Lok Sabha on 22/3/05 and in Rajya Sabha on 23/3/05
• The Trademarks Act 1999 and TM Rules 2002 (rules notified on September 15, 2003)
• Copyright Act 1957 with Copyright rules 1958 followed by International Copyright Order 1999.
• Designs Registration Act 2000 with Design rules 2001• Geographical Indications Act 1999 with GI rules 2002• Protection of Layouts for Integrated Circuits Act 2000• The Protection of Plant Varieties and Farmers Rights
Act 2001• Bio-diversity Act 2002
pganguli©2005
Approaches to Industry – Academic Technology
Collaboration
Only Memorandum of Understanding Singed (MOU) with no formal IP
Clauses / Policies
Essentially no awareness of the issues.
Instructions for Technology Transfer and IPR
Ministry of Science and Technology has issued the guidelines "Instructions for Technology Transfer and
Intellectual Property Rights", which would help in enhancing the motivation of scientists, research
institutions and universities in projects funded by the Department of Science and Technology, Department of Biotechnology, Department of Scientific and Industrial
Research and Department of Ocean Development.
pganguli©2005
Guidelines for Technology Transfer and IPR
Ownership of Intellectual Property:
Institutions shall be encouraged to seek protection of intellectual property rights in respect of the results of R&D. They may retain the ownership of such IPR. ‘Institutions’ would mean any technical, scientific or academic establishment where research is carried out through funding by the central/state government.
pganguli©2005
Guidelines for Technology Transfer and IPR
Transfer of Technology:
The institutions shall take the necessary steps to commercially exploit patents on exclusive or non-exclusive basis.
Royalty to Inventors: The owner institution is permitted to retain the benefits and earnings generated out of the IPR. The institution may determine the share of inventor(s) and other persons from such actual earnings. However, such share(s) shall be limited to one third of the actual earnings.
pganguli©2005
Guidelines for Technology Transfer and IPR
Norms for Private Industry:
IPR generated through joint research by institution(s) and industrial concern(s) through joint efforts can be owned jointly by them as may be mutually agreed to by them through a written agreement. The institution and industrial concern may transfer the technology to a third party for commercialisation on exclusive/non-exclusive basis. The third party, exclusively licensed to market the innovation in India, must manufacture the product in India. The joint owners may share the benefits and earnings arising out of commercial exploitation of the IPR. The institution may determine the share of the inventor(s) and other persons from such actual earnings. Such share(s) shall not exceed 1/3rd of the actual earnings. pganguli©2005
Guidelines for Technology Transfer and IPR
Patent Facilitating Fund:
The owner institution(s) shall set apart no less than 25% of the revenue generated from IPR, to create a Patent Facilitating Fund. The Fund shall be utilized by the owner for updating inventions, filing new patent applications and protecting the IP rights against infringement and for building competency in the area of IPR and related issues.
pganguli©2005
Guidelines for Technology Transfer and IPR
Information :
The institutions shall submit information relating to the details of the patent obtained, the benefits and earnings arising out of IPR and the turnover of the products periodically to the department/Ministry which had provided funds.
March In Rights:
The Government shall have a royalty-free license for the use of intellectual property for the purposes of the Government of India.
pganguli©2005
Several Government Sponsored Schemes
A few Examples
pganguli©2004
Promotion of technology transfer ……national schemes
• Stress on academic-industry-government teamwork for targeted deliver of business oriented results through innovative funding schemes such as New Millennium Indian Technology Leadership Initiative (NMITLI)http://www.csir.res.in/nmitli/nmitli.html; Drugs & Pharmaceutical Researchhttp://dst.gov.in/scprog/tecdev/drugspharmares.htm; Instrumentation Development Programme http://dst.gov.in/scprog/tecdev/instrdevprog.htm; Grants to Industry- PATSER Programme Aimed at Technological Self Reliance (PATSER) http://dsir.nic.in; Home- Grown Technology Programme (HGT) http://www.tifac.org.in/; Department of Information Technology http://www.mit.gov.in/R&D/projects/index.htm#about
pganguli©2004
Research and Development byIndustry (RDI) consisting of:In-house R&D in industryR&D by Scientific and IndustrialResearch Organisations (SIROs)Fiscal Incentives for ScientificResearch
Programme Aimed at TechnologicalSelf-Reliance (PATSER) consistingof:
Development of new or improvedtechnologies.Development of special/custombuilt capital goods.Absorption and adaptation ofimported technology.Studies and interactionsconcerning technology evaluationand pre-industry feasibility ofmajor sectors/products.Technopreneur PromotionProgramme.
Scheme to Enhance the Efficacy ofTransfer of Technology (SEETOT)consists of:National Register of ForeignCollaborations (NRFC)Transfer and Trading inTechnology (TATT)Promotion and Support toConsultancy Services (PSCS)including ConsultancyDevelopment Centre (CDC)
International CooperationChart 3
Promotion of technology transfer ……national schemes
• National IPR Facilitating Centers National Research Development Council (NRDC) Partnering innovators, entrepreneurs, institutions to protect their
innovations in India and abroad and also help to commercialise their IPR
Technology Information and Forecasting Cell (TIFAC) Facilitating patent searches, funding and facilitating filing of
patents, partnering in commercialisation of IPRNational Innovation Fund Working with grass-root innovators to protect their innovations
and also to facilitate technology transfer/ IPR commercialisation Technology Incubation Programme DST Funded incubation centers set up to facilitate
entrepreneurship development and IPR development and transfer
pganguli©2004
Mission Led Projects• Strategic Technologies to build competitive
capabilities…… 4 National Level Projects led by the Principal Scientific Advisor to GOI
TIFAC : Universities, Indian Institute of Technology ( set of them) and industries.
IPR will belong to Universities and IITs. First rights to refusal to industry. Govt. will have march-in rights. Just initiated. Liberal licensing and benefit sharing will be developed.
LESSONS
• Identification of relevant problem• Investments by private industry
in their R&D labs• Active link and utilising facilities
and expertise in Publicly Funded Institutions and Government Authorities
• Speedy science to development process/product technology for commercial venture.
Exploring global partners for the steps…… role of internationalorganisations?, governments?, transnational companies? pganguli©2003
The Present TrendCreation of Institutional IPR Policies
Active Involvement of Industry Associations
Introduction of courses on IPR in various institutions
IPR Awareness Workshops in Institutions, Judiciary, Enforcement Agencies, Courses on Licensing Strategies, Development of
IPR Manuals for the SME Sector, etc
WIPO Partnering in this process.pganguli©2005
…...Several Science and Technologies getting orphaned due to non availability of funds to
progress IPRs on global scale…….inadequate infrastructure, management skills, negotiation
acumen, inadequate venture capital culture
………...No clout to negotiate due to fragmented technologies
……..lack of patent information base
search skills, avoiding of “reinventing the wheel”
pganguli©2003
……Social cost of granting wrong patents
…….high cost of litigation…………when is traditional knowledge
legitimate prior art and under what circumstances
should it be considered as socio-piracy
pganguli©2003
Government
• Constitute integrated single window National IPR Commission
• National IPR literacy Mission … Thrust• Development of competition law as
balancing positive measures to control overuse of misuse of IPR.
• Exploit geographical indicators to national advantage.
pganguli©2005
•Re-structure the judiciary & enforcement machinery for professional and speedy response to IPR issues
•Introduce enabling National Taxation Policy to encourage IPR trade.
•Networks for protection of grass root innovation and innovators
Government
pganguli©2005
• Easy and cost effective access to IPR information.
• Set-up IPR training institutes to prepare technically qualified attorneys
• Urgently modernize the IPR Administrative Set-ups in the country
• Establishment of IPR facilitating centres in the country.
Government
pganguli©2005
Institutional IPR Policy Integrating IPR into institutional mission, strategy
& project management Effective Use of IPR information and international
alliances Identifying areas of possible infringements Licensing strategy Policing of institutional IP assets Litigation strategy IPR audit Effective utilisation of International Conventions.
pganguli©2001