Transferring Invention Rights

Technology transfer has expanded rapidly over the past 20 years in Western Europe, North America and the Pacific Rim. It has been estimated that some 50% of new products and processes will originate outside the primary developer; academic and other research institutions are obvious sources of much of this new technology. In the NATO Co-operating countries, however, technology transfer is in its infancy; it is crucial for wealth creation and improvement in the quality of life that this mechanism is developed. The papers selected for inclusion in this book discuss issues related to the development of technology transfer in NATO Co-operating countries. The book identifies crucial research issues for science and technology policy researchers and, as a conclusion, offers some policy recommendations. The authors are drawn from NATO and Co-operating partner countries, from other parts of the world, and from international organisations. The focus of the book is on the institutional framework of knowledge and technology transfer; intellectual property rights as sources of information and tools for co-operation; international, national and regional aspects of knowledge and technology dissemination and diffusion; and networking. Audience: Academic institutions, research institutes, intellectual property practitioners, science and technology policy makers, technology transfer managers, high-tech industries.

Transferring Invention Rights: Effective and Enforceable Contracts, a new, comprehensive treatise, provides practical guidance to general contract law specifically geared to intellectual property, licenses, assignments, and other invention-related

Patent protection is an important first step in safeguarding new inventions and technologies prior to further development and commercialization. It can be difficult for the non-expert to judge what is potentially patentable, and to understand the process and timelines of securing protection globally. This book provides guidance to those seeking to improve their understanding of the patent system and work constructively with patent attorneys to optimize a patent portfolio. The book is aimed in particular at patent managers in the technology transfer offices of universities and research institutions, but will be useful also to those in industry IP departments looking for practical advice and instruction on patent issues.

Patent Challenges for Standard-Setting in the Global Economy: Lessons from Information and Communication Technology examines how leading national and multinational standard-setting organizations (SSOs) address patent disclosures, licensing terms, transfers of patent ownership, and other issues that arise in connection with developing technical standards for consumer and other microelectronic products, associated software and components, and communications networks including the Internet. Attempting to balance the interests of patent holders, other participants in standard-setting, standards implementers, and consumers, the report calls on SSOs to develop more explicit policies to avoid patent holdup and royalty-stacking, ensure that licensing commitments carry over to new owners of the patents incorporated in standards, and limit injunctions for infringement of patents with those licensing commitments. The report recommends government measures to increase the transparency of patent ownership and use of standards information to improve patent quality and to reduce conflicts of laws across countries.

This study discusses the opportunities and challenges offered by patents to foster technology transfer from government funded research institutions in developing countries. It presents a review of policy frameworks and recent policy changes aimed to foster academic patenting and technology transfer in low- and middle-income countries. It then analyzes patenting activities by universities and public research organizations and compares these trends with respect to high-income countries. This analysis is complemented with an assessment of the current state of patenting and technology commercialization practices in a selected group of technology transfer offices.

A fundamental change in the way organisations approach innovation is taking place. It is driven by the simple realisation that not all the smart people work for just one organisation. Few intellectual property books concentrate on external innovation and more particularly on dealing with external inventors and handling their inventions. Harvesting External Innovation begins by examining the broad subject of innovation, stressing the need to understand its forms and phases, ways and means to encourage innovation. It then addresses the growing phenomenon of external innovation. A number of different approaches to engaging with the external innovator community are then considered, together with real life case studies. Harvesting External Innovation discusses in depth how best to handle intellectual property matters, how to actually work with these external inventors and how to handle their inventions, including a suggested process and check list.

One of the alleged benefits of the recent global movement to strengthen intellectual property rights (IPRs) is that such reforms accelerate transfers of technology between countries. Branstetter, Fisman, and Foley examine how technology transfer among U.S. multinational firms changes in response to a series of IPR reforms undertaken by 12 countries over the 1982-99 period. Their analysis of detailed firm-level data reveal that royalty payments for intangibles transferred to affiliates increase at the time of reforms, as do affiliate research and development (Ramp;D) expenditures and total levels of foreign patent applications. Increases in royalty payments and Ramp;D expenditures are more than 20 percent larger among affiliates of parent companies that use U.S. patents more extensively prior to reform and therefore are expected to value IPR reform most. This paper - a product of Trade, Development Research Group - is part of a larger effort in the group to understand the global impact of stronger intellectual property rights.