RESEARCH PRODUCTS AND RESEARCH PRODUCTS AND INTELLECTUAL PROPERTY INTELLECTUAL PROPERTY

RIGHTSRIGHTS

OGADA T. and MBAYAKI A.OGADA T. and MBAYAKI A.

CAMPUS BASED RESEARCH WORKSHOPSCAMPUS BASED RESEARCH WORKSHOPSTOWN CAMPUSTOWN CAMPUS

3 May 20063 May 2006

Contents of PresentationContents of Presentation

Introduction

Research Products and Intellectual Property Rights

Moi University Intellectual Property Policy

Conclusions and the Way Forward

Introduction

Role of Universities

To train and develop manpower

To generate new knowledge through research and development

To contribute to national development through transfer of knowledge to society

Level of Realization of the mandates of the universities in Africa

Mandate One

Universities have been effective in training and producing manpower,

but People are questioning the quality

Due to lack of job opportunities, the relevance of training is being questioned

Mandate Two

Universities in Africa are doing research and development,

There is capacity for S&T in African Universities

BUT– Limited Research funding– Funding is donor driven– Priority areas should be funded by local resources

Mandate Three

Transfer of Knowledge generated to society has remained the weakest point of African Universities

Pursuit for knowledge for the sake of it is a luxury which can not be affordedUniversities must produce return on investment

There is need for paradigm change to put emphasize on knowledge transferred than knowledge generated

RESEARCH PRODUCTS AND INTELLECTUAL PROPOERTY

RIGHTS

Research Products-1Research Products-1

The direct product of research is knowledge. That knowledge can be in the form of

New Technology

New Product

New Process

Improvement in existing product, process or technology

The dissemination of that knowledge through publications is not enough. R&D is only useful if its products can lead to

Economic development IndustrializationJob creationPoverty Reduction

It is only through transfer of knowledge that a university becomes relevant to the society

Research Products-2Research Products-2

Research Products-3Research Products-3

Effective transfer of knowledge can only be realized through knowledge trade or commercialization of research products. Knowledge can only be commercialized if it becomes a property

It must have a Legal Owner It must have a value There must be a market for it

Useful R&D should generate research products which have commercial value and markets

Research Products-4Research Products-4

There are two types of property

Tangible Property – land, building, machinery Intangible Property – knowledge

Old Economy New EconomyTangible property Intangible Property

Research Products belong to a class of intangible property called intellectual property

Commercialisable R&D products are therefore the drivers of modern economy

Research Products-5Research Products-5

Intellectual Property Rights

Copyrights Industrial Property Plant Breeders Rights

Utility Model

Industrial Design

Marks Others Patents

Research Products-6Research Products-6

There are Four Methods through which an Intellectual Property Assets can be commercialized

Licensing Sale Own exploitation – start up companies Joint ventures

Research Products-7Research Products-7

The contribution of a university towards a country’s development can be measured through

The number of intellectual property generated The number of intellectual property Licensed The number of companies created directly based on the product of R&D The number of jobs createdThe Number of consultancy offered

Research Products-8Research Products-8experience from abroadexperience from abroad

Patents Filed in 1997/1998

Japan 357,379USA 198,953Germany 44,438United Kingdom 17,938Kenya 27

Research Products-9Research Products-9experience from abroadexperience from abroad

Industries Created

Chalmers University of Technology has created 240 companies from its products

of R&D during 30 years

Research Products-10Research Products-10experience from abroadexperience from abroad

Technology Transfer

USA Universities

US AUTM reports a total of 3765 license agreements based on technology transfer

Some US $ 1.26 billion earned in 2000

earned by universities

Research Products-11Research Products-11Kenyan Patent Application SituationKenyan Patent Application Situation

Kenyan informal sector is currently leading IP Applications (2004)

SMEs (Jua Kali) 116Industry 45R&D Institutions 14Individual from university 2Secondary School 1University (MU) 1

The culture of innovation has not been developedResearchers in Universities and R & D Institutions innovate daily most of the innovation go unnoticed.

• NEED FOR EFFECTIVE IP POLICIES IN UNIVERSITIES AND R&D

INSTITUTIONS

STAKEHOLDERS IN STAKEHOLDERS IN COMMERCIALISED IP COMMERCIALISED IP

Universities

InventorsResearcher

Students and research assistant

Guest researchers

Sponsor including industry

Collaborators

Government and Public

UNIVERSITY OR R&D INSTITUTIONSUNIVERSITY OR R&D INSTITUTIONS

• University as a stakeholder since it provides

R&D InfrastructureSalaryGoodwill

University has a say on the generation, protection and commercialization of IP generated using university recourses

INVENTORINVENTOR

The InventorDevelops proposals and Sources for R&D fundsUndertakes R&DIntellectual inputs

Inventor requiresAdequate recognition and reward for

intellectual inputNeed for publication and promotion must be

safeguarded

Sponsors, industries and Sponsors, industries and collaboratorscollaborators

Sponsors, industries and collaborators

Provides R&D fundsEquipmentResearch materialIntellectual input

The interests of the sponsors, industries and Collaborators must be taken care of

Government and PublicGovernment and Public

Government and Public are major stakeholders

General source of funding for R&D infrastructure and operation expenses

Invest in universities

Expects returns

Cares that the benefits reaches the widest scope of the society at affordable cost

Technology Transfer OfficeTechnology Transfer Office

• Technology Transfer OfficeCreates IP awarenessManages IP disclosure, filing and protectionMarkets IP and negotiates for licensing

TTO ImplementsObligation of UniversityObligations of Inventors

Confidentiality

SUMMARYSUMMARY

• IP Policy is required

To regulate the conflicting interests of the various stakeholders

Promote IP development

• Issues covered by IP Policy

Issues covered by IP PolicyIssues covered by IP PolicyDisclosure of IPConfidentiality

Material TransferOwnership of IP

Sponsored researchCollaborative research

PublicationsIP Marketing and Licensing

Revenue Distribution

• MOI UNIVERSITY IP POLICY

JUSTIFICATIONJUSTIFICATION

To enhance collaboration with other institutionsTo protect the interest of Moi UniversityTo promote demand driven researchTo enhance technology transferTo generate income for Moi UniversityTo take care of the conflicting interests of the various stakeholders

OBJECTIVESOBJECTIVES

Promote creativity and innovation

Expedites knowledge and technology transfer

Reward staff for inventiveness and protect their interests

Ensure equitable sharing of commercial benefits

Spell out obligations of all stakeholders in IP generation and commercial utilization

ProcessProcessStarted in 2002

A committee MU-KIPI formed

Staff Sensitized

Draft Discussed in Campuses

Draft Discussed in Deans, Senate Council

Council Approval given in August 2004

Document Officially Launched in November 2004

Policy currently being incorporated in MU Act

Ownership of IP by Moi Ownership of IP by Moi UniversityUniversity

Where inventor has used significant university resources

Where inventor is specifically hired or commissioned to do the project

For sponsored project unless otherwise stated in the contract

Ownership of IP by InventorOwnership of IP by Inventor

Where inventor can prove that he did not use university resources

Where the university is not interested to pursue the protection of the invention

Where the university is not interested in commercial exploitation of the invention

Publications, Theses and DissertationPublications, Theses and Dissertation

Faculty, Students and Other employees shall own copyrights for their publications

Publication of students Theses and Dissertations shall only be allowed after screening for IP

Filing application for protection shall be considered for academic promotion

Obligations of the UniversityObligations of the University

Ensure confidentiality with respect to inventor during disclosure

Support commercialization of IP assets and technology transfer

Ensure that the inventor is equitably rewarded for invention

Provide mechanism for dispute resolution

Obligation of the inventorObligation of the inventor

Prompt disclosure of inventions

Assist throughout process of registration and commercialization

Respect commitments made in license, contract and sponsored research

Disclose all potential conflicts of interests

Distributions of net revenueDistributions of net revenue

Inventor

IP Fund

Inventors research

Inventors department and faculty

University wide research fund

Technology Transfer Office

• Implementation of Moi University IP Policy

Technology Transfer OfficeTechnology Transfer Office

Sensitize staff regarding IP

Asses the potential of IP

Evaluate the commercial potential of IP

Obtain appropriate IP protection

Locating commercial partners

Negotiation and licensing

Promoting use of patent documentation

Agreements requiredAgreements required

Participation Agreement

Material Transfer Agreement

Confidentiality Agreement

Contract Research Agreement

Disclosure Agreement

Consultancy Agreement

Challenges of implementing the

IP Policy

Lack of IP Awareness

Lack of Financial Resources

Situation of the IP Office in MUholdings

ChallengesChallenges

Situation in KenyaSituation in Kenya

Institution that have IP Policy• Moi University, ILRI, ICIPE

Institutions with drafts at advanced stage• University of Nairobi, • KEMRIi, • Kenyatta University• KARI and Egerton University

Conclusion and Way ForwardConclusion and Way Forward

Moi University has in place structures and legal instrument to promote commercialization of R&D resultsSchools should take advantage of thisThere is need to change the emphasis to transfer of knowledgeSchools should put aside finances to promote innovation and inventivenessDVC R&E office should set aside funds for the management and commercialisation of R&D