global trends intech transfer

8/7/2019 Global trends in Tech Transfer

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Prof. Anil B. Suraj

April 2011


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Session Objectives

To understand the intangibility of IPRs

To appreciate the value of protected IPin gaining competitive advantage

To gain an overview of the legal bases

for an effective process of technology

transfer


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IPRs General Bases

Economic (and technological) rationale

aids overall development

Social benefits enriches the Public

Domain and Basic Research

Legal monopoly towards fair regulation

within the territory


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The Intangibles

Goodwill, reputation and Consumer perception

Brand value and intuitive know-how

Scientific, industrial and literary acclaim

Stronger balance sheets short and long-term

Advertising reach and media coverage

Traditional usage and prominence enjoyed

EachEach formform ofof IPRIPR leadsleads intointo thethe other!other!


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Pressures of Enforcement

IPRs and Global recognition

y IPRs are territorial in nature

y No single authority or uniform standards

y National systems and interests continue to

preside

IPRs = fiercely competitive usage; justifies criminal remedies too

Copyrights and TMs violations


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Intellectual capital & assets

Key Principles:

Aggressive pursuit of IP protection internal and external

Visibility and full exploitation

Role of Intellectual assets in businessalliances and joint ventures Inorganic growth directions

Innovation market analysis concentrationand pulls of Competition law

Research clusters high potential + competitive


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Intellectual assets

Key Issues:

Working with the incentive structure taxation and attribution issues

Identifying the key geographical areas for marketing and registration of IPRs

Study the level of innovative behaviouramong the competitors; and suppliers


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Offshore Collaboration

Typically of three types:

y Captive entity wholly owned subsidiary IP isusually fully owned by Parent

y Joint venture a new combined company IP isbased on the Shareholding Agreement BOT/BOOT/BOOST Model involves transition risks

y Contracting with a local entity enforcement withdue diligence e.g., Confidentiality; Parent-subsidiary relations

Determining factors = cost, commitment,control, flexibility and liability models


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Legalese ofTechTransfer

Technology = wide ambit includingoperational know-howy Mutuality, Exclusivity, and Adaptability

Mode = licensing based on contractsy Contract enforcement index

y JVs; Tech assistance; Project Management; PPPs

Defined outcomes = products and tradey Fine balancing strategy required between being

restrictive and allowing direct competition


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Legal and IP risks

Sharing regime + sustained ownership

Disparities in applicable laws & IP rights

y Concerns of the legal systems maturity

Identify, define and document

processes and products

Due diligence & IP Valuation


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Risks

Enforcement across borders relies heavilyon the commitment of the local entity involved

Employer-employee relations towards aframework of trusteeship

Data protection and security lack of uniform

standards across regions and sectors

Dispute settlement and arbitral enforcementy Cross-border Investment related matters


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International framework

Investment and related processes are leftunregulatedy Competition Law and its implementation major issues

y Political interests trump business reasons!

y

Concerted efforts required PPP mode?

UN International Code of Conduct on the Transfer ofTechnology (drafted in the 1970s)y Premised on need for equitable grounds between nations

of varying economic strengths

Technology transfer must be facilitated by aninternational mechanism regulating the dimensionsof commercialization and licensed perpetuation


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Transfer ofPublic funded

Tech

nology The Protection and Utilisation of PublicFunded Intellectual Property, Bill (2008)y Instructions for Technology Transfer and

Intellectual Properties 1/3rd Royalty sharing

University and Small Business PatentProcedures Act (Bayh-Dole), 1980 USAy Permits universities, not-for-profits, and small

businesses to obtain title to inventions developed

with governmental support

y Allows government-owned, government-operatedlaboratories to grant exclusive licenses to patents


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Public funded

Federal TechnologyTransfer Act of 1986

y Provides for exchanging GOGO laboratory personnel, services, andequipment with their research partners

y Makes it possible to grant and waive rights to GOGO laboratoryinventions and intellectual property

y Allows laboratories to make advance agreements with large and smallcompanies on title and license to inventions resulting from CooperativeR&D Agreements (CRDAs) with government laboratories

The National Technology Transfer and AdvancementAct, 1995y Makes it easier for businesses to obtain exclusive licenses to technology

and inventions that result from cooperative research with the Federalgovernment

y The Act made a direct impact on the development of new industrial andtechnology standards by requiring that all Federal agencies use privatelydeveloped standards


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Emerging issues

Licensing in IPRs

y Emerging trends in global supply chain

y Minimum level of reasonable control as

evidenced in Contracts and practices

y Raises anti-trust and RTP claims as well

Securitization of IPRsy Methods of valuation and their accuracy

y Procedure of affirming secured interest


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global trends intech transfer

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