Intellectual property (IP) is the creative process – the design, formula, expression, and name that defines the reputation of a product and its manufacturer – not the product itself. It is a “property interest in intangibles” and includes copyrights, trademarks, patents, and trade secrets. Although there exists a number of international treaties and national laws to protect ownership interests and grant ownership rights, they are often at odds with competition policies. Further, there is an increasing lack of industry understanding about what collaborations universities (and research institutions) can and cannot engage in that jeopardizes a formal agreement’s duty to balance the facilitation research and protection of IP. Better understanding among the education, governmental, and industry sectors of intellectual property as part of the commercialization process and valuable as a means, rather than as an end, is key.
Here are some things to consider when the issue of intellectual property comes up in an international collaborative proposal:
- Avoid non-specific deadlines and terminology when dealing with industry partners – anticipate the possible impact of agreements on unrelated research and unrelated researchers.
- Professional development, trust, and personal relationships are crucial to building international collaboration. Utilize communications, exchanges, conferences, and workshops to foster these with your researchers and within your institution.
- You must have a local IP professional contact in every foreign jurisdiction in which a patent application is filed. Consider these expenses when preparing a project’s budget and protection strategy if there is anticipated IP. Patent filing and professional fees tend to be less in the United States, Canada, and other English-speaking countries, but plan on budgeting between $5,000 and $7,000 per country to file and an additional $1,000 per country annually for upkeep. Do not consider filing if there are not the requisite funds.
- Consider IP management resources, such as those provided by the iBridge Network, developed by the Kaufmann Foundation.
- With few exceptions, a patent offers no legal protection beyond the borders of the issuing country. Obtaining a foreign patent helps to leverage your licensing clout and collect royalties on the overseas activities. Filing abroad can also provide a competitive edge by protecting you from infringers, increasing your licensing payoffs, and getting licenses in the first place (Charmasson and Buchaca, 286).
- The simpler the technology, the easier it is to replicate, and the more foreign protection will be needed. International treaty only protects an (U.S.) application for one to two and a half years (if you didn’t disclose it) before the invention becomes public domain where you did not file (Charmasson and Buchaca, 288). Therefore, make sure to file a foreign patent application from the U.S. filing date.
- U.S. citizens need a license from the U.S. Government before filing a foreign patent application or generally disclosing an invention.
- Consider filing abroad in countries with better potential market capacity than those more manufacturing capacity. Also, consider the more prosperous, over the more populous, and those with better capabilities of patent enforcement (Charmasson and Buchaca, 290).
- The Madrid Protocol is the most convenient and comprehensive system for the international registration and management of trademarks.
- U.S. IP metrics are part of the Science and Technology for America’s Reinvestment: Measuring the Effect of Research on Innovation, Competitiveness and Science (STAR Metrics) program, launched in 2010.
- See U.S. OMB Guidance §200.448 “Intellectual Property” for allowable patent costs under a U.S. Federal award and the extent of patent protection if the research is funded by an international agency or government.
- Recent work has been done to streamline barriers to international patenting, including:
- The European Union, Japan, and the United States are currently involved in creating a patent prosecution highway (PPH) that allows a patent “applicant to request accelerated consideration of an application from one (of the three) offices if at least one of its claims has been found to be patentable” by another (National Academy of Sciences, 67).
- Some regional multinational patent offices include: The Office Africain de la Propriete Industrielle (OAIP), the African Regional Industrial Property Organization (ARIPO), the Eurasian Patent Office (EAPO), and the European Patent Office (EPO).
- The World Intellectual Property Organization (WIPO) administers 26 current treaties concerning intellectual property, including the WIPO Convention and the Patent Cooperation Treaty.
- Refer to this chart here for multilateral IP treaties and member states.
Information above sourced from the 2016 SRA-I annual meeting presentation “Intellectual Property” by Terri J. Minatra, Esq., Patents, Copyrights and Trademarks for Dummies, by Henri Charmasson and John Buchaca, ©2008, and Examining Core Elements of International Research Collaboration: Summary of a Workshop, from the National Academy of Sciences, ©2011. See also, Chapter 6 of Culture Matters: International Research Collaboration in a Changing World, from the National Academy of Sciences, ©2014.