Points to consider in establishing an institutional (usually university) intellectual property policy. Presentation given as part of an ASEAN-USPTO Program on Technology Transfer in Bangkok, Thailand, July 1, 2009

2.  What should an institutional
policy touch on?
 How to decide these issues?
 How to implement?

3.  IP that is included
 Who is covered
 Ownership of IP
 Disclosures
 Dispute resolution
 Protection of certain
communities/Conflicts
 Responsibility for Management
 Splitting the money

4.  Traditional division between Copyrights
and Patents
 Ignoring of Trade-marks
 Good arguments to be made now that
all IP should be brought into a policy
 Who decides when IP will be
commercialized? (Researcher, funder,
administration?)

5.  Researchers
 Students
 Staff members
 How about visitors?
 Members of the local community
allowed to use facilities?
 How to reconcile issues over
collaborating partners?

6.  Clear statement that IP is owned by X
[Inventors; Funding Organization;
Institution?]
› Choice should be based on: who is best
capable of doing the work?
 Obligations to sign patent documents
› Need for institutional and individual signatures
 Consider ‘relief valve’ that lets researchers
get ownership back

7.  Open source?
 Academic publications
 Open innovation

8.  Most important special case
› transfer of ownership only when paid “full
economic costs”
› Meaning of FEC
 Publication limits
 Other issues related to working with
industry

9.  Can’t manage what you don’t know
 Initial information gathering
 Gather information relevant
to initial valuation
 Need to balance information
required and complexity to
complete

10.  Initiates management
 Can be used to pass information to:
› Internal stakeholders (academic
management)
› External stakeholders
 When is something truly a disclosure?

11.  Who is an Inventor?
› Patent attorneys can answer
to a point
 Useful to have some type of
internal committee to arbitrate
disputes
 Can also help with revenue splits

12.  Inherent conflicts between supervisors
and students
 How to protect students?
 Conflict between granting agency and
host institutions
 Use of an intermediate
authority
 Conflicts between
inventors and institutions

13.  They say: “It’s not the money, it’s the
principle”
 They mean: “It’s the money!”
 How to determine?
 Institutional portion generally at least 50%
after ‘costs’
 What do costs mean?
 Include overhead, time etc? or just
patents and outside personnel?

14.  Does TT get a portion of
revenues automatically?
 What other functions will
they be given
 How to fund over
‘dry spells’?

15.  Communication plan
 Also needs to see almost immediate
services being available
 Practices (next section) are a critical
piece of the puzzle

16. Marcel D. Mongeon
+1 (905) 390 1818
marcel@mongeonconsulting.com