IP management is of strategic importance for universities since they can derive significant benefits from an effectively-managed IP portfolio.  According to a survey published by the Association of University Technology Managers (AUTM), the fiscal year 2002 saw over US$37 billion in sponsored research expenditures at 212 member institutions responding to the survey.  During the same period, over 3,600 US patents were issued bringing in US$1.267 billion in licensing revenue and 450 new companies were formed to develop and commercialise some of these inventions.

I just published an article entitled "Building and managing university patent portfolios," IP Value 2005: Building and Enforcing Intellectual Property Value. An international guide for the boardroom, Ed. Joff Wild, published by Globe White Page Ltd. (London, UK);  www.buildingipvalue.com.

I point out that the great potential for universities to generate revenue from IP is less likely to be realized unless universities adopt an aggressive stance towards exploitation.

My recommendations include:

1.  Develop university seed funds to perform the applied research necessary to bridge the gap for high potential, embryonic technologies.

2.  Encourage faculty start-ups to take research outputs closer to market, thereby reducing the risk attached to its exploitation.

3.  Manage IP costs by developing an IP management plan that includes an explicit review process for all inventions, under which technical and business managers, along with outside patent counsel, periodically evaluate each invention to determine if patent protection is cost-effective.

4.  Manage IP donations by requiring, if applicable, the financial resources necessary to maintain the patent(s) for a period of at least two years following the donation as well as financial support for further research and development of the donated IP.

5.  Watch your own IP use since the recent case Madey v Duke University, 307 R 3d 1351 (Fed Cir 2002), has set off a debate about research at federally-funded universities and their right to conduct research without the worry of infringing the IP rights of others.

6.  Continually evaluate performance to demonstrate to external organizations that the university is capable of managing IP effectively and to assist university managers to identify problems and opportunities relating to IP management.

You can see the entire article here.  If you need assistance with University licensing, you can contact me at salbainyjenei@fbtlaw.com.

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