1. Introduction
Well-designed intellectual property rights systems give temporary exclusive rights to inventors and thereby increase their chances to recover the often substantial upfront investments they need to make to generate innovations and to bring them to market. Intellectual property rights systems should also make it possible for innovators to sell, license or give away the rights to their innovations to others, who may be better placed to exploit them.
In the following elaboration we will look license policy of an international organization .
The Center is dedicated to assisting developing countries in combating diseases such as HIV, tuberculosis etc..
2. About the Center
ICGEB is The ICGEB is an international, nonprofit research organization. Established as a special project of UNIDO, it became fully autonomous in 1994 and now counts over 60 Member States.
The International Centre for Genetic Engineering and Biotechnology provides a scientific and educational environment of the highest standard and conducts innovative research in life sciences for the benefit of developing countries. It strengthens the research capability of its Members through training and funding programmes and advisory services and represents a comprehensive approach to promoting biotechnology internationally.
The Centre is dedicated to advanced research and training in molecular biology and biotechnology and holds out the prospect of advancing knowledge and applying the latest techniques in the fields of:
– biomedicine
– crop improvement
– environmental protection/remediation
– biopharmaceuticals and biopesticide production
With Components in Trieste, Italy, New Delhi, India and Cape Town, South Africa, the Centre forms an interactive network with Affiliated Centres in ICGEB Member States. ICGEB is part of the United Nations System.
3. Patent policy
Intellectual property rights in general and patents in particular have played and continueto play an important role in the rise, the development and the application of the modernbiotechnology. More recently it has also been generally accepted that the patent system is wellsuited to be utilized as the primary mechanism for transferring inventions from publicly funded institutions to the private sector. The successful U.S. Federal Technology Transfer legislation adopted in 1986, for instance, is based on this idea. Licensing of patents held on publicly funded research thus enhances wide application of the protected technology in industry andcommerce and at the same time secures additional financial means for the technology-generating institutions.
The effects of patents and other intellectual property rights are limited to the territory of the state(s) for which they are issued, registered or acquired. In countries where no protection is sought or no patents issued, inventions can be freely utilized.
Costs related to acquiring, maintaining, licensing and defending patents and other
intellectual property rights are substantial. Statistics published for U.S. universities, which successfully license their technologies, reveal that in 1992 for example, Stanford University spent 1.8 Mio US $, the Massachusetts Institute of Technology (MIT) 2.88 Mio. US $ and Harvard University 0,91 Mio US $ for the respective legal fees.
ICGEB’s decision whether and where to file patent applications for a specific research result, quite apart from the patentability requirements, shall consider, inter alia the following aspects: The potential general commercial value of the invention at hand; the potential specific commercial value of the invention at hand for all or a Member State and/or any specific developing country not Member.
For inventions, the potential general commercial value of which is affirmed by the
ICGEB Director, patent applications shall be filed in all countries in which the respective inventions could potentially be successfully exploited and where ICGEB could potentially find commercial partners (licensees). ICGEB shall use all possibilities offered by international conventions, such as the Paris Convention for the protection of industrial property, as regards the priority right of 12 months and the PCT, for subsequent international filing and designation of as many PCT contracting states as advisable. All cost saving possibilities shall be used. Also, the time between the priority filing and the final decision on the subsequent designations shall be utilized for further evaluation of the commercial potentials of the invention at stake and for the search for suitable commercial partners.
It is understood that, whenever the ICGEB will acquire intellectual property rights, the
rules of applicable national or regional law and international conventions, as the case may be, will be strictly observed. In particular, the provisions of the Convention on Biological Diversity (CBD) and national and regional laws implementing that Convention, relating, inter alia, to prior informed consent, benefit sharing, transfer of technology, etc., as well as the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure, will be paid full tribute.
4. Ownership of Intellectual Property Rights
Staff Rules and Regulations of ICGEB shall provide that staff members of the Centre have to vest in the Centre all rights including title, copyright and patent rights, in any work performed by them as part of their official duties.
5. Transfer of Technology
The transfer of technologies is one of the most relevant activities of ICGEB. Since 2001, over 70 agreements and collaborations for training, transfer of technologies and patent licensing have been concluded with industrial partners located in Argentina, Brazil, China, Cuba, Egypt, India, Iran, Pakistan, South Africa, Sri Lanka, Syria, Turkey, United Arab Emirates, United States of America, Uruguay and Venezuela. Most of the companies involved in these tech transfers are now producing biosimilars using ICGEB technologies. These products are not only sold on local markets but also successfully compete in the international arena.
The Director, assisted by the Heads of Component and by the Programme and Administrative Co-ordinator, shall in particular, evaluate the protection requirements and the general commercial potential of the notified inventions; decide on the filing of patent applications or starting legal actions against potential infringers, as well as on the concluding of licensing agreements related to patents and other intellectual property rights vested in the Centre.
Costs for protecting, commercializing and defending patent and other intellectual property rights of affirmed general commercial value in which the Centre has vested rights, shall be borne by the regular budget of the Centre. As a rule, and on a yearly basis, they should not exceed 0.5% of the annual budget of the Centre.
The ICGEB will pursue the licensing of technology owned by the Centre by researching the market for the technology, identifying third parties to commercialize it, entering into discussions with potential licensees, developing a business plan, negotiating appropriate licenses or other agreements, monitoring progress, and distributing royalties to the inventors/authors in accordance with the distribution scheme set forth in these Guidelines.
In case of inventions of potential general commercial value, the Director will negotiate with potential partners from developed as well as from developing countries non-exclusive or exclusive licensing agreements, depending on the market conditions and in particular depending on the amount of investments necessary for the successful exploitation of the technology at stake. Although preference shall be given to non-exclusive licenses, exclusive licensing agreements can be justified. Such agreements can relate to the use of patents, certificates for the protection of new varieties of plants, secret know-how (trade secrets), copyrights as well as TRP.
The total or partial recovery of these expenditures through the license agreement will depend on the type of agreement (exclusivity/non exclusivity), the country in which the industrial partner operates (Member State/ non-Member State) and the economic situation of the latter (developing/industrialized country).
- Royalty Distribution
• 1/3 to the inventor(s), with a ceiling of US$ 200,000 per year and 5% of any sum in excess to that ceiling;
• 1/3 to the research budget of the Group in which the inventor(s) operate(s), with a ceiling of US$ 200,000 per year and 5% of any sum in excess to that ceiling;
• 1/3 to the ICGEB General Fund, plus 90% of the sums in excess of the ceilings of US$ 200,000 described above.
6. Conclusion
From analyzes of the Center for Genetic Engineering and Biotechnology, the policy on intellectual properties and licensing its got to the conclusion that it is one of the main activities of the center.
It should be borne in mind that this is a research institution and its normal close relationship with the intellectual properties, because the creation of new inteltualni good is its main goal.
For successful implementation and commercialization of intellectual goods center uses the methods of technology transfer and licensing. It notes that there MCGIB high licensing activity for the last 10 years has concluded over 70 license agreements.
7. Bibliography
- Official website of ICGEB., http://www.icgeb.org/home.html
- Patent policy of ICGEB., http://www.icgeb.org/tl_files/hq/pdf/PolicyGuidelines.pdf
Autor: Christina Traychevska
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