[A2k] IP Watch: UN Body Offers Guidance To Governments On Boosting IP Systems

[Judit Rius Sanjuan]

/http://ip-watch.org/weblog/wp-trackback.php?p=3D706
/

/UN Body Offers Guidance To Governments On Boosting IP Systems/

By William New

The World Intellectual Property Organization may be the biggest United
Nations agency in Geneva working on IP issues, but another body also has
taken up the effort. And in a recent conference held by the UN Economic
Commission for Europe (UNECE), panels of experts informed officials from
economies in transition about technology transfer, small business,
enforcement and the valuation of IP.

The experts spoke at a 25-27 July conference on IP and economies in
transition, sponsored by UNECE, which is working to develop best
practices and policies on IP commercialisation and enforcement.

On technology transfer, according to participants, the goal was seen as
building a healthy relationship between strong public research
organisations and innovative industries. Intellectual property was seen
as a tool for technology transfer, and innovation seen as more complex
than in the past, based more upon partnerships.

It was recognised that talent and markets are found worldwide, that
technology transfer includes licensing and acquisition, spinoff
companies, pre-competitive collaboration on research and development,
and other crossovers, they said. Universities should focus not only on
patents but also copyrights and other IP forms.

Public research organisations were recommended to learn better IP
management, and forge long-term relationships with the private sector
that are prioritised from the leadership down, sources said. Also, it
was suggested that monetary gain should not be the only benefit sought
and should not be pursued by policymakers with the idea that it will cut
public research costs.

It was raised that technology transfer should have two principles:
maximising the benefits of knowledge, and ensuring the use benefits
society, said sources. Governments were encouraged to support research
organisations in partnering with industry, and to become globally
attractive for partners. They also were encouraged to push for more
harmonisation of IP systems.

Nikolaus Thumm, senior economic counsellor at the Swiss Federal
Institute of Intellectual Property, described his country=92s experience
and the results of a survey of small businesses=92 use of IP.

He said IP strategies include protection from competition, safeguarding
future technologies, and providing a basis for alliances, with the
objective of providing freedom to operate, blocking competitors and
creating licensing income. Companies can use patenting strategies to
block competitors by pre-emptively filing related patents, he said. Not
every idea should be moved to the patent stage as this can affect
innovativeness in the market, he said.

Thumm said small and medium-sized enterprises are the =93motor of
innovation=94 in an economy but that =93very few=94 file patent application=
s,
though the number of patent applications per employee is high on
average. Small companies have =93huge innovation potential,=94 he said and
should be encouraged to use IP rights more. The survey showed that most
small businesses believe they have new ideas, but few patent them.
Somewhat more used trademarks. A lack of access to knowledge about
services or high costs were main reasons for this gap, he said. Very
little is known about design protection, he said.

Natalia Zolotykh also described problems in Russia in the use of
intellectual property rights by small businesses, including a drastic
decline, a lack of clarity as to who owns IP, and poor enforcement.

On enforcement, Beat Weibel of ABB, which makes electronic systems like
circuit breakers, said his company files 600 to 700 patent applications
a year and holds 14,500 patents worldwide, but still cannot stop
counterfeiting of its products.

A panel also addressed valuation, auditing and accounting for
intellectual property, presenting key components of this new area.
Several methods for IP valuation were presented, plus mention of the
rise of IP auctions. A primary feature of valuation is determining the
timeline, whether a single point in time or some time in the future,
speakers said. WIPO=92s Christopher Kalanje said other valuation
=93triggers=94 include sale or purchase of IP assets, licensing, mergers an=
d
acquisitions, IP asset donations, litigation, joint ventures or
strategic alliances, and financial reporting.

Renaud Sorieul of the UN Commission for International Trade Law
(UNCITRAL) said the group might develop a joint project based on a joint
colloquium in January 2007 on secure transactions. UNCITRAL is preparing
a legislative guide on secure names hopefully by December, Sorieul said.
The guide is similar to UNCITRAL=92s usual model legislation, but not in
the form of concentrated language ready for adoption into law by
national governments. Rather, it is in the form of policy
recommendations, he said. UNCITRAL has published a paper on its future
work
<http://daccessdds.un.org/doc/UNDOC/GEN/V07/827/54/PDF/V0782754.pdf?OpenEle=
ment>
on security rights in IP.

The objective is to facilitate the obtaining of credit in international
trade, and the guide refers to intellectual property rights, though for
now it would not affect international laws on IP. UNCITRAL is interested
in non-governmental views, he added. UNCITRAL reviewed IP issues at its
annual session
<http://www.uncitral.org/uncitral/en/commission/sessions/40th.html> in
Vienna earlier this month.

Crossing the Valley of Death

Several speakers referred to the difficulty in getting an innovation
from the idea stage to the commercial stage, a gap referred to as the
=93valley of death.=94 Andrew Dearing, secretary general of the European
Industrial Research Management Association, said the valley of death for
a typical breakthrough is =93at least 10 years wide and 20 million euros
deep.=94

Most research output is =93too raw=94 to be used directly, he said, making
it difficult to capture with IP rights. Dearing also said the =93more
contentious=94 and time-consuming negotiation of IP rights in sponsored
research agreements in the United States =93has become a barrier to
industry-university research collaboration.=94

Bill Lindsay of ProTon Europe, a public research group, said that in the
United States, 70 percent of patents are based on inventions make by
public research organisations. But only 3 percent of patent applications
are filed by universities. In Europe, 50 percent of the 36 most
successful European patents filed between 1990 and 2000 came from public
research institutions, he said.

Frank Moeschler of the European Commission=92s research directorate
focussed on the need to improve knowledge transfer. The Commission
adopted on 4 April 2007 a communication with =93policy orientations=94
[COM(2007)182] on =93Improving knowledge transfer between research
institutions and industry across Europe: embracing open innovation.=94 It
was accompanied by a Commission Staff Working Document with guidelines
for universities and other public research organisations [SEC(2007)449].

Moeschler said universities need more autonomy and awareness, and that
governments should =93actively promote and support the pooling of
resources, including patents.=94

There is currently a public consultation until 31 August on the
=93mechanisms to promote knowledge transfer we should be adopting in
Europe,=94 he said. Then the creation of a charter for IP rights
management by universities should follow in early 2008, he said.

/William New may be reached at wnew@ip-watch.ch./

--
Judit Rius Sanjuan
Attorney
judit.rius@keionline.org

Knowledge Ecology International (KEI)
www.keionline.org / www.cptech.org
1621 Connecticut Ave, NW, Suite 500 Washington, DC 20009 USA
Tel.: +1.202.332.2670, Ext 18  Fax: +1.202.332.2673