Policies Promoting IP Policies Promoting IP Development in Universities and Development in Universities and Higher Institutions of Learning In Higher Institutions of Learning In

AfricaAfrica

OGADA TomOGADA Tom

WIPO National Workshop on Intellectual Property WIPO National Workshop on Intellectual Property Strategy, Maputo, June 6-9m 2005Strategy, Maputo, June 6-9m 2005

Content of PresentationContent of Presentation

Introduction

Challenges to Universities and R&D Institutions in Africa

Need for IP Policies in Universities

Example of IP Policy -Moi University IP Policy

Moi University Holdings Limited

Conclusion

IntroductionIntroduction

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

IntroductionIntroduction

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

IntroductionIntroduction

Mandate Two

Universities are doing research and development, although NOT comparable with counterparts in Asian Tigers

IntroductionIntroduction

Mandate Three

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

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

Challenges facing African Challenges facing African UniversitiesUniversities

• Inadequate Funding

• Difficulties in Attracting and retaining qualified staff

• Weak Linkages with industries

• Low level of generation, protection and utilisation of IP

• Low level of technology Transfer

Challenges to Universities in AfricaChallenges to Universities in Africa

Experience from Europe, USA, Asia show that these challenges can be addressed

through

Provision of Consultancy Services and Short CoursesGeneration, Protection and Commercialization of IPResearch contracts and sponsored researchStart-up and spin-out companies

Challenges to Universities in AfricaChallenges to Universities in Africa

Effective Transfer of Knowledge from universities to Society requires

Innovative and inventive support structures

Conducive and enabling policies

Most Universities in African Currently doMost Universities in African Currently do

NOT have structures and policies in placeNOT have structures and policies in place

Need for IP PoliciesNeed for IP Policies

• Stakeholders in Commercialized IPUniversitiesInventors

ResearcherStudents and research assistantGuest researchers

Sponsor including industryCollaboratorsGovernment and Public

Need for IP PoliciesNeed for IP Policies

University

• University as a stakeholder since it providesR&D Infrastructure

SalaryGoodwill

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

Need for IP PoliciesNeed for IP Policies

InventorThe Inventor is a major stakeholder

Develops proposals and Sources for R&D fundsUndertakes R&DIntellectual inputs

Inventor requiresAdequate recognition and reward for intellectual input

Need for publication and promotion must be safeguarded

Need for IP PolicyNeed for IP Policy

Sponsors, industries and collaborators

Sponsors, industries and collaborators

Provides R&D funds

Equipment

Research material

Intellectual input

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

Need for IP PoliciesNeed for IP Policies

Government 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

Need for IP PoliciesNeed for IP Policies

Technology Transfer Office

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

TTO ImplementsObligation of UniversityObligations of Inventors

Confidentiality

Need for IP PolicyNeed for IP Policy

Summary

• IP Policy is required – to regulate the conflicting interests of the

various stakeholders– Promote IP development

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 PolicyMoi University IP Policy

Justification

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

Moi University IP PolicyMoi University IP PolicyObjectives

Promote creativity and innovation

Provide guidelines for IP disclosures and protection

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 utilisation

Moi University IP PolicyMoi University IP Policy

Ownership of IP by Moi University

• 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

Moi University IP PolicyMoi University IP Policy

Ownership 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

Moi University IP PolicyMoi University IP Policy

Publications, 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

Moi University IP PolicyMoi University IP Policy

Obligations 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

Moi University IP PolicyMoi University IP Policy

Obligation 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

Moi University IP PolicyMoi University IP Policy

Distributions of net revenue

Inventor

IP Fund

Inventors research

Inventors department and faculty

University wide research fund

Technology Transfer Office

Implementation of Moi University IP Implementation of Moi University IP PolicyPolicy

Technology 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

Implementation of Moi University IP Implementation of Moi University IP PolicyPolicy

Agreements required

Participation Agreement

Material Transfer Agreement

Confidentiality Agreement

Contract Research Agreement

Disclosure Agreement

Consultancy Agreement

Strategies for developing IPStrategies for developing IP

Procure commitment from the Top

Appoint a drafting team- internal, external, a driver

Educate the stakeholders

Discussion of the drafts by various stakeholders

Public launching

Moi University Holdings LtdMoi University Holdings Ltd

Wholly owned by Moi University

Incorporated in 2000

Started operating in 2003

Driving force for IP in Moi University

Mission

Contribute toward national development and wealth creation through marketing of

university expertise, services and products

Moi University Holding LtdMoi University Holding Ltd

Selected achievements to dateMoi University IP PolicyWIPO-University Initiative focal point since 2002Registered 40 staff for WIPO Academy IP distance learning, 8 completedFiled a national and PCT applicationNegotiating licensing of one technology and one plant varietyTrained 45 staff on management of consultancy services 2005, won the first industrial consultancy jobHas developed a strategic plan (2005-2008)

Offer consultancy services in IP

ConclusionConclusion

• In the development and commercial exploitation of IP in Universities, there are several stakeholders

• There is need to have IP policy to manage the conflicting interests of these stakeholders