Anatomy of an Intellectual Property Policy

Alan B. Bennett, Ph.D.

Executive Director, Public Intellectual Property Resource for Agriculture
An IP Policy provides the framework to
strategically manage IP

Integrates institutional mission with

national laws and international treaties

Provides clarity for researchers and private

companies
National legal frameworks
Bayh-
Bayh -Dole Act

Universities may elect title to inventions developed through
UC PatentFederalPolicy
funding

UniversitiesInvention
 Mandatory must file patents on inventions they elect
Disclosure

University
 Inventor must haveof
Assignment written agreements
Title to UC with faculty and
staff requiring disclosure and assignment of inventions
 Distribution of Net Income*

University must share a portion of revenue with inventors
- Inventor Receives 35%

Excess revenue must support research and education
- Campus Research Fund Receives 15%

Government retains non-exclusive license to the invention
- Remainingretains

Government 50% tomarch-in
Generalrights
Pool at Inventor’s
Campus/Lab

Requirement for substantial US manufacture
Establishing an IP (intellectual property) policy is necessary for several important reasons.
IP rights, including patents, copyrights, trademarks, and industrial property rights attach
to research, administrative, and scholarly (including course- ware) work products.
Therefore, any public sector institution entering into research contracts with private
sector entities will encounter IP issues.

Remember that it is too late to begin formulating IP policy when negotiations about IP
have already begun. As Lita Nelsen, Director of the Massachusetts Institute of Technology
(M.I.T.) Licensing Office, observes, “Although policies will change over time as the program
evolves, the major issues must be decided in advance. Otherwise, a new program is likely
to stall or fail altogether in an entangled committee indecision and policy ambiguity.”
Matching the mission to IP policy
What are the institutional objectives?
To disseminate knowledge by publication only
To be a technology transfer “engine”
To support regional economic development
Or some mix of all of the above
 Example - CIMMYT

Mission: CIMMYT applies science and partnerships to

improve the productivity and profitability of farming
systems and sustain natural resources in developing countries

CIMMYT IP POLICY
In seeking intellectual property rights, CIMMYT will be guided by its commitment to serve
the resource poor, rather than by opportunities to obtain recurring revenues. To the
extent that financial returns are generated via intellectual property, they will be used
by CIMMYT to support its efforts to implement the FAO Global Plan for the Conservation
and Sustainable Utilization of Agriculture, adopted by 150 countries in 1996.
Main components of an IP policy

1. Ownership

2. Obligations of researchers/employees

3. Obligations of the institutions

4. Administering the IP policy

Main components of an IP policy

1.Ownership
• inventor/author owns

• university owns

• company providing research funds owns

• government providing research funds owns

• public domain, that is, no one owns

Main components of an IP policy

2. Obligations of researchers/employees
• obligation to disclose before publication

• assignment ownership to employer/institution

• obligation to assist in evaluation and patenting

• obligation to report conflict of interest

Main components of an IP policy

3. Obligations of the institution

• obligation to manage IP effectively

• obligation to pay patenting costs

• obligation to share revenue (or not)

• obligation to:
support maximum public benefit
maximize revenue
ensure broad access for research
Main components of an IP policy

3. Obligations of the institution

• obligation to manage IP effectively

• obligation to pay patenting costs

• obligation to share revenue (or not)

• obligation to:
support maximum public benefit
maximize revenue
ensure broad access for research
Main components of an IP policy

4. Administering the IP policy

• who is responsible
VP research
Provost
Dean etc…..
Developing and “deploying” an IP policy

In most institutions the IP policy should be developed

in consultation with researchers, faculty senate or
other bodies to be accepted

What are the steps

• Articulating the institutional mission (leadership)
• Making the policy comprehensible to the reader
• Providing incentives for participants
• Establishing IP management as a service
• Applying the policy with consistency
• Showcasing the benefits