3. Agenda
Introduction
Essentials of Technology Transfer
Technology Transfer in todays economy
Negotiating Technology Transfer Agreements
Main Technology Transfer Agreements
The sale or assignment of IP Rights
License or License Contract
Know-How Contract
Franchise
Acquisition of Equipment and Their capita goods
Consultancy agreements
Joint venture agreements
The Turn Key Projects
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4. What is “Technology Transfer”?
WIPO says technology transfer (TOT) is:
“defined as transfer of new technologies from universities and
research institutions to parties capable of commercialization”
or in the sense of transfer of technologies across international
borders, generally from developed to developing countries.
Generally TOT consists of knowledge or IP rights that are:
licensed in the form of intellectual property,
the subject of formal consulting or training agreements,
communicated in the work place or research settings
diffused by publication or other means.
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5. What is “Technology Transfer”?
The WIPO website then refers to two manuals on licensing
Successful Technology Licensing
http://www.wipo.int/export/sites/www/ip-
development/en/strategies/pdf/publication_903.pdf
"Exchanging Value - Negotiating Technology Licensing Agreements:
A Training Manual”
http://www.wipo.int/ebookshop
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6. What is “Technology Transfer”?
Technology transfer is the process of sharing of
skills, knowledge, technologies, methods of manufacturing, samples
of manufacturing and facilities
among governments and other institutions
to ensure that scientific and technological developments are accessible
to a wider range of users
who can then further develop and exploit the technology into
new products, processes, applications, materials or services.
It is closely related to (and may arguably be considered a subset of)
knowledge transfer.
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7. What is “Technology Transfer”?
The reference to
skills, knowledge, technologies, methods of manufacturing, samples
of manufacturing and facilities
is probably wide enough to refer to the subject of transfer
But there are more locations of transfer. Transfer can be
between Public Universities or Government Research Institutes and
private industry
between the research and development (R&D) departments and the
other departments of a single business
between various entities or branches of a business group
in a franchising operation from the franchisor to the franchisee
between international organisations and national organisations
between industrialised economies and developing economies
And so on
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8. What is “Technology Transfer”?
And while the WIPO emphasises licensing as the major vehicle for
technology transfer there are other methods of transmission
Government local participation requirements in foreign firms
setting up in the jurisdiction
Note Chinese requirements and EU response
Legitimate reverse engineering
Access to publicly available knowledge through patent data
bases
Industrial espionage
Straight out infringement activity
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9. Essentials of Technology Transfer
Whether it is allowed between sharing countries
Whether it is allowed between sharing parties
Issues if you are technology giver
Issues if you are a technology taker
Issues of Intellectual Property in the targeted technology
What should be the nature of contract
Which law will follow
Which forum will follow
Method of adjudication
Damages for breach of contact
How and where to enforce the award
Sharing of green technology
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10. Utilization of Patent Information as a
Technology Transfer Tool:
Databases, Content and Access Conditions
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12. Patent System
Patent system has always been concerned with “technology
transfer”
A patent specification is a teaching document:
Should explain to a person skilled in a field of technology
exactly
what has been invented and
how to put it into practice
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13. Volume of Patent Documents
There is an enormous number of patent documents
WIPO statistics for 2004
850,000 first filings
1,600,000 applications to patent offices
5,000,000 patents in force
European Patent Office
holds 60,000,000 patent documents
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14. TOPICS
Range of patent documentation
Types of information in patent documents
Way information is presented
How information may be accessed
Some uses of information
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15. Patent Documentation
Specifications in granted patents
Specifications in applications not granted
Specifications in petty patents, innovation patents, utility models
Provisional application descriptions
Decided cases in patent litigation
Abstracts of inventions used to search
Official gazettes, bulletins of patent offices
References between sources
Official patent indexes
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16. Patent Documentation
Data bases for computer searching
Data bases of national or regional offices
Specialist patent information providers
Patent agent firms
Individual enterprises
Government reports, discussion papers, draft legislation, etc
Compilations of patent statistics
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17. Types Of Information
Technological
and
Bibliographical information
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18. Technological Information
Description of the state of the art prior to the invention
Detailed description of the invention in a form to instruct a
person skilled in the art
Drawings or formulae
A claim or claims defining embodiments
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19. Bibliographical Information
Dates names and addresses of:
the inventor,
applicant for right,
person claiming to be eligible for grant,
patent representative, agent or attorney
Classification symbols
IPC symbols
Maybe national patent classification
Title of invention
Abstract of description
Representative drawing or formulae
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20. Advantages of Patent Documents
Current and recently granted patents and applications often
contain most recent technological information publicly
available in field.
Often only source of information
Detailed explanations of technology
Detailed information in all fields
Source of linking references
Standard form of patents
Bibliographical items standardised by INID code
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21. Advantages Of Patent Documents
Classifications systems allow key to searching and analysis
Abstracts assist sifting for relevance
Bibliographical information allows contact with wide range of
parties
Standard formats allow creation of consistent data bases
Patent family identifiable both by technology and territorially
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22. International Patent Classification
National patent classifications developed
USPTO 1831, German patent Office 1877, UK 1880
Once prior art included foreign patent documents was need
for international system
WIPO and Strasbourg Agreement 1971
IPC system (8th edition)
8 main sections of technology
21 subsections
129 classes
639 subclasses
7,314 main groups
61,397 groups (and rising)
All identified by key symbols
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23. INPADOC
International Patent Documentation Centre- 1972
Established by WIPO and Austrian Govt
Now administered by EPO
Contains
Title, IPC classification symbols, any national classification
symbol, relevant dates,eg filing, amendment, search,
registration, names of inventor. Applicant, patentee, addresses.
Contact information etc.
Machine readable, computer storage, fully searchable
Information collected from national and regional patent offices
Particularly useful in capacity to generate “patent families”
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24. INPADOC forms of access
Patent Classification Service (PCS)
Numerical database (NDB)
Patent Family and Numerical List (PFS/INL)
Patent Application Service (PAS)
Patent Applicant Priorities (PAP)
Patent Inventor Service (PIS)
Patent Register Service (PRS)
Patent Gazette (IPG)
Watch CAPRI project
WIPO services for developing countries
User guides in particular fields
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25. Other Classifications
ECLA- European Classification
134,000 sub divisions
EPO claims more precise, homogeneous and systematic
than IPC
Concordance with IPC
USPC- United States Patent Classification
400 classes, with class number
many subclasses all with detailed identifying symbols
Table of concordance with IPC
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26. Other Sources Of Information
Derwents World Patent Index (WPI)
Chemical Abstracts Service (CAS)
Private sources
eg Siemens,
Hitachi, etc
Patent Office data bases (free)
International Organisations (eg WIPO Patentscope) (free)
Commercial companies (fees)
Note there are database providers and patent information and
analysis service providers
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27. The uses of information.
Testing novelty or inventive step
Information about the state of technology and method
Planning information
Management information
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28. The users of information.
Patent offices
Governments and government departments and agencies
Researchers and teachers in higher education
Research and development institutions
Industrial enterprises
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29. Use as technical information
Determine most recent products and methods
Accumulate and understand technological advance
Locate related technology
Identify technology trends
Adapt research priorities
R&D plans strategically targeted
Allows “design around” or complementary development strategies
Reduce incidence of “reinventing the wheel”
Suggest solutions to analogous problems in other fields
Indicator of feasibility
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30. Use as management tool - Government
Monitor foreign patent applications in own country
to level of foreign ownership and control in economy
Indicate trend of technology in foreign country
Can assist identifying import levels
Monitor domestic applications to identify
Level of domestic innovation
levels of R&D success
Information to assess trends in economy
Identification of activity in differing sectors
Planning tool
Monitoring and analysing patents in a foreign country may reveal much
about that countries economic and industrial development and assist
trade policies
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31. Use as management tool - Enterprises
Source of technological information for R&D
Compile and maintain IP inventory
Key performance targets and measures for
Overall enterprise activity
Particular divisions or departments
Research teams or individual researchers
Searching by inventor allows to monitor who is generator of new
technology
Screen and monitor competitors
Use information to oppose competitors acquiring rights, seek revocation,
defend infringement actions
Identify potential collaborators for cross licensing, patent pooling
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32. Use as management tool - Enterprises
Use information to decide if should buy out competitor, merge or
sell out to competitor
Identify possible ways to designs around others rights
Identify possible improvement patents on others patents
And so on
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34. Europe and China Technology Transfer
Warns that EU companies subject to Chinese
requirements that threaten unwanted Technology
Transfer
Compulsory joint ventures for markey access
Public Contracts and procurement
Design Institutes
Certification for Access
http://www.china-iprhelpdesk.eu/media/docs/Tech_transfer_English.pdf
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35. Compulsory joint ventures in
exchange for market access
Access to the Chinese market in some designated
sectors, sectors, such as
car manufacturing
manufacture of railway locomotives and rolling stock,
foreign companies must enter into joint ventures with Chinese
companies.
Approval to form a joint venture or to
operate may depend on the supply of specific technology, includ
ing future improvements of this technology.
In some cases, the partner cannot be freely chosen and may be
a competitor or concurrent Joint
Venture partner of another competitor.
In other cases, enlargement of a preexisting investment may require the set
up of local R&D Centre or other forms of transfer of Knowhow.
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36. Public contracts/procurement
To take part in public tenders,foreign companies must ensure that part
of their production is local
up to 80%in some cases
Production by foreign subsidiaries in China is often not considered
as local
Instead, foreign firms have to work with a Chinese general contrac
tor, to which their technology has to be transferred in full.
Specific rules about bidding requirements of technology transfer, to g
ive the contract to whichever company promises the greatest transf
er of know how
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37. Design institutes
For many projects, in particular the manufacture of machinery
and equipment, China requires mandatory wide
ranging review of industrial drawings and designs by Chinese de
sign institutes .
The drawings and know‐how may later be used by other Chines
e projects to duplicate and use the design in other locations of
China. In addition to transferring ,
Foreign companies often have provide
detailed technical documentation and
to train Chinese staff so that, in future, they can design
the machinery or equipment independently
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38. Certification and licenses for market access
Many products have to be certified by a Chinese certification in
stitution or are subject to a license by a Chinese ministry before
they are allowed on the Chinese market.
Some certification procedures require inspections of production
plants in right holders' home countries.
In some cases, the Chinese inspectors may come from competito
r companies and they may ask technical questions which are no
t strictly necessary for certification.
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39. Business advice
The European SME IPR HELPDESK provides detailed advice and
strategies for businesses seeking to work in China or with Chinese
partners how to minimize the risks of unwanted technology transfer
and deal with the four major risks.
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41. Australian Government Innovation
Strategy
POWERING IDEAS
An Innovation Agenda for the 21st Century
released on 21 May 2009
• Strategy from 2009 to 2020
- a 10 year reform agenda
- From the office of Senator Kim Carr
- Minister for Innovation, Industry, Science and Research
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42. Australian Innovation Performance
Declined between 1997 and 2007
(Howard Years … political motivation for assertion?)
From 5th to 18th on World Economic Forum Global
Competitiveness Index
multifactor productivity grew on average1.4% annually
between 1982 - 1996
But between 1997 - 2007 only 0.9%
Commonwealth spending on science & innovation fell
22% as share of GDP to 0.58 % GDP in 2007
Business spending on R&D collapsed in 1990’s and despite
recovery still lags competitors
Firms introducing innovation static at 1 in 3
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43. Competitors
China’s R & D spending grown 22% annually since 1996
Australia’s R & D spending grown by 8% annually
Israel spends 4 % of GDP on R & D
Finland, Japan, South Korea, Sweden spend 3% GDP
Austria, Denmark, Germany, Iceland, Switzerland, Taiwan,
USA spend 2.5% GDP
Australia spends 2% GDP
Russia and South Africa doubled R & D spending in 10
years
Share of R & D in non OECD countries increased from 11.7
to 18.4%
New entrants making rapid improvements, older players
investing to maintain position
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44. Australian National Innovation
Priorities
Public research funding to support high quality research
into areas of challenge.
Develop strong base of skilled researchers.
Fostering industries of the future to secure
commercialisation.
More effective dissemination of new technologies.
Encouraging a culture of collaboration within research
community and between researchers and industry.
International collaboration.
Public and community participation.
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45. Research capacity
International experience - 75% private sector patents draw
on public sector research.
Universities and public research organisations like CSIRO
crucial
Need to renew public funded research workforce, research
infrastructure and method of sharing results
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46. Government Action on Public Research Capacity
Progressively increase number of research groups at world class level
Use “mission-based funding compacts” to promote collaboration
Universities encouraged by funding models to form research “hub and
spokes”
Universities encouraged by funding models to pursue “industry driven”
research
Address gap in funding indirect research costs - new funding program
Increase capacity to participate in domestic and international
collaborations
Increase capacity to participate in multidisciplinary research
Invest in research infrastructure - various funding mechanisms listed in
Strategic Roadmap for Australian Research Infrastructure:
- $580 m for university research and infrastructure,
- $901 m for projects identified in roadmap and Super Science
Initiative - Education Investment Fund 2009 - 10
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47. Government action on public research skills
Workforce strategy to address expected shortfalls in supply
of researchers
Double number of Australian Post Graduate Awards (APAs)
Increase dollar amount of APA (10% increase 2009 - 10)
Increase students in higher education generally and
mathematics and science particularly to enlarge pool of
potential Higher Degree by Research students
Create viable career paths for researchers
Early Career Researcher grants
- Mid Career Research grants (Future Fellowships)
Senior researcher grants (Australian Laureate
Fellowships)
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48. Business Innovation
Business drawn to innovation by competitive advantage and
profit motive.
Australia had few large business with fund capacity - so
challenge is medium and small business innovation funding.
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49. Government role Business Innovation
Aim to increase proportion of businesses engaging in
innovation by 25% over 10 years.
Enterprise Connect
Clean Business Australia
Clean Energy Initiative
Increase businesses investing in R & D
R & D tax credit system
Support innovative responses to climate change
Clean Business Australia
Green Car Innovation Fund
Clean Energy Initiative
Global Carbon capture and Storage Institute
Climate Change Action Fund
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50. Government role Business Innovation
Improve innovation skills in workplace
Enterprise Connect
Education Revolution strategy
Support firms get ideas to market
Climate Ready
Green Car Innovation Fund
Commonwealth Commercialisation Institute
Work with Private sector to increase supply of venture capital
Government initiatives to respond too credit crisis “the stimulus”
Innovation Investment Follow-on Fund
Maintain dialogue with Industry about innovation
Enterprise Connect
Industry Innovation Councils
Pharmaceutical working group model
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51. Public Sector Innovation
Government must lead by example
Take advice from Australian Public Service Management
Advisory Committee
Australian National Audit Office
Use public procurement to drive research, innovation
technology development
Commonwealth Government Procurement Guidelines
2008
Coordinate approach to information management
Australian Government Information Office
Consider options for reform of Patent system and support
intellectual property education for researchers and business
Improve management and regulation of biotechnology and
nanotechnology
A new national Enabling Technologies Strategy
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52. Collaboration
• Australia ranks last in OECD on the level of collaboration
between public researchers and private industry. To improve
Government will:
• Seek to double level of collaboration between Universities, public
sector research institutions and business :
Mission based funding compacts
Enterprise Connect
Researchers in Business Program
Industry Innovation Councils
Joint Research Engagement Scheme
Royal Institution of Australia
• Increase international collaboration
Australian Research Council grants open to international
applicants
Specific multilateral projects eg Square Kilometre Array
radio telescope project
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53. Collaboration
Renew Cooperative Research Centres (CRC)
Collaborating to a Purpose new guidelines 2008 introduce
“public good” as a funding criterion
encourage research in humanities, arts , social
sciences,
Increase focus on needs of end users
Improve Enterprise Connect services to individual firms
Seek to develop regional clusters and networks linking
researchers, educational institutions and business
Promote proven models for linking public funded and not
for profit researchers with industry
Eg CSIRO’s national Research Flagship
CSIRO ICT Centre
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