Journal of Intellectual Property Rights

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 Special Issue on Technology Transfer with IPR


VOLUME 10

            NUMBER 5

  SEPTEMBER 2005

CODEN: JIPRFG 10(5) 349-456 (2005)

                          ISSN: 0971-5544

 

CONTENTS

 

IPR and India—A Viewpoint

359

Gopalkrishna Gandhi

 

 

Role of Collaborations, Systems, and the Soul in IP and Innovation

361

David W Swenson

 

 

 

Capacity Building in Management of Intellectual Property Rights - A Case of Publicly Funded Institutions

369

R Saha

 

 

 

Intellectual Property Management and Value-Added Strategy

      of the Industrial Technology Research Institute

376

Benjamin Wang

 

 

 

Encouraging Protection of Public Research Results in Spain

382

Domingo Represa-Sánchez, Elena Castro-Martínez and

Ignacio Fernández-de-Lucio

 

 

 

Making Industry-University Interactions Work - Model

      Agreements in Germany

389

Heinz Goddar

 

 

 

Transfer of Technology with Intellectual Property Rights (IPR)—The Philippine Experience

394

Lydia G Tansinsin

 

 

 

Technology Transfer: What India can learn from the United States

399

Kelly G Hyndman, Steven M Gruskin and Chid S Iyer

 

 

Valorization of Intellectual Property from the Publicly Funded Organizations: A Case Study of CSIR, India

406

R K Gupta

 

 

Technology Transfer from a Technical University: A Case

       Study of IIT Delhi

413

Partha Bhattacharya

 

 

 

Medical Device Development – A Novel Experience in Patenting

       and Technology Transfer

417

G S Bhuvaneshwar and D Ranjit

 

 

 

Technology Licensing: A Win-Win Solution in the

      Intellectual Economy

421

Ruud Peters

 

 

 

The Nanotechnology Patent “Gold Rush”

426

Raj Bawa, S R Bawa and Stephen B Maebius

 

 

 

Value Addition to Agricultural Resources – The IPR Angle

434

P Ramesh Kumar and V Prakash

 

 

 

Value Addition and Commercialization of Biodiversity and

      Associated Traditional Knowledge in the context of the

      Intellectual Property Regime

441

P Pushpangadan and K Narayanan Nair

 

 

 

 

 

 

 

AUTHOR INDEX

 Bawa Raj

426

 Bawa S R 

426

 Bhattacharya Partha

413

 Bhuvaneshwar G S 

417

 Domingo Represa-Sánchez

382

 Elena Castro-Martínez

382

 Goddar Heinz

389

 Gruskin Steven M 

399

 Gupta R K

406

 Hyndman Kelly G

399

 Ignacio Fernández-de-Lucio

382

 Iyer Chid S

399

 Maebius Stephen B

426

 Narayanan Nair K

441

 Peters Ruud

421

 Prakash V

434

 Pushpangadan P

441

 Ramesh Kumar P 

434

 Ranjit D

417

 Saha R

369

 Swenson David W   

361

 Tansinsin Lydia G 

394

 Wang Benjamin 

376

 

 

 


SUBJECT INDEX

 Access and benefit- sharing                

441

 Agri-resources                                  

434

 Bayh-Dole Act                                 

399

 Berlin contract                                  

389

 Biodiversity                                      

441

 Bioprospecting                                  

441

 Capacity building                               

369

 CBD                                                

441

  Employees’ inventions                      

389

 Food processing                               

434

 Food safety                                      

434

German law                                     

389

 Global market system                        

361

 Gold-rush mentality                           

426

 IIT                                                   

413

 Innovation economy                           

361

 Innovation                                         

434

 Intellectual economy                          

421

Intellectual property management       

376
 Intellectual property   413

 Intellectual property                           

434 

 IP code                                             

394

 IP ownership

399

 IPR management                               

382
 IPR 394
 IPR 434

 IPR                                                  

441

 Licensing policies                              

417

 Management of Intellectual  property rights                                   

369
 Munich contract                                                  389

 Nanotechnology                                 

426

 Open innovation                                

421

 Patent licensing                                 

421

 Patent thicket                                    

426

 Public research                                  

382

 Publicly funded institutions                 

369

 Publicly funded organizations              

406

 Public-private partnerships                  

406

 Science and Technology Policy 2003   

369

Technology business incubation          

413

 Technology development                    

417

 Technology licensing agreements         

394
 Technology licensing 413

 Technology licensing                          

421

 Technology Transfer Centre (TTC)    

376

 Technology transfer offices                

382
 Technology transfer 394
 Technology transfer 399
 Technology transfer 413
 Technology transfer 417

 Technology transfer                           

441

 Techno-prove facility                         

417

 Traditional foods                               

434

 Traditional knowledge                        

441

 TRIPS                                              

441

 Valorization of IP                              

406
 Value addition  434

 Value addition                                   

441

 Value-added strategy                          

376

 

 

 

 



Journal of Intellectual Property Rights

Vol 10, September 2005, pp 359-360

 

IPR and India –A Viewpoint

Gopalkrishna Gandhi

Address of Shri Gopalkrishna Gandhi, Governor of West Bengal, at the inauguration of the national symposium on intellectual property rights, organized by the Netaji Subhas Open University, Kolkata, on 12 August 2005

 

 

 

Journal of Intellectual Property Rights

Vol 10, September 2005, pp 361-368

 

Role of Collaborations, Systems, and the Soul in IP and Innovation

David W Swenson

Received 19 July 2005

In today’s global market system, innovation is the driver for economic development and wealth creation. The new competitive reality no longer has cost and quality as its core decision factors or drivers. Developing a competitive advantage now requires a business culture of rapid innovation, collaborative strategies, a systematic methodology, and a culture of concurrent change. This is the reality in today’s innovation economy. Commercialization of disruptive innovations is based on integrating unique intellectual property, technical capability, and market needs. Collaborative partnerships between multiple companies incorporating technology, market/distribution, and financial investors are essential to optimize innovation and successful commercialization of technology. Higher value disruptive innovations meet new market needs while pushing a company to new technology and/or capability requirements. Competitive success for innovative technology increasingly depends on speed to market and speed to profits.

Innovative companies must empower technology managers to adopt a business-building approach that connects technology creation to the target market. This in itself is an innovative business model and will require transition in management skills. For an entity to do this, the elements that form the soul of innovation are essential. The soul of innovation, is comprised of: (i) an emotion or passion – as a part of the company culture to innovate, (ii) the mind to innovate – for any innovation to have an opportunity to be commercializabel and profitable requires sources of intellectual property and a defined system to capture the innovation, and (iii) the will to innovate, i.e. drive it to the market. The paper further discusses the role of collaboration in innovation and IP creation.

Keywords: Global market system, innovation economy

 

 

Journal of Intellectual Property Rights

Vol 10, September 2005, pp 369-375

 

Capacity Building in Management of Intellectual Property Rights- A Case of Publicly Funded Institutions

R Saha

Received 20 July 2005

The paper primarily focuses on the role of government in capacity building in India. Publicly funded institutions in India are driven by social obligations rather than economic considerations. Though this approach has created a pool of highly educated people at the same time being an insulated system, it breeds complacency leading to very little development in the IP scenario. However, post WTO, several useful changes have taken place and the Indian system has risen to the challenge of TRIPS compliance by enacting new legislations. With the far-reaching effects of IPR, capacity building is a primary activity and the role of the government in capacity building in management of IPR is fundamental and of utmost importance. No exercise at the national level can succeed if all or most players are not engaged in the activity. The Patent Facilitating Cell at Technology Forecasting and Assessment Council (TIFAC) set up by the Department of Science and Technology, India, addresses this very need of awareness creation among scientists and also provides full technical, legal and financial support for inventors from educational institutions and government departments.

Keywords: Capacity building, publicly funded institutions, Science and Technology Policy 2003, management of intellectual property rights

 

 

 

Journal of Intellectual Property Rights

Vol 10, September 2005, pp 376-381

 

Intellectual Property Management and Value-Added Strategy of
the Industrial Technology Research Institute

Benjamin Wang

Received 21 July 2005

This paper analyses the strategies, which public research organizations apply to add value to their intellectual property. Industrial Technology Research Institute (ITRI), Taiwan, is used as an example and reference is made to the American system. The strategy and approach in response to the Basic Law of Science and Technology (in Taiwan) is discussed with reference to the Technology Transfer Centre (TTC), the factors that impact technology transfer pricing, the process for technology transfer, the factors to consider in technology transfer, industrial co-operative model and patent orientated technology transfer. Thereafter, the strategy and approach with regards to technology derivative value-added business is discussed. After analysing the strategy, some real case studies are discussed (Bio-chip, partial transfer of patent rights and the auctioning of patents). Lastly, some recommendations are made regarding the creation of IP-centric technology transfer mechanisms.

Keywords: Value-added strategy, intellectual property management, Technology Transfer Centre     (TTC)

 

Journal of Intellectual Property Rights

Vol 10, September 2005, pp 382-388

 

Encouraging Protection of Public Research Results in Spain

Domingo Represa-Sánchez, Elena Castro-Martínez and Ignacio Fernández-de-Lucio

Received 26 July 2005

Although one of the goals of research at universities and public research bodies is to contribute to the advancement of knowledge, these bodies are also expected to contribute to the innovations being developed in their own respective national or regional systems. The only way to satisfy both the industrial application of scientific results and their necessary dissemination throughout the scientific community at the same time is to previously protect the research activity under the various systems of industrial and intellectual property rights. Unfortunately, this precautionary step is quite uncommon amongst research groups in many countries, and specific action is therefore required of their umbrella institutions in order to ensure that such protection is implemented in an effective way.

This article describes results of the experience since 1986 to promote the industrial protection of research at Spanish universities. To achieve this goal, a range of science policy initiatives were undertaken: training in processing patents for technicians involved in universities interface structures, cooperation with the Spanish Patents Office and other related bodies, encouragement for research groups to ensure the industrial protection of their results and support for researchers and public bodies in the patent registration procedure.

Keywords: IPR management, public research, technology transfer offices

 

Journal of Intellectual Property Rights

Vol 10, September 2005, pp 389-393

 

Making Industry-University Interactions Work - Model Agreements in Germany

Heinz Goddar

Received 12 July 2005

Recent changes in the German Law concerning employees’ inventions have prompted a search for new working models that will pave way for enhanced university-industry interactions. The paper discusses the two most popular agreements, namely, the Berlin Contract and the Munich Contract, used to ensure effective arrangements between the researcher, university and industry.

Keywords: German law, employees’ inventions, Berlin contract, Munich contract

 

 

Journal of Intellectual Property Rights

Vol 10, September 2005, pp 394-398

Transfer of Technology with Intellectual Property Rights (IPR)—
The Philippine Experience

Lydia G Tansinsin

Received 13 July 2005

The article deals with the Philippine experience in technology transfer or Technology Licensing Agreements (LTA) earlier practised and the present system of implementation. This also includes commercial application of transfer of technology, and the commercialisation of results of research with intellectual property rights.

Keywords:Technology transfer, technology licensing agreements, ip code, ipr

 

Journal of Intellectual Property Rights

Vol 10, September 2005, pp 399-405

 

Technology Transfer: What India can learn from the United States

Kelly G Hyndman, Steven M Gruskin and Chid S Iyer

Received 4 August 2005

Indian universities and government-funded research organizations produce world-class research that is mostly published in scientific journals. While the society gains from the increased knowledge, the university or the government receives very little direct benefit. Developed countries like the United States have been encouraging similar institutions to secure their intellectual property rights in the new technology arising out of the research in addition to merely publishing in scientific journals. The United States has a long history of supporting technical research and has gradually evolved to this model. India should learn from the experience of the United States in this regard. Premier institutions of learning and research in the United Sates provide effective models that use patents and their licensing as tools for technology transfer This paper discusses a brief history of tech transfer in the United States, followed by a discussion of the Bayh-Dole Act, which served as a catalyst for the successful tech transfer regime in effect today. Various aspects of IP ownership are discussed, followed by a relevant case study.

Keywords: Technology transfer, Bayh-Dole Act, IP ownership

 

 

Journal of Intellectual Property Rights

Vol 10 September 2005, pp 406-412

 

Valorization of Intellectual Property from Publicly Funded Organizations: A Case Study of the Council of Scientific & Industrial Research (CSIR), India

R K Gupta

Received 22 August 2005

Intellectual property, its creation, protection and valorization have assumed an unprecedented influence on the social, economic and technological progress of developing economies. TRIPS compliance by developing countries with effect from 1 January 2005 by putting product regime in place, in the area of drugs, pharmaceuticals, chemicals and microbiological inventions, provides a further challenge to them to implement IP laws at par with internationally acceptable standards. International protection of IP, particularly, patents, involves substantial cost. Also, IP protection cost, particularly, relating to patents, has risen sharply in the developing countries during the recent years. Therefore, major challenge before the publicly funded R&D organizations is how to generate substantial resources and sustain such resources for the protection of IP through its valorization nationally and internationally. In this context, this paper examines how CSIR, India, has played a key role in being a dominant player in filing and securing patents in India and abroad and its systematic efforts for the valorization of its IP portfolio aiming at deriving social as well as private returns by forming partnerships. In order to reduce the high cost of R&D and IP protection, the developing countries should increasingly participate in the worldwide effort directed at cutting down on time to develop and bring radical innovations to the market by forming public-private partnerships and consortia so that innovative efforts from publicly funded R&D reach the market in the shortest possible time. To make this happen, there is a strong need to promote partnerships cutting across R&D organizations nationally and internationally; to follow internationally acceptable best practices in IP management and to compete for public-private partnerships internationally, also.

Keywords: Valorization of IP, public-private partnerships, publicly funded organizations

 

Journal of Intellectual Property Rights

Vol 10, September 2005, pp 413-416

 

Technology Transfer from a Technical University: A Case Study of IIT Delhi

Partha Bhattacharya

Received 7 June 2005

The paper touches upon the global perspective of technology transfer process from technical universities and academic institutions. The role of FITT (Foundation for Innovation and Technology Transfer), the technology transfer office of IIT, Delhi, is described. The different components of technology transfer process, some successful case studies from the institute are described. With globalisation of Indian economy, it is time that entrepreneurs and the industry at large in India should develop effective interactive relationship with the academia with a view to enhancing technological capability for competitive advantage.

Keywords: Technology transfer, intellectual property, technology business incubation, technology licensing, IIT

 

 

 

Journal of Intellectual Property Rights

Vol 10, September 2005, pp 417-420

 

Medical Device Development – A Novel Experience in Patenting
and Technology Transfer

G S Bhuvaneshwar and D Ranjit

Received 27 June 2005

The Biomedical Technology Wing of Sree Chitra Tirunal Institute for Medical Sciences and Technology (SCTIMST) was set up to develop appropriate technologies to meet the health care needs of India with a variety of facilities for research and development in biomaterials and medical devices. The institute has developed and transferred 12 technologies for commercial production and six others are in advanced stages of transfer. Apart from the direct savings in foreign exchange, the lower price of these competitive indigenous products has in every instance, helped to keep down the price of the imported counterparts. Novel methods of technology transfer have been developed to ensure successful commercialization in the country, where a medical devices industry hardly existed. The strategies using novel approaches and their development and changes with time are described in the paper.

Keywords: Technology development, technology transfer, licensing policies, techno-prove facility

 

Journal of Intellectual Property Rights

Vol 10, September 2005, pp 421-425

 

Technology Licensing: A Win-Win Solution in the Intellectual Economy

Ruud Peters

Received 30 June 2005

In a patent licensing transaction, the licensee receives the legal right to use the technology as described in the patent, generally in exchange for a financial consideration. Most of the know-how related to the patented technology, however, stays with the licensor. But in technology licensing, the transaction between licensor and licensee is of a much wider scope. In such a transaction, the licensor commits to transferring much more than the bare legal right to use the patented technology. In this paper, the author discusses about the difference in the patent licensing and technology licensing. The market for intellectual property has grown so fast that it is time to speak of a real intellectual economy. Now technology licensing is the fastest and the most cost-efficient way to market-introduction of a new product. Thus technology licensing is the need of the hour as it creates win-win forms of cooperation.

Keywords: Technology licensing, patent licensing, open innovation, the intellectual economy

 

 

 

Journal of Intellectual Property Rights

Vol 10, September 2005, pp 426-433

 

The Nanotechnology Patent ‘Gold Rush’

Raj Bawa, S R Bawa and Stephen B Maebius

Received 9 July 2005

During the past decade, a swarm of patent applications pertaining to nanotechnology has been arriving at all the major patent offices of the world, including the US Patent and Trademark Office (USPTO). As companies develop products and processes and begin to seek commercial applications for their inventions, securing valid and defensible patent protection will be vital to their long-term survival. In the decades to come, with nanotechnology further maturing and the promised breakthroughs accruing, patents will generate licensing revenue, provide leverage in deals and mergers, and reduce the likelihood of infringement. Because development of nanotech-related products is extremely research intensive, without the market exclusivity offered by a US patent, development of these products and their commercial viability in the marketplace will be significantly hampered. In this paper, effects of ‘nanopatent gold rush’ that is underway by ‘patent prospectors’ as startups are highlighted whereby corporations compete to lock up broad patents in these critical early days. In fact, the entire US patent system is under greater scrutiny and strain, with the USPTO continuing to struggle with evaluating nanotech-related patent applications.  It is unclear whether the nanotech industry will thrive like the information technology (IT) industry or get bogged down like the radio patent deadlock.

       Keywords: Nanotechnology, gold-rush mentality, patent thicket

 

 

Journal of Intellectual Property Rights

Vol 10, September 2005, pp 434-440

 

Value Addition to Agricultural Resources – The IPR Angle

P Ramesh Kumar and V Prakash

Received 10 August 2005

The present status of food processing industry in India is delineated to pinpoint the importance of mitigation of food losses, extent of value addition, byproduct utilization and trade of processed food products. The opportunities in food processing in India have been identified and power of India in traditional foods has been specified with a view to capturing national and global markets. For successful exploitation of the opportunities in food processing industries, it is essential to act in terms of intellectual property protection and a huge awareness that need to be brought about amongst the academia, industry and research organizations. This will have an exponential growth in the human resource development, establishment of food processing parks/corridors, development of entrepreneurship, strengthening of internal chain, quality of the processed products, timely delivery of the products, sustainable technology and convergence of technologies as well as emergence of products/processes by interfacing and networking globally and perhaps niche itself for Indians potential in the world market.

Keywords:IPR, agri-resources, value addition, innovation, food processing, food safety, traditional foods, intellectual property

 

 

 

 

Journal of Intellectual Property Rights

Vol 10, September 2005, pp 441-453

 

Value Addition and Commercialization of Biodiversity and Associated Traditional Knowledge in the context of the Intellectual Property Regime

P Pushpangadan and K Narayanan Nair

Received 1 August 2005

Genetic resources and associated traditional knowledge (TK) have great potentials, and their contributions to global economy and global intellectual property regimes are enormous. They are the key resources for sustainable bioprospecting and value addition processes. The existing intellectual property (IP) laws do not entail IP rights to TK holders either at national or international level. The absence of coherent and legally binding instruments to accord protection to intellectual as well as customary rights of the TK holders is a major impediment to value addition and technology transfers involving the use of genetic resources and associated TK. This paper provides an overview of the issues involved in value addition to bioresources and protection of IPR of TK holders, takes stock of the international and national legal and policy initiatives, and suggests a few measures to promote value addition, technology transfers, and IPR protection for TK holders.

Keywords: Access and benefit- sharing, biodiversity, bioprospecting, CBD, IPR, technology transfer, traditional knowledge, TRIPS, value addition