Prof. Anil B.

Suraj April 2011

Session Objectives

To understand the ³intangibility´ of IPRs To appreciate the value of protected IP in gaining competitive advantage To gain an overview of the legal bases for an effective process of technology transfer



IPRs ² General Bases

Economic (and technological) rationale ± aids overall development Social benefits ± enriches the Public Domain and Basic Research Legal monopoly ± towards fair regulation within the territory



The ´Intangiblesµ
€ € € € € € €

Goodwill, reputation and Consumer perception Brand value and intuitive know-how Scientific, industrial and literary acclaim Stronger balance sheets ± short and long-term Advertising reach and media coverage Traditional usage and ³prominence´ enjoyed Each form of IPR leads into the other!

Pressures of Enforcement

IPRs and Global recognition
y IPRs are territorial in nature y No single authority or uniform standards y National systems and interests continue to


IPRs = fiercely competitive usage; justifies criminal remedies too ± Copyrights and TMs violations

Intellectual capital & assets
Key Principles: € Aggressive pursuit of IP protection ± internal and external
€ Visibility and full exploitation


Role of Intellectual assets in business alliances and joint ventures
€ Inorganic growth directions € ³Innovation market´ analysis ± concentration

and pulls of Competition law € Research clusters ± high potential + competitive

Intellectual assets «
Key Issues: € Working with the incentive structure ± taxation and attribution issues

Identifying the key geographical areas ± for marketing and registration of IPRs Study the level of innovative behaviour among the competitors; and suppliers


Offshore Collaboration

Typically of three types:
y Captive entity ± wholly owned subsidiary ± IP is

usually fully owned by Parent

y Joint venture ± a new combined company ± IP is

based on the Shareholding Agreement

BOT/BOOT/BOOST Model ± involves transition risks

y Contracting ± with a local entity ± enforcement with

due diligence ± e.g., subsidiary relations




Determining factors = cost, commitment, control, flexibility and liability models

Legalese of Tech Transfer

³Technology´ = wide operational know-how



y Mutuality, Exclusivity, and Adaptability


Mode = licensing based on contracts
y Contract enforcement index y JVs; Tech assistance; Project Management; PPPs


Defined outcomes = products and trade
y Fine balancing strategy required ± between being

restrictive and allowing direct competition

Legal and IP risks
€ €

Sharing regime + sustained ownership Disparities in applicable laws & IP rights
y Concerns of the legal system¶s maturity


Identify, define and processes and products




Due diligence & IP Valuation

Risks «

Enforcement across borders ± relies heavily on the commitment of the local entity involved Employer-employee relations ± towards a framework of trusteeship Data protection and security ± lack of uniform standards across regions and sectors Dispute settlement and arbitral enforcement
y Cross-border Investment related matters




International framework

Investment and unregulated





y Competition Law and its implementation ± major issues y Political interests trump business reasons! y Concerted efforts required ± PPP mode?


UN International Code of Conduct on the Transfer of Technology (drafted in the 1970s)
y Premised on need for equitable grounds between nations

of varying economic strengths


Technology transfer must be facilitated by an international mechanism regulating the dimensions of commercialization and licensed perpetuation

Transfer of Public funded Technology

The Protection and Utilisation of Public Funded Intellectual Property, Bill (2008)
y Instructions

for Technology Transfer and Intellectual Properties ± 1/3rd Royalty sharing


University and Small Business Patent Procedures Act (Bayh-Dole), 1980 ± USA
y Permits

universities, not-for-profits, and small businesses to obtain title to inventions developed with governmental support government-owned, government-operated laboratories to grant exclusive licenses to patents

y Allows

Public funded «

Federal Technology Transfer Act of 1986
y Provides for exchanging GOGO laboratory personnel, services, and

equipment with their research partners

y Makes it possible to grant and waive rights to GOGO laboratory

inventions and intellectual property

y Allows laboratories to make advance agreements with large and small

companies on title and license to inventions resulting from Cooperative R&D Agreements (CRDAs) with government laboratories


The National Technology Transfer and Advancement Act, 1995
y Makes it easier for businesses to obtain exclusive licenses to technology

and inventions that result from cooperative research with the Federal government

y The Act made a direct impact on the development of new industrial and

technology standards by requiring that all Federal agencies use privately developed standards

Emerging issues

Licensing in IPRs
y Emerging trends in global supply chain y Minimum level of ³reasonable control´ ± as

evidenced in Contracts and practices y Raises anti-trust and RTP claims as well

Securitization of IPRs
y Methods of valuation and their accuracy y Procedure of affirming ³secured interest´

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