IP Valuation For Universities, Patent Flexibilities On Tap At WIPO

The World Intellectual Property Organization Committee on Development and Intellectual Property (CDIP) meets next week with a focus on how universities and research institutions can best derive value from their discoveries. Also on the agenda are proposed projects and several documents mapping WIPO development-related activities, such as South-South cooperation. And the action kicks off this week with a wide-ranging conference on IP and development at WIPO.

The 17th session of the CDIP is taking place from 11-15 April. The draft agenda is here [pdf]. This week’s International Conference on Intellectual Property and Development will take place on 7-8 April.

Several documents, to be noted by the committee next week, aim at helping universities and research institutions to better manage the intellectual property rights that they have on their discoveries, and how to manage technology transfer.

One, called A Practical Guide [pdf] for Valuing Intangible Assets in Research and Development Institutions was prepared by Thomas Ewing, commercial lawyer, registered patent attorney and intellectual property counselor for San Francisco (US)-based Avancept LLC.

According to the guide, it seeks to assists countries “in the development and improvement of national Intellectual Property (IP) institutional capacity through the further development of infrastructure and other facilities to enhance the functionality of national IP institutions and promote fair balance between IP protection and the public interest.”

The guide provides practical advice to assist universities and publicly-funded research organisations to identify their valuable intangible assets, rank them by using different valuation approaches, manage, and commercialise those with potential market value.

Another document presents Models of Intellectual Property (IP) Related Contracts [pdf] for Universities and Publically-Funded Research Institutions. It was prepared by Thomas Bereuter, former director of the Technology Exploitation Office at Graz University of Technology, in Vienna, Austria; David Jerolitsch, researcher at Wiener Neustadt, Austria; and Peter Heimerl, former Head of the Technology Transfer Office at the Vienna University of Technology.

“Mutual collaboration with universities or in general with publicly-funded research  organizations (PROs) enables companies to scout for talents as well as for new ideas, as well as for new ideas, technologies and IPRs,” according to the document.

Praising open innovation as a strong factor for rejuvenating product portfolios, the authors said companies such as Procter & Gamble, General Electric, 3M, Google, Microsoft, DuPont, and Honeywell “are frequently presented as role models.”

The document explores diverse activities and model agreements which have been developed mostly in European countries and in the US. According to the document, the Bayh-Dole Act from 1980 “gave US universities, small businesses, and non profits control of the intellectual property that resulted from government funding of their research.”

“Collaboration between curiosity-driven research in PROs and business-oriented development in companies has to cross cultures and to yield synergies for all parties involved,” said the authors.

Also to be presented at the CDIP is an Intellectual Property Valuation Manual [pdf] for Academic Institutions. Prepared by Ashley Stevens, lecturer, Strategy & Innovation Department, School of Management at Boston University (US), the manual aims at helping technology transfer professionals with basic tools allowing them to “ensure that their institution is fairly compensated for the use of its intellectual property.”

According to the document, the manual has four specific objectives: identify the basic principles of technology valuation; describe the terms and techniques that technology transfer professionals will encounter in the course of their work; provide specific tools and resources for valuing specific technologies; and look at some examples.

Valuing IP in the context of technology transfer, “means identifying the financial terms the TTP will be trying to achieve when (s)he negotiates a license with a potential licensee,” according to the manual.

Also on the agenda, to be noted by the CDIP, is a Mapping of Activities [pdf] Related to Technology Transfer, which describes activities undertaken by WIPO during the 2014/2015 biennium, prepared by the secretariat.

The mapping includes WIPO technology transfer support services and activities for universities and research institutions; advisory services and programmes related to the creation of an enabling legal framework for technology transfer. In particular, WIPO provided recommendations to Cameroon, Sri Lanka, Rwanda, Jamaica, and Trinidad and Tobago.

According to the mapping, WIPO has been providing expert advice “through customized capacity building programs or specific Projects based on needs assessment surveys that provided to beneficiary institutions action plans on how to establish professional IP management offices…”

Director General Report on Development Agenda Implementation

WIPO director general reports annually to the CDIP on the implementation of the WIPO Development Agenda, and in particular its mainstreaming in all WIPO activities. This year’s report [pdf] provides highlights on how WIPO is implementing the Development Agenda in its regular program activities and the work of other WIPO bodies. The report also describes development in the implementation of Development Agenda projects.

According to the report, “a major achievement in 2015” was the approval by the Assemblies of a revised definition [pdf] of development expenditure (IPW, WIPO, 18 September 2015).

WIPO technical assistance was geared toward empowering developing and least-developed countries (LDCs) to use their IP system “as a contributing factor in achieving their development goals and fostering their participation in the global knowledge and innovation economy,” the report said.

WIPO cooperated with a number of United Nations organisations and contributed to various processes, such as with the Open Working Group on Sustainable Development Goals (SDGs), the Millennium Development Goals (MDGs) Gap Task Force, and the UN Framework Convention on Climate Change (UNFCCC), according to the report.

WIPO, with the World Trade Organization and the World Health Organization, contributed to the section of the MDG Gap Task Force’s 2015 report related to access to essential and affordable medicines, it said.

“In the field of building respect for IP, the Organization approached enforcement in the context of broader societal interests and especially development-oriented concerns,” and “upon Member State request, WIPO provided legislative assistance on the compatibility of current or draft national legislation with the enforcement-related obligations under Part III of the TRIPS Agreement [WTO Agreement on Trade-Related Aspect of Intellectual Property Rights], while taking the balances and flexibilities incorporated therein into account.”

The report also mentioned the ongoing Independent Review of the Implementation of the DA Recommendations (IPW, WIPO, 18 November 2015) and (IPW, WIPO, 24 December 2015). The Review Report is expected to be presented at the eighteenth (the next) session of the CDIP, the report said.

According to the report, “By the end of 2015, Member States had approved 31 projects, implementing 33 recommendations. The estimated financial resource approved to date for the implementation of these projects amounts to 28,124,792 Swiss francs.”

Projects: Report and Proposals

The CDIP is expected to take note of an Evaluation Report [pdf] on the Project on Strengthening and Development of the Audiovisual Sector in Burkina Faso and Certain African Countries and consider the approval of  a second phase [pdf] of the project for a projected amount of  CHF540,000 (US$ 562,000).

Two other project proposals previously submitted at the last session of the CDIP are expected to be discussed again next week (IPW, WIPO, 16 November 2015). One is a project [pdf] on Use of Information in the Public Domain for Economic Development, and the other one [pdf] is a project on the Cooperation on Intellectual Property Rights Education and Professional Training with Judicial Training Institutions in Developing and Least Developed Countries.

Mapping of WIPO Activities; Flexibilities Database

On the agenda next week are two mapping documents. One is mapping the South-South Cooperation Activities [pdf] within WIPO, and the other one mapping WIPO activities [pdf] related to the UN Sustainable Development Goals implementation.

The CDIP is expected to take note of both documents, as well as another document describing a mechanism for updating the WIPO database on patent flexibilities [pdf], such as: compulsory licences and government use; exhaustion of rights; research exemptions; disclosure-related flexibilities; substantive examination; and the flexibility whether to apply criminal sanctions in patent enforcement.

The proposed mechanism includes two options for updating the database. In one of the options, additions could be submitted by member states on their national provisions related to the flexibilities included in the database, and included in the database without having been examined by the secretariat and would be noted as “updates notified by member states.”

New Book – WIPO: A Reference Guide

The other option states that the secretariat would examine the submissions “to determine whether the update is in conformity with the scope and criteria agreed by the Committee while discussing the specific flexibilities.”

Separately, a new book was announced this week that analyses the WIPO governance system. The book, entitled, The World Intellectual Property Organization (WIPO): A Reference Guide, was authored by Geneva-based Carolyn Deere Birkbeck, senior researcher at the Global Economic Governance Programme at the University of Oxford.