UN Body Offers Guidance To Governments On Boosting IP Systems

By William New
The World Intellectual Property Organization may be the biggest United Nations agency in Geneva working on IP issues, but another body also has taken up the effort. And in a recent conference held by the UN Economic Commission for Europe (UNECE), panels of experts informed officials from economies in transition about technology transfer, small business, enforcement and the valuation of IP.

The experts spoke at a 25-27 July conference on IP and economies in transition, sponsored by UNECE, which is working to develop best practices and policies on IP commercialisation and enforcement.

On technology transfer, according to participants, the goal was seen as building a healthy relationship between strong public research organisations and innovative industries. Intellectual property was seen as a tool for technology transfer, and innovation seen as more complex than in the past, based more upon partnerships.

It was recognised that talent and markets are found worldwide, that technology transfer includes licensing and acquisition, spinoff companies, pre-competitive collaboration on research and development, and other crossovers, they said. Universities should focus not only on patents but also copyrights and other IP forms.

Public research organisations were recommended to learn better IP management, and forge long-term relationships with the private sector that are prioritised from the leadership down, sources said. Also, it was suggested that monetary gain should not be the only benefit sought and should not be pursued by policymakers with the idea that it will cut public research costs.

It was raised that technology transfer should have two principles: maximising the benefits of knowledge, and ensuring the use benefits society, said sources. Governments were encouraged to support research organisations in partnering with industry, and to become globally attractive for partners. They also were encouraged to push for more harmonisation of IP systems.

Nikolaus Thumm, senior economic counsellor at the Swiss Federal Institute of Intellectual Property, described his country’s experience and the results of a survey of small businesses’ use of IP.

He said IP strategies include protection from competition, safeguarding future technologies, and providing a basis for alliances, with the objective of providing freedom to operate, blocking competitors and creating licensing income. Companies can use patenting strategies to block competitors by pre-emptively filing related patents, he said. Not every idea should be moved to the patent stage as this can affect innovativeness in the market, he said.

Thumm said small and medium-sized enterprises are the “motor of innovation” in an economy but that “very few” file patent applications, though the number of patent applications per employee is high on average. Small companies have “huge innovation potential,” he said and should be encouraged to use IP rights more. The survey showed that most small businesses believe they have new ideas, but few patent them. Somewhat more used trademarks. A lack of access to knowledge about services or high costs were main reasons for this gap, he said. Very little is known about design protection, he said.

Natalia Zolotykh also described problems in Russia in the use of intellectual property rights by small businesses, including a drastic decline, a lack of clarity as to who owns IP, and poor enforcement.

On enforcement, Beat Weibel of ABB, which makes electronic systems like circuit breakers, said his company files 600 to 700 patent applications a year and holds 14,500 patents worldwide, but still cannot stop counterfeiting of its products.

A panel also addressed valuation, auditing and accounting for intellectual property, presenting key components of this new area. Several methods for IP valuation were presented, plus mention of the rise of IP auctions. A primary feature of valuation is determining the timeline, whether a single point in time or some time in the future, speakers said. WIPO’s Christopher Kalanje said other valuation “triggers” include sale or purchase of IP assets, licensing, mergers and acquisitions, IP asset donations, litigation, joint ventures or strategic alliances, and financial reporting.

Renaud Sorieul of the UN Commission for International Trade Law (UNCITRAL) said the group might develop a joint project based on a joint colloquium in January 2007 on secure transactions. UNCITRAL is preparing a legislative guide on secure names hopefully by December, Sorieul said. The guide is similar to UNCITRAL’s usual model legislation, but not in the form of concentrated language ready for adoption into law by national governments. Rather, it is in the form of policy recommendations, he said. UNCITRAL has published a paper on its future work on security rights in IP.

The objective is to facilitate the obtaining of credit in international trade, and the guide refers to intellectual property rights, though for now it would not affect international laws on IP. UNCITRAL is interested in non-governmental views, he added. UNCITRAL reviewed IP issues at its annual session in Vienna earlier this month.

Crossing the Valley of Death

Several speakers referred to the difficulty in getting an innovation from the idea stage to the commercial stage, a gap referred to as the “valley of death.” Andrew Dearing, secretary general of the European Industrial Research Management Association, said the valley of death for a typical breakthrough is “at least 10 years wide and 20 million euros deep.”

Most research output is “too raw” to be used directly, he said, making it difficult to capture with IP rights. Dearing also said the “more contentious” and time-consuming negotiation of IP rights in sponsored research agreements in the United States “has become a barrier to industry-university research collaboration.”

Bill Lindsay of ProTon Europe, a public research group, said that in the United States, 70 percent of patents are based on inventions make by public research organisations. But only 3 percent of patent applications are filed by universities. In Europe, 50 percent of the 36 most successful European patents filed between 1990 and 2000 came from public research institutions, he said.

Frank Moeschler of the European Commission’s research directorate focussed on the need to improve knowledge transfer. The Commission adopted on 4 April 2007 a communication with “policy orientations” [COM(2007)182] on “Improving knowledge transfer between research institutions and industry across Europe: embracing open innovation.” It was accompanied by a Commission Staff Working Document with guidelines for universities and other public research organisations [SEC(2007)449].

Moeschler said universities need more autonomy and awareness, and that governments should “actively promote and support the pooling of resources, including patents.”

There is currently a public consultation until 31 August on the “mechanisms to promote knowledge transfer we should be adopting in Europe,” he said. Then the creation of a charter for IP rights management by universities should follow in early 2008, he said.

William New may be reached at wnew@ip-watch.ch.