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7
Intellectual Property
“Intellectual Property (IP) is a central issue in international
research collaborations. What is the balance between the facilitation
of research and the protection of IP? The members of the IP track will
discuss and outline the major issues, challenges, and successes of IP on
the international level. This will include such topics as background
intellectual property (BIP), the connection between IP and export
control, the management of IP at the university, industry, and govern-
mental levels, and emerging issues in the coming years (such as manag-
ing IP given the increasing transportation of large data sets and research
across national borders). The IP team will pay particular attention to
practices and models of IP used in individual countries, for inclusion
in project deliverables.” (Workshop Agenda)
7.1 IP TRENDS FROM A U.S. UNIVERSITY PERSPECTIVE1
Brian Warshawsky, Senior Contracting Officer at Northwestern
University, began his talk by outlining several trends that he has seen.
On the one hand, international collaborations are more frequent. On the
other hand, agreement negotiations are increasingly bogged down due to
a lack of understanding on the part of industry about what collaborations
In this section and other sections summarizing presentations, views and opinions are
1
attributed to the presenter unless stated otherwise.
49
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50 CORE ELEMENTS OF INTERNATIONAL RESEARCH COLLABORATION
universities can and cannot engage in. This is the case for U.S.-focused col-
laborations as well as for international agreements, and comes after years of
sustained effort to raise awareness.
Mr. Warshawsky attributes some of these problems to the downturn in
the economy, combined with a trend for industry managers with experience
in working with universities to retire and be replaced with managers who are
more comfortable in a commercial procurement context. This is happening
in negotiations with companies that have master agreements or set contract
templates in place with Northwestern.
It is important to remember that the university’s core mission is to
educate, both through classroom teaching and through the publication of
research. Working with industry and with international partners is worth-
while if it advances this mission. Potential partners, and even faculty and
departments heads eager to secure funding, may lose sight of this.
One issue that has caused difficulties lately is background intellectual
property (BIP). BIP is a term used to define IP that exists before the devel-
opment of an invention. In one recent negotiation, an international col-
laborator wanted assurances regarding BIP. The university has no capacity
to check BIP at the time of an agreement or to provide such assurances.
The most that happens is the faculty member provides a list of publications.
The larger issue is that the university is performing research, not selling
IP. The research does not come with any warranty that the result can be
commercialized. Of course, the university wants to provide sponsors with
opportunities to license the outputs, but cannot guarantee that there will
be no bumps in the road due to background IP.
The role of the central administration is to balance the various interests
at stake, to protect the integrity of the institution and the faculty, and to
ensure that the university can comply with the agreements that it signs. In
a recent case, an international collaborator from the Middle East was inter-
ested in supporting the development of course software. Mr. Warshawsky
had to point out to a faculty member that if the sponsor was given the broad
rights that it asked for, future research in that area might infringe on the
copyright, raising the danger that the faculty member could be shut out of
working in this area again.
In another case, a U.S. corporation refused to sign a letter of support
for a faculty member seeking an NSF early career award until the university
agreed to IP terms. As part of a much larger project, the faculty member
and a student would be going into the company to study workflow issues,
without receiving any IP or confidential disclosures from the company, with
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INTELLECTUAL PROPERTY
just a small amount of funding in return. The company wanted a piece of
any IP that might be generated by the much larger project. The longstand-
ing master agreement with the company covered IP from work funded
exclusively by the company. The faculty member was caught in the middle.
The issue was ultimately resolved, but with some acrimony along the way.
In yet another case, a major corporation with an international focus
was seeking to support research by a young faculty member, with most of
the support funding a student. The research was very early stage, but the
company retained outside patent counsel to aggressively pursue rights to
BIP. This made no sense. Northwestern looked at its own portfolio, and
suspects that the company might have been seeking to snag non-exclusive
rights to an obscure patent going back ten years arising from the work of
a faculty member no longer at the institution. The company could have
simply licensed the technology.
In the current difficult environment, are there best practices to keep in
mind? Mr. Warshawsky suggests that universities avoid artificial deadlines
when dealing with companies. Universities should also be wary of master
terms that could go beyond the contract that is being negotiated. Univer-
sities should understand the possible impact of agreements on unrelated
research and unrelated researchers. In a perfect world, every contract will
reflect the statement of work behind it.
7.2 INTERNATIONAL COOPERATION IN IP ISSUES
Brian Fitzgerald, Professor in the Faculty of Law at Queensland
University of Technology in Brisbane, Australia, discussed several issues
related to international collaboration in IP. He began by covering several
trends in collaboration between national patent offices.
He reminded the audience that it is important to remember that
patents are granted by national patent offices. There is no such thing as an
“international patent.” Over time several major agreements have established
a framework aimed at facilitating the ability of inventors to apply for patents
in multiple jurisdictions while reducing the amount of redundant work on
the part of applicants and patent offices. For example, the Paris Convention
of 1883 grants an inventor the priority date established in their original ap-
plication for applications made within a year in other convention-member
jurisdictions. The Patent Cooperation Treaty of 1970 established an inter-
national application, allowing an inventor to do an international search to
discover the jurisdictions in which it would be advantageous to file while
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52 CORE ELEMENTS OF INTERNATIONAL RESEARCH COLLABORATION
keeping the priority date from the original application for 30 months. Most
jurisdictions publish applications 18 months after filing. The European
Patent Office was established in 1973, and allows inventors to file in one
place for patents in all EU countries. When granted, the patents would take
effect as national patents.
Despite this progress, there are still barriers to international patenting.
For example, there are millions of applications in a backlog awaiting assess-
ment. There is still considerable duplication of effort across national offices
in the application, examination, and grant processes. And patent laws are
not harmonized.
Professor Fitzgerald reviewed several initiatives ongoing to address these
barriers. One that has become prominent recently is the patent prosecu-
tion highway (PPH) concept. A PPH is a bilateral agreement between two
national offices that allows an applicant to request accelerated consideration
of an application from one office if at least one of its claims has been found
to be patentable by the other. The “big three” largest patent offices (United
States, Europe and Japan) are involved in this process, with Japan providing
much of the impetus.
Another initiative is the Vancouver Group Mutual Exploitation
Principles. This is a recent agreement between Canada, Australia, and
the United Kingdom aimed at eliminating duplication of effort. This is
achieved by the Vancouver Group countries agreeing to rely on each others’
examination reports where possible.
Another area of effort is substantive and procedural reform. The Direc-
tor General of the World Intellectual Property Organization (WIPO) has
identified several priority areas, including adoption of a uniform patent
classification model, particularly among the “big three” (Quinn, 2010).
This sort of harmonization would facilitate the work-sharing arrangements
discussed above.
In addition to efforts at expanding collaboration between national patent
offices, there is the potential for expanded engagement between patent offices
and the community. One obvious trend is the emergence of patent infor-
matics and the ability to source technological information from patent data-
bases. This is not especially relevant to this discussion but is important in the
broad IP scene.
A second trend is Peer-to-Patent, which is basically crowd sourcing
prior art (information relevant to the patent’s claim of novelty and inven-
tiveness). The idea is that the knowledge of citizen experts could be har-
nessed through technology to help examiners determine whether a patent
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INTELLECTUAL PROPERTY
should be granted over an invention. Several pilot projects to test the
concept have been run in the United States, and others have been launched
in Australia, Japan, and Korea as well. In the U.S. pilots, there were over
one thousand registered peer reviewers and 197 patent applications. The
applicant could voluntarily make their application available for peer review.
About 10 percent of the claims were affected by the prior art forwarded by
the peer reviewers.
According to Professor Fitzgerald, potential benefits to the public of
peer-to-patent include improved patent quality and a clearer patent land-
scape. Applicants would benefit from the resulting patent being more robust
and less likely to be disputed or litigated. The identification of weak claims
early in the process also allows the inventor to save resources that might
have been used to pursue an application that would ultimately be rejected.
7.3 SAMPLE PERSPECTIVES FROM THE
BREAKOUT SESSION ON INTELLECTUAL PROPERTY2
The group began by reviewing the plenary session presentations and
identifying those that were particularly relevant to intellectual property
issues. Important aspects of the current context for research include stresses
on the global and U.S. economies, and impacts on universities and industry.
Individual participants made a number of points during the discussion.
This is a non-exhaustive list, and is not intended to represent consensus
views of the workshop or the breakout session:
· Intellectual Property (IP) Metrics. IP metrics were not a part of
the American Reinvestment and Recovery Act (ARRA). They are
part of the STAR Metrics program (Science and Technology for
America’s Reinvestment: Measuring the Effect of Research on Inno-
vation, Competitiveness and Science), a U.S. multi-agency effort
launched in 2010.
· IP-Related Barriers to Collaboration, Tensions and Pressure
Points. The continued slowdown in the global and U.S. economies
can create friction. Cross-cultural misunderstandings can raise
barriers. Understanding of patent models in various countries is
While unable to attend the workshop, Dr. Ma Jun, Director, Overseas R&D Manage-
2
ment Office, Tsinghua University, Beijing, China, provided written responses to the breakout
session questions.
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54 CORE ELEMENTS OF INTERNATIONAL RESEARCH COLLABORATION
often limited. There are differences of efficiency between national
patent offices. University administrative structures are under stress.
Differences in technology (all technologies have unique quirks to
them that impact IP) and asymmetries in IP negotiating strength
(one party generally has more power than the other) can also cause
problems.
· Possible Solutions and Workarounds. Trust and personal relation-
ships appear to be keys to success. Partnership strategies are devel-
oped over time, although one-time, ad hoc relationships are still
common. Agreeing on a common language or terminology can
help ensure success. The Patent Protection Highway discussed by
Brian Fitzgerald and other non-U.S. strategies appears to be worth
exploring. Professional development is critical to building inter-
national collaboration—this can be accomplished through more
intensive faculty/staff communication, exchanges, conferences, and
workshops.
· Opportunities for IP to Facilitate International Collaborations.
International exploration of methods of managing IP, such as the
iBridge Network developed by the Kaufmann Foundation, could
be helpful. Understanding the nuances in IP negotiations, such as
differences in perspective between public universities and private,
large and small entities, and so forth, can help ensure success. There
might be a role for technology specialists, that is, consultants to serve
as intermediaries between inventors and companies.
· Key Short- and Long-Term Issues for IP and International Re-
search Collaborations. Short-term issues include improving the
compatibility, efficiency, and quality of output (patents) in various
national systems. Harmonization is a highly desired long term goal.
The status of the global economy is an uncertainty that has short-
term and long-term impacts. Issues related to students and export
controls, and the implications for IP are issues for the future.
· Possible U.S. Government Actions. Ideas include building a U.S.
Innovation Strategic Policy, convening an IP forum similar to the
Federal Demonstration Partnership (FDP), and steps to facilitate
commercialization of government-created IP.
· Possible Actions by U.S. Educational Institutions. Improving pri-
mary and secondary schools and providing role models, such as pro-
fessionals in the science, technology, engineering, and mathematics
(STEM) disciplines, could be helpful. Expanding undergraduate
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INTELLECTUAL PROPERTY
study abroad opportunities for U.S. students as suggested by Kathie
Olsen in her keynote talk might also be worthwhile. Establishing
some level of “innovation literacy,” and understanding that inno-
vation literacy includes technical and non-technical elements, are
other goals to consider.
· Possible Industry Actions. Companies could benefit by becoming
more “university literate,” i.e., understanding better the operating
context of universities. Companies also could better define what is
“precompetitive” for IP purposes; this will allow for better opportu-
nities to collaborate early in the research process.
· Possible Actions by Government, Universities, and Industry
Together. Better understanding among the three sectors could be
helpful. This includes a shared understanding that IP is part of the
commercialization pipeline and is a means, not an end.
REFERENCE
Gene Quinn. 2010. An Exclusive Interview with Francis Gurry, WIPO Director General. IP
Watchdog. May 4. Available at: http://ipwatchdog.com/2010/05/04/interview-francis-
gurry-wipo/id=10393/
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