5.1. Access to Others' Proprietary Science
5.2. Proprietary Science developed by CGIAR Centres
The following outline of a possible organizational plan is intended to demonstrate, as specifically as possible, the personnel resources, expertise and policy guidance needed for an effective intellectual property management programme. The two aspects of such a programme:
1) access to others' proprietary science, and
2) protection of new developments made by the CGIAR Centres,
are considered separately to underscore the differences in the resources required for each activity. However, it is anticipated that any programme developed would begin with a centralized resource centre and would require a local liaison at each Centre.
Clearly, the expense of setting up and running the function will be substantial. To fund this, either additional resources will have to be raised, or resources will have to be diverted from existing projects.
This aspect of the intellectual property management programme could be effectively managed by a centralized, dedicated managerial function. Effective management would require the following:
(i) Input from the centres concerning technologies to which they or their clients need access. The management role would be to research the ownership of the technologies, make contact with the owners, and obtain information regarding the terms under which the technologies would be made available.(ii) Policy guidance regarding what terms would be acceptable to the CGIAR and to each centre. The management role would be to negotiate agreements with the proprietary technology owner(s) which are within the policy guidelines established by the CGIAR.
(iii) Sample or model agreements to use for future negotiations with the same owner for the same or similar technology. The management role would be to maintain a database of all agreements with all centres and to ensure that all centres obtain access to proprietary technologies under similar terms. Some of the agreements previously negotiated by ISAAA might serve as useful models.
(iv) Staffing for the centralized managerial function. This should include a coordinating manager familiar with intellectual property issues and experienced in negotiating license agreements. Support staff will be needed to create and maintain the agreements database.
(v) Legal advice regarding both intellectual property law and contract law in various jurisdictions. This can probably best be done with outside counsel which has established working relationships with a number of international associates. It would be difficult for inside counsel to give advice regarding so many different jurisdictions.
(vi) The co-ordinating manager should report to the highest level.
This aspect of the intellectual property management programme would require both local and centralized management. Effective management would require the following:
(i) Clear direction from the CGIAR concerning the goal(s) of intellectual property protection. From a management viewpoint, it works best to have one clear, overriding goal to guide the decision-making process.(ii) Decision-making guidelines based on the goal(s) established by CGIAR. These guidelines would be used by both local and central management.
(iii) Policies regarding ownership of inventions made by CGIAR/centres employees. These policies would have to operate on a local basis within applicable local contract law.
(iv) Policies regarding invention reporting by CGIAR/centres employees. Again, these policies would have to operate locally, but there should also be a reporting requirement from all of the centres to the centralized managerial function. These policies must be effectively communicated to employees.
(v) Evaluation criteria, established by the CGIAR and based upon the guiding principles, for determining which inventions should be protected. The evaluation procedure should include a review of the technical merit, a protectability review in various jurisdictions, and a determination whether protection will help achieve the mission of the CGIAR. Evaluation committees should employ uniform, consistent standards and should include members with technical expertise as well as legal expertise. Such committees should probably operate on a local level, with guidance from the centralized managerial function.
(vi) Specialized counsel to file applications in various jurisdictions. This can probably best be done with outside counsel which has established working relationships with a number of international associates. However, inside counsel at the central management level would probably be needed to co-ordinate and supervise this activity, and to provide legal advice to the centres on an ad hoc basis.
(vii) "Marketing" staff to publicize the availability of proprietary technologies from the CGIAR. This staff could either be local, centralized or both, and would be responsible for identifying and contacting potential licensees.
(viii) Co-ordinating manager(s) familiar with intellectual property and experienced in license negotiations. Again, these managers could be both local and/or central and would be responsible for negotiating agreements which are within CGIAR policy guidelines. In most universities which have intellectual property management offices, the marketing, negotiations and management functions are combined in one office.
(ix) Support staff to create and maintain inventions and agreements databases. This could be a centralized function. The staff would need some understanding of international intellectual property law.
(x) Support staff to monitor continually license agreements for compliance with terms. This could be a centralized function. The staff would need some understanding of international contract law.
(xi) The co-ordinating manager(s) should report to the highest level.
(xii) Periodic portfolio reviews, both at the local and central levels. Due to the financial costs associated with prosecuting and maintaining intellectual property rights in multiple jurisdictions, periodic portfolio reviews will be needed to keep such costs at a minimum.
