intellectual property(ip) management
TRANSCRIPT
INTELLECTUAL PROPERTY(IP) MANAGEMENT:
By
Dr I.M. Nwaedozie(SA/Ag.HOD)
(Technology Acquisition and Research Coordination)
National Office for Technology Acquisition and Promotion (NOTAP)
(Federal Ministry of Science and Technology, Abuja )
At the
Commissioning of IPTTO and Training
Igbinedion University, Okada, Edo State
7th- -8th August, 2019 1
Outline:
Introduction
Intellectual Property(IP) Management
Core Issues
Case Studies: IP in Development
Domestic Challenges
Recommendations
Conclusion
Introduction:
The National Office for Technology Acquisition andPromotion (NOTAP), is one of 17 agencies under theFederal Ministry of Science & Technology(FMST);
Established by Decree No 70 of 1979 as NationalOffice for Industrial Property (NOIP) and laterAmended by Decree 82 of 1992 , now Cap N62 LFN,2004 ;
Mandates includes:
Encourage a more efficient process for theidentification and selection of foreigntechnologies;
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Introduction condt.
Development of the negotiating skills of Nigerians;
Provide a more efficient process for the adaptationof foreign technology;
Register all contracts and/agreements having effectin Nigeria entered into, for transfer of foreigntechnology to Nigerian parties;
Monitor on a continuous basis the execution of anycontract and/or agreement registered pursuant to theNOTAP Act;
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Introduction condt.
Facilitating commercialization of R&D Results and
Inventions from the National Innovation System;
Promoting locally generated technologies and
disseminate technology information to SMEs and
National Researchers;
Keeping and updating the database of Nigerian Experts in
Science, Technology and Engineering and other fields
towards the implementation of Executive order No 5,
Promoting Intellectual Property Rights (IPRs)Culture through targeted programmes and activities;
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Intellectual Property (IP) is the creations of the
human mind e.g. inventions, literary and artistic
works,(WIPO, 1998); Intellectual Property Rights (IPRs) are monopoly
rights conferred on the creators by a Statutory
Authority;
IP management is methodologies adopted to
achieve the commercialization of R&D results from
the faculties.
The structure varies but same objective
IP management is basically activities fortransforming an invention into tangible products orservices,
IPs are mostly generated from the knowledgeinstitutions such as universities, polytechnics,research institutes, public & private laboratories etc;
Generating IP requires conscious effort, commitmentand long time significant investments in R&Dactivities,
There are national and international laws andconventions guiding the commercial exploitation ofIPs;
Management Structure Model:Organisational Options for Technology Transfer Office(Malaysian,2010)
Malaysian government place emphasis on capacity building of
the National Innovation System(NIS)-
focussing on bringing the research results to the market place
Source: UPM.2010
The core services offered include:
Assessment of commercial ideas,
Setting up of spin-out companies,
Business plan preparation,
Market research and evaluation,
IP management, licensing or sale,
Accounting & company secretarial services,
Access to venture capital & funding,
Secure Business angels & entrepreneurs
Spin-in and business monitoring
Networking of players & corporate financiers
Manpower Requirement in IP Office
Office Managers
Lawyers(-time optional or on part time arrangement)
Accounts,
Innovation Advisor
Project Managers
Scientific Officers-evaluators
Marketers
Characteristics of IP Assets:
New and novel;
Must lead to a product or service that is useful to
the Society;
Potential for Commercialization,
Economic viability and activities;
None obvious;
Must not have been disclosed;
Must have scientific basis, reproducible and must
not be shrouded in mystery,16
Key Conditions for Patentability(IP)
Novelty(new);
Inventive Steps(Not obvious);
Industrial Applications; and
Must Not be against the public interest/
morality.
17
Socio-economic Benefits of IP Commercialization
Companies are created for exploitation,
Employment opportunities are created,
New products are taken to the market,
Financial returns to the investors,
Future research is expanded,
Major source of revenue in academic institutions,
etc
Core Issues in IP Development in Nigeria
Low IP Awareness & poor culture of IP in development;
Absence of a National IP Policy
Low investment in R&D Activities;
Partnership between Industry and Research Centres is weak,
Low Commercial Content of Domestic R&D Results;
Ownership of IP and Revenue sharing formula not defined;
Absence of formal Guidelines on R&D Commercialisation
etc
Case Studies: IP in Development
Fourteen(14) Universities in the US,
Northern Carolina University-US,
Niprisan: Sickle cell Drugs of NIPR-Idu-Abuja,But the commercialization of Niprisan, even with a potential market opportunity estimated to worth over $1 billion,
has been mired in controversy for over a decade. It has ended up denying millions of people affected by the scourge
of the disorder an opportunity of having a better life. Over 12 million people, mostly with origins in sub-Saharan
Africa, India, Saudi Arabia and Mediterranean countries(U.E.Epku in Quartz Africa, 2019).
Nigerian FIIRO Energy Biscuit,
High Nutrient Density Biscuit developed by
FIRRO,patented Via NOTAP and Commercialised by
NASCO Corporation.
Universities Innovation
Disclosures
Patent
Applications
Patent
issued
License
Agreements
Start-
ups
Programme
Revenue in $mWisconsin(2010) 350 200 130 61 2 $86.00Princeton(2009) 77 107 38 33 N/A $65.60Stanford(2009) 443 N/A N/A 77 9 $65.10MIT(2010) 530 184 166 57 10 $60.10Washington(2009) 349 262 40 220 10 $50.40Cornell(2010) 338 420 140 114 N/A $31.90UCLA(2009) 333 179 60 37 N/A $28.90UC Sam Diego(2009) 373 286 64 85 9 $26.30Michigan(2009) 350 151 72 78 8 $18.30Johns Hopkins(2009) 352 579 46 99 10 $16.20Harvard(2010) 301 133 38 37 7 $10.20Wash U.(2009) 125 106 50 44 2 $7.90Pittsburgh(2010) 225 69 33 54 N/A $6.10Colorado(2009)
258 204 24 61 11 $4.40
IP Assets Owned by Universities and the income generated in the USA(Darrell,2012)
Case Studies: IP in Development:
North Carolina State University IP Annual Report 2012
(After Essien,2013)
No Item Quantity
1 Patent Issued 806
2 Patent Pending 248
3 IP Disclosure 3,450
4 Products To Market 230
5 Startup Companies 100
6 Jobs Created 6,800
7 Jobs Created In North Carolina Only 320
8 Royalty $1.5 billion
Source Office of Technology Licensing (OTL)
Ranking of Universities in the US based on achievements in IP
and Patents (Top five)
R/k Institution Patents
Score
Licenses
Issued Score
License
Income Score
Start-Up
Score
Indexed
Score
1 University of
Utah
88.27 89.38 94.04 93.90 100
2 Columbia
University
85.86 84.54 97.08 88.50 87.83
3 University of
Florida
88.60 .95.37 91.60 87.84 97.66
4 Brigham
Young
University
85.59 85.83 86.76 94.95 97.58
5 Stanford
University
96.28 85.43 94.57 81.94 95.60
Source: Milken Institute,AUTM Statt Data Set
Typical Revenue Sharing
Cumulative net
income Inventors
Research
Team/Department
R&D
Director
Trust
First £50,000 50 10 20 20
Next£100,000 40 10 25 25
Next£150,000 30 10 30 30
Over£250,000 25 10 32.5 32.5
NOTAP IP Programs & Achievements
Establishment of 48 IPTTOs across tertiary
institutions in Nigeria(August, 2019),
Patent Support Services to Nigerian researchers,
Capacity Building/Sensitization on IP
information, education and communication in
Nigeria,
Commemoration of African Day for Technology
and Intellectual Property(IP) on behalf of the
Federal Government,
etc
Figure 1:Location IPTTOs Per Geo-political Zones in Nigeria(August,2019):48
28
0
1
2
3
4
5
6
7
8
9
10
Southwest Southeast southsouth Northeast Northwest Northcentral
10
8
6
4
7 7
Numbers
Geo-political ZonesSource: NOTAP,2018
Figure 24: IP Grants Facilitated by NOTAP per Year:
29
0
10
20
30
40
50
60
2010 2011 2012 2013 2014 2015 2016 2017 October, 2018
68
6 6
32
6
16
5053
No of
Patents
Year
IPTTO: aims/objectives/Functions
AIM OF IPTTO:
To promote the culture of Intellectual Property Rights(IPRs) and development of locally motivated technologies.
OBJECTIVES:
(i) Development and enforcement of institutional
intellectual property policy,
(ii) Creating awareness and educating researchers
in the tertiary institutions on the management of
intellectual property assets,
(iii) Promoting interaction and strengthening
linkages between university and industry/market,
Objective condt.
(iv)Developing a robust intellectual property
rights through patenting, copyright, technology
licensing,
(v) Encouraging technology transfer through
marketing of intellectual property rights to
investors
Responsibilities of the IPTTO Coordinator include;
Liaising with the institutional authority to
develop IP policy,
Sensitizing the institutional communities on the
activities of IPTTO through seminars and
workshops,
Collation of database on complete R&D projects
in the institution.
Evaluation of the Database of R&D Projects todetermine its commercial viability,
Collation of database of the researchers, documentingtheir contacts and areas of expertise,
Securing IP protection for viable R&D Resultsemanating from the institution,
Seeking partnerships fro the translation of R&DResults into products or services,
Monitoring on-going viable research projects toensure destination-market,
etc
Some Challenges.
Changing the mindset of Nigerian researchers;
Weak IP awareness and literacy level in the country;
Absence of IP policy in most Nigerian academies,
Inadequate infrastructure for research and innovation,
Poor innovative culture & inadequate investment in R&D
programs,
Low commercial content of indigenous IP Results
Weak enforcement of IP Laws infringement
etc
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Recommendations
Re-orientation of the mind-set of Nigerian
academics,
Establish IP policy/administrative framework
Robust IP awareness creation/trainings,
Ensure that all institutional funded R&D
activities must be market driven,
Improved investment on R&D
activities/infrastructure,
Improve institutional visibility/Public relation
Etc.37
CONCLUSIONS
Knowledge of Intellectual Property(IP) assets and its role indevelopment has not been desired attention in Nigeriantertiary institutions ;
Legal protection of IP assets is fundamental to itscommercialisation;
National expenditure on R & D activities is still belowcontinental average of 0.41%(UNESCO)
About 90% of technology powering the Nigerian economy isimported and 50% is IP based with huge to the nation(NOTAP,2018);
Effective management of indigenous IP could makesignificant contribution to the institutional internalgenerated revenue. 38