Download trade-related aspects of intellectual property rights (trips)

Protection of Intellectual Property:
Technology Acquisition, Adaptation
and Diffusion
V.K.GUPTA
SCIENTIST
NISTADS
E-mail: [email protected]
Importance of Intellectual Property
• Intellectual property rights are frequently
mentioned in discussions and debates on such
diverse topics as public health, food security,
education, industrial policy, traditional
knowledge, biodiversity, biotechnology, the
internet and the cultural industries.
• By implication, understanding of IPRs has
become essential to informed policy decisions
in most areas of economic development.
Emerging Global Context of IPR
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Globalization
Economic reforms
Increasing competition
New Technologies
Commercialization of R&D
Strengthening Technological Base
Strengthening Technological Base
• Technology acquisition, adaptation and
diffusion
Presupposes
- Abilities to acquire and adapt technologies
- Absorption capacity: Existing knowledge
base and intensity of effort
• In-house R&D and technology development
• Abilities to Understand and Taking
advantage of IP
Technology acquisition
• Countries acquire technology in ways that
include
External Sources
- imports of capital goods and components
- foreign direct investment
- foreign technology licensing
- joint ventures
- strategic alliances
- mergers and acquisitions of firms
- design specifications
Technology acquisition
-
technical assistance from foreign buyers
foreign education and training
movement of technical personnel
informal channels: imitation, reverse
engineering, trade journals and shows etc.
• Internal Sources
- in house R&D & Publicly funded research
institutes
• R&D collaboration and technology
development
Taking advantage of IP: Key Focus
Understanding Salient Features:
I. What is Intellectual Property
II. Role of protection of intellectual
property in Technology acquisition,
adaptation and diffusion
III. Negotiating
intellectual
property:
technology license and know - how
Taking advantage of IP: Key Focus
IV. Protection of IP resulting from in-house
R&D
V. Managing IP during R&D collaborations
VI. Key Message
I.
What is Intellectual Property
Intellectual Property
• A ‘product of the mind’
• Similar to movable or immovable property like a
house or a car, wherein the owner may use his
property as he wishes and nobody else can
lawfully use his property without his permission
• The rights are the legal rights granted by the
government for a limited period in exchange of
the public disclosure of the inventions
• The grant of rights is intended to encourage the
creators and the authors in their creative
pursuits
World Intellectual Property Organization
(WIPO)
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•
•
•
•
defines intellectual property to include
rights relating to
literary, artistic and scientific works
performance
of
performing
artists,
phonograms, and broadcasts
inventions in all fields of human endeavour
scientific discoveries
industrial designs
WIPO definition (contd.)
• trademarks, service marks, and commercial
names and designations
• protection against unfair competition, and
• all other rights resulting from the intellectual
activity in the industrial, scientific and literary
or artistic fields
Select International Treaties on IPR
• Convention establishing the World Intellectual Property
Organization (WIPO) (14 July 1967)
• Agreement on Trade Related Aspects of Intellectual
Property Rights (1 January 1995, WTO)*
• Paris Convention for the Protection of Industrial
Property (20 March 1883; revised 1979; WIPO)*
• Patent Cooperation Treaty (1970; amended 1984)*
• The Patent Law Treaty (2000; WIPO)
• Trademark Law Treaty, 1994
TRADE-RELATED ASPECTS OF INTELLECTUAL
PROPERTY RIGHTS (TRIPS)
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Patents
Copyright And Related Rights
Trademarks
Industrial Designs
Geographical Indications
Layout - Designs Of Integrated Circuits
Undisclosed Information
Anti-competitive Practices In Contractual
Licences
II. Role of Protection of Intellectual
Property in Technology Acquisition
Protection of IP: Key Issues
Extreme Views: Developed Countries
• Strong IPR protection is an effective
instrument for facilitating FDI & transfer of
technology to developing countries
• In
industries
such
as
drugs
&
pharmaceuticals, firms may either refrain
from FDI if IPR protection is weak in the
host country or choose not to invest in
manufacturing and R&D activities
Protection of IP: Key Issues
 Extreme Views: Developing Countries
• IPR are constraint on the economic development
of developing countries; advocate for weak IPR
• Developing countries may be adversely affected
by the higher prices of importing IPR protected
goods
• No conclusive evidence: Foreign investment is
positively associated with IPR protection in
developing countries (UK Commission on IPR,
2002)
Protection of IP: Key Issues
The crucial issue is whether IPR protection
helps or hinders developing countries to
gain access to technologies that are required
for development
Korean experience:
• Effects of IPRs vary according to countries’
level of economic development
Protection of IP: Key Issues
Korean experience:
• Effects of IPRs vary according to the
technological nature of the economic
activities
• Benefits of strong IPRs can only be reaped
only after the countries reach a certain level
of threshold in their industrialization (Kim,
2003)
Protection of IP: TRIPS
• Establishes minimum standards for
protection of IP
• Tends to strike a balance between enforcing
intellectual property rights and meeting the
technological needs of developing countries
• Implications in the process of acquisition of
local
technological
capability
and
enhancing
absorptive
and
adaptive
capacities
Protection of IP: TRIPS
• TRIPS facilitates inward technology flows
to developing countries: views are polarized
• Advocates: Useful for carrying out the
transactions with certainty
• Critics: Slows down the transfer of
technology
Protection of IP: Likely Benefits to
technology acquisition
• Strong Patent Regime: Ensure greater contract
certainty between supplier and the receiver
• Enhance the flow of high technology goods and
the superior technologies
• Protection of Trade secrets: Enable acquisition of
confidential information, trade secrets, training
manuals, guidelines, and acquisition of technical
information
(Maskus, accessed 15.10.2006).
Protection of IP: Benefits to technology
acquisition
• Trademark and copyright enforcement:
- Raise average quality of products
- Provide a wider range of qualities for consumers
to choose (important in food products, beverages,
cosmetics and medicines where counterfeit goods
can be hazardous)
- Reduce counterfeit production and piracy in
creative industries like music, films, software
• Enable commercialization of technologies in local
market.
III. Negotiating IP: Technology and
Know – how license
Technology and Know – how license
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Due Diligence Exercise
Non-disclosure Agreement
Use of Patent Information
Licensing Agreement: IP Considerations
Licensing
Agreement:
General
Considerations
Due Diligence Exercise
Seek information with respect to
• ownership of technology
• whether technology is proprietary and have
all proper procedures been followed to
ensure its protection in the relevant markets
• are their any third parties claiming rights
over the intellectual property
• do intellectual property rights other than
patents or know-how need to be acquired to
fully implement the technology
Non-disclosure agreement
• Necessary to obtain confidential information to
assess the feasibility of the technology being
acquired. May include technical, engineering, or
other information in hard copy or electronic form
• Receiver to treat all such information confidential
and not to use it in any way other than for the
purposes stated in the agreement.
• Receiver does not have right on the information so
acquired
• To seek the permission of the discloser if the
information is to be shared with other related or
unrelated party.
Use of patent information
Patent information:
• Technical and bibliometric information
contained in patent documents
• Patents are the largest single body of most
recent technological information available
anywhere
• Access to information: Patent offices,
Internet, Private vendors
Technical information
• Title of the Invention
• Abstract containing a concise summary of
disclosure in the description
• Description of the Invention (Background
of the Invention; Prior Art; Detailed
Description of the Invention; Examples;
Drawings)
• One or more Claims
• Technical Field to which the Invention
belongs
Bibliographic information
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Title of the Patent
Patent Number; Date of Publication (Issue date)
Application No.
Date of Filing; Date of Priority
Classification Code (International Patent Classification;
National Patent Classification)
• Name of the inventor (s) / applicant (City and Country
Code)
• Abstract of the invention
• Assignee's name; Country of the assignee
Use of patent information
• Identify and evaluate technology for
acquisition
• Identify assignees and owners of patents
• Locating business partners for collaboration
• Identifying products for marketing
• Assessing technology related proposals for
financial support
• Avoiding possible infringement problems
• Monitor competitors' R&D activities and
marketing strategies
Use of patent information
• Keeping abreast of latest knowledge
• Identification of opportunities for R&D /
Defining a research project
• Oppose grant of patents, and move for
revocation of patents
• Technical information contained in patent
applications provides opportunities for
improvements in technology and its
diffusion across firms and users in
developing countries
Licensing Agreement: IP Considerations
• Identify the technology
• Obtain all the rights that are needed to utilize the
technology
• Receiver to ensure that the supplier has the rights
and the capability to transfer technology and the
know-how to the receiver
• Invention should not have been published or
publicly used by the technology supplier or by
anyone under its control
Licensing Agreement: IP Considerations
Technological advances/improvements:
• Safeguard the interests of the receiver due to
subsequent technological advances made or
acquired by one or both of the parties
• Receiver should have access to improvements on
technology including both patented and nonpatented developments
• If the improvements are made by the receiver, the
agreement should provide flexibility for its
appropriate protection and benefits to the receiver
Licensing Agreement: IP Considerations
Research and Development:
• Acquisition of technology may involve
cooperation in research and development
• Agreement should permit one or the other
parties to take out the patent and oblige that
party to grant a license to other party
• Another possibility is that both the parties
may take out a joint patent
Licensing Agreement: IP Considerations
• Nature of license: Exclusive, Sole or Nonexclusive
• Maintenance and prosecution of the patents
• Cost of Patent License
• Royalties
• Cross-licensing of patents
• Responsibilities in case of Infringement
Know-how agreement
• Disclosure of inventions to third parties
through legal channels
• Include the secret nature of know-how
specifying the items of information to be
deemed confidential
• Duration of confidentiality obligations not
to extend beyond the lifetime of the
agreement
• Recipient’s rights to continue after the
expiration of the agreement
IV. Protection of IP during in-house
R&D
Protection of IP during in-house R&D
• Strengthen awareness about IP at the bench
level scientists
• Establish system for identification of results
of research for protection
• Taking decision about patenting or other
appropriate means of protection
• Decide in which countries the protection is
to be sought
• Taking decision as to when to obtain patent
Protection of IP during in-house R&D
• Use patent information for identifying
opportunities
for
R&D,
technology
development and avoiding duplication
• Ensure protection of IP as well as
confidential information during and after
the employment by employees
• Establish a good system for keeping records
of research and experiments.
V. Managing IPR during R&D
Collaboration
Managing IPR during R&D Collaboration
• Sharing of pre-existing IPRs while entering
into collaborative R&D
• Principles of Sharing IPR during contract or
sponsored research, grant, or joint projects
• Basis of naming inventors : recognition and
sharing of benefits
Principle for sharing IPR
• Contract
The principal purpose of a contract is to acquire the
research inputs as a direct input in well - defined
programmes and missions of the agency giving the
contract
• Principle
Normally, for contract research both tangible and
intangible intellectual property are to be whollyowned by the giver of the money/ funds; but the
recipient of the money may have royalty -free licence
for his non - commercial use
Principle for sharing IPR
• Grant
One of the purposes of a Grant is to accomplish given
objective through stimulating or supporting the
acquisition of knowledge or understanding of the
subject
or
phenomena
under
study.
Principle
Both tangible and intangible property are to be wholly owned by recipient of money; but the donor of money
may have royalty -free license for his own use
Principle for sharing IPR
• Collaborative
R&D
projects
In a collaborative arrangement there is a substantial
involvement of both the collaborators in making
contribution to the technical aspects of the effort. The
project would not be possible without extensive
technical
collaboration
• Principle
In principle, the intellectual property is to be jointly
owned by the collaborating nodal S&T institution.
The resulting benefits are to be equally shared.
Alternatively, the benefits are shared in proportionate to
the
inputs
of
the
collaborating
parties
Basis of naming of inventors
Naming of inventors /co-inventors is
important
A. Firstly, to recognise and reward the true
inventors for their contributions, and
B. Secondly, to establish their right for a
share in the subsequent commercial
benefits that may result from the
exploitation of the invention
Basis of naming of inventors
Naming of inventors is normally decided on
the basis of following criteria:
All those persons who contribute towards
the development of patentable features of an
invention should be named as inventor (s) /
co-inventor (s)
All those persons who have made any
discernable personal contribution to the
final results of the research should be
named as inventor (s) / co-inventor (s)
Maintaining records of research
• Essential that all scientists doing research
and development work should keep a clear
and proper records of research of the daily
work done by them in respect of the
particular project.
• Records to be kept from the stage of first
getting an idea up to the end of the research
project
• Develop guidelines for keeping research
records
Key Message
Developing countries should master the
skills of protecting and taking advantage of
IP by strengthening their own absorptive
capacities
• to identify relevant technology for
acquisition
• negotiating favourable terms of acquisition
• to enable adaptation and diffusion of
technology, including capability to work
around existing IPRs and generate new
IPRs.