Expert Group Report Management of Intellectual Property in ... - KoWi

issue raises a whole range of financial management issues, which fall outside the scope of this report.].
In the meantime, it is recognised by the Group that it is in the interests of all the stakeholders to ensure
that PROs can retain and motivate good scientists while competition between PROs should remain
based primarily on quality of the science, not on prices.
Application of Revenues
First of all, it should be made very clear that the revenues from technology transfer are not used to
fund the PRO as a substitute for government support. Even for the most successful US PROs, the
license income is less than 10% of the public funding applied to research. For most PROs, it does not
even cover the cost of managing the intellectual property and organising the technology transfer
function.
In keeping with the above-mentioned objectives, any license income should serve several important
purposes:
• To motivate and reward the scientists having contributed most to the success of the
research;
• To provide to the research unit at the PRO with “unfettered” money which can be used to
pursue new ideas without going to the cumbersome and speculative process of tendering
for research grants;
• To encourage development of the IPR management function in order to optimise research
returns to the public.
Pragmatism is the key to a successful licensing strategy. Requests for royalties or success fees must
remain sufficiently low not to deter corporate partners from collaborating with PROs. As pointed out
by some experienced technology transfer officers, this is a numbers game. It is better to conclude
much collaboration with industry at low profit sharing than a few collaborations with higher profit
sharing. The reverse is true as well. There is no point in a corporate partner bargaining down to a
ridiculously low profit sharing if the quality of the science and the motivation of the scientists are
affected.
Dispute Resolution and Enforcement
Since it is impossible to predict and cover everything in a contract, it is important that PROs consider
how they will wish to resolve potential disputes that may arise. While it is always possible to resort to
litigation in the courts, this is not always a satisfactory venue, given the complex issues that surround
IPR and technology transfer and the publicity of the proceedings. Attention is drawn therefore to the
World Intellectual Property Organisation (WIPO) 24 , as an example of an alternative forum where
alternative dispute resolution approaches such as mediation and arbitration may have been provided
for in a contract.
General Contractual Issues
There are several other matters which the parties ought to ensure are discussed and agreed upon prior
to commencing a relationship. An indicative list of these topics is set out below. However, there are
many useful publications that describe in more detail the various options and implications open to the
parties. Diligent performance obligations of both sides; Acceptability of reasonable financial aspects;
Stability of research relationship; Conflicts of interest; confidentiality and right to publish; Governing
law; Dispute resolution; Language.
24 http://www.wipo.org
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