FAQs: Technology transfer and intellectual property

Academic knowledge and innovative technologies are transferred and used for scientific, technical, socio-economic and commercial purposes through a variety of channels, including:

• publications (technical journals, scientific magazines, etc.);
• presentations and personal contacts (conferences, courses, professional organizations, etc.);
• patent documents;
• contract research, sponsored research and R&D collaborations with firms;
• institution-industry staff exchange;
• postgraduate projects;
• students entering the workforce;
• consultancy work by university staff;
• assignment and licensing of technology; and
• spin-offs and start-ups.

Spurring the flow of ideas and inventions from university/PRI laboratories to the marketplace aims to benefit society through new products, processes, jobs and ideas.

In order to maximize the socio-economic impact of publicly-funded research results, universities and research institutions need to ensure that they are disseminated effectively. That means considering all types of diffusion and transfer mechanisms (e.g. open access publication, licensing, spin-offs, start-ups and collaboration in R&D) and all possible commercialization partners (such as spin-offs, existing companies, investors, SMEs, other non-profit organizations, innovation support agencies, even governments), and selecting the most appropriate ones.

Sometimes, knowledge is best disseminated through its publication and release into the public domain. But in many cases the most effective way of realizing the social benefits of research-based knowledge is to protect it under IP laws and sell or transfer it to a company capable of transforming inventions into new products.

When managed strategically, transfer of research results can lead to benefits for society at large as well as the industry sector and institutions concerned.

Benefits of technology transfer for society

Transfer of academic research is expected to improve the quality of life generally through:

• new products and services, meeting human needs in healthcare, environmental challenges and other critical areas; and
• new businesses (start-ups, spin-offs) and jobs.

Benefits of technology transfer for industry

Collaboration with universities and research institutions can strengthen industry by:

• providing companies with IP that they can invest in to develop early-stage technologies;
• providing technical assistance to local firms;
• giving companies the opportunity to work with top university researchers;
• securing companies’ access to more basic (“blue-sky”) research fields;
• enabling them to commercialize new products, generating growth and profit; and
• strengthening the local economy – increasingly, communities around research institutions are becoming high-tech innovation clusters, attracting a highly educated labor force and building a strong innovation sector.

Benefits of technology transfer for institutions

For universities and research institutions, the ultimate benefits of knowledge/technology transfer are usually not financial. While licensing revenue is occasionally generated, the principal benefits are indirect and should be considered in the longer term. They include, among others:

• Attracting key talent – Universities that embrace a robust technology transfer environment are more appealing to entrepreneurial faculty, scientists and students who see the institution as a successful pathway for both career development and bringing innovation to market.
• Funding – Successful technology transfer often attracts additional research funding.
• Prestige – Institutions that succeed in moving discoveries from the lab to the marketplace often create a prestigious following.
• Enhanced quality of research programs – Interaction with the private sector often results in access to state-of-the-art industrial equipment, improved skills and techniques and better understanding of market needs.
• Enhanced teaching – Institutions frequently benefit from the participation of industry-based lecturers and real case studies.
• Faculty career opportunities – Collaboration with industry can facilitate exchanges of staff between the institution and businesses and alumni intake in firms.

Want to learn more? Consult Technology Transfer, Intellectual Property and Effective University-Industry Partnerships.

IP plays an essential role in both the research and teaching functions of universities and research institutions. This includes IP created by universities and research institutions, but also third-party IP that they use in their work.

IP and research

Whether it is basic (“blue-sky”) or applied research, through their R&D activities, universities and research institutions produce results in the form of inventions, scholarly publications, databases, new plant varieties, confidential information, computer programs, etc. Many of these are protectable by IP, yet many are also no more than proofs of concept or laboratory-scale prototypes which require further R&D before they can be commercialized. By granting universities and research institutions the rights to their own IP derived from publicly-financed research, and allowing them to commercialize their results, governments around the world are trying to accelerate the transformation of inventions into industrial processes and products, and to strengthen collaborative ties between universities and industry.

IP and teaching

In addition, a university’s or research institutions’ teaching activities will also generate IP, such as print publications, theses, software, films, sound recordings, computer presentations and multimedia works. These are generally protected by copyright. The Internet and modern technologies have fostered greater access to scholarly materials, but also prompted greater conflicts over their ownership and use. So universities and research institutions need suitable IP policies to deal with the ownership and management of teaching materials, access to scholarly information and use of third-party materials.

Universities and research institutions serve the public interest by disseminating knowledge through both research and teaching. Traditionally, many have done this by building close links with local industry and businesses as well as publishing the results of their research. But the era of globalization and the Internet has opened up new possibilities. While open access publication may be appropriate for some research outputs, others should be kept confidential temporarily so that they can be patented and developed commercially. To manage their IP and disseminate their knowledge effectively, universities and research institutions need to understand how to use the IP system.

It should include the following:

Rules for the management of IP resulting from research

• ownership of IP and research results;
• the person or department responsible for the protection and management of IP;
• responsibilities of the institution, staff and students;
• rules of engagement with third parties;
• management of conflicts of interest;
• incentives to reward researchers for their engagement with technology transfer and commercialization;
• distribution of benefits.

Rules for dissemination of knowledge and transfer of IP

• publication/dissemination policy;
• commercialization options and responsibilities;
• rules regarding collaborative and contract research;
• protection of national or public interests.

Want to learn more? Download our detailed description of the typical content of an institutional IP policy .

University and research institution staff are expected to devote most of their time and intellectual energy to the education, research and other programs supporting the institution’s mission.

A conflict of commitment arises when an individual engages in an outside activity, either paid or unpaid, that may adversely affect their commitment to the university/PRI. Undertaking outside activities alongside responsibilities toward the university/PRI can lead to conflicts regarding allocation of time and energy, especially if such activities may result in new IP – as with, for example, consulting, government service, public service, or pro bono work.

A conflict of interest is a situation in which an individual’s financial, professional or other personal considerations may affect his or her professional judgment in exercising any university/PRI duty. Questionable circumstances that can arise relating to research and IP include, for example:

• if an institution’s employee personally invests in a business venture created from the institution’s IP when they were involved as a researcher or supervisor/manager;
• if a staff member who is a founder of a company personally negotiates the licensing terms with the university/PRI;
• if a staff member who holds a board position at a company decides on issues involving licensing terms with the university/IPR;
• if a staff member who also consults for another company needs to decide whether to assign his or her inventions to the university/PRI or to the company for whom he or she consults;
• if a staff member accepts research sponsorship from a company in which he or she has a financial interest; the conflict arises because the outcome of the research could materially affect the personal wealth of the researcher

A conflict of interest/commitment policy:

• can be either separate from or integrated within the general IP policy;
• educates faculty and staff about situations that generate conflicts of interest and conflicts of commitment;
• provides disclosure procedures and means of managing these conflicts; and
• identifies situations that are prohibited.

To ensure that knowledge transfer takes place effectively, universities and research institutions need to develop and apply a high-quality institutional IP policy. But that is not enough: successful transfer and diffusion of technology is driven by many other factors, several of which are not directly related to IP.

At the national level:

• An efficient and balanced IP system.
• Clear rules over the ownership of IP rights developed within public universities or funded with public resources.
• Financial support at various levels.
  • Research funding
  • Programs to fund the establishment of Technology Management Offices (TMOs)
  • Seed funding
  • Tax incentives to pursue R&D in priority areas, such as fostering a particular manufacturing sector or export industry, or contributing to the achievement of development objectives.
• Skilled human resources.
• Policies encouraging institutional entrepreneurship.
• Supporting mechanisms fostering relationships between local businesses and technology creators, such as science parks and incubators.
• Incentives provided by government to improve access to technology in sectors such as health, education and public infrastructure.
• A supportive regulatory environment.

At the institutional level:

• Autonomy of the institutions.
• Active involvement of top management.
• Qualitative research.
• Awareness and skills of staff and students regarding IP, knowledge transfer and entrepreneurship.
• Responsibility for the administration of IP.
• The establishment of a TMO with adequate human and financial resources.
• Proximity of the TMO to researchers and faculty.
• Respect for intellectual labor and creativity.
• Incentives for inventors and creators.
• A team effort on the part of the creator of the IP, the staff of the TMO, the administrative staff of the creator’s department, and others involved in the creator’s research enterprise.
• The willingness of the creator to assist in protecting and marketing the IP.
• Commitment to social responsibility (e.g., voluntary licensing, education and training).
• Access to patent information and software with analytical capabilities.

At the market level:

• Sufficient firms that are able to invest the money, time, and effort to turn the IP into marketable products.
• A market that is ready to buy the product once it has been fully developed and is ready for sale.
• Absorption capacity to assimilate new knowledge and apply it to commercial ends.

For more information, see Developing Frameworks to Facilitate University-Industry Technology Transfer – A Checklist of Possible Actions and Commercialization of IP and Technology Transfer by Universities, Research Organizations, Business, Industry, SMEs and Individuals (pp. 37-48) .

Governments can encourage universities and research institutions to develop research results and transfer them to market by granting institutions title to IP. But that is not enough. To ensure that researchers become inventors, the researchers must have incentives too. Both institutions and individual researchers should be incentivized to disclose, protect and exploit their inventions. Incentives can include “sticks” such as legal or administrative requirements for researchers to disclose inventions to the university or research institution that employs them, but also “carrots” such as royalty-sharing agreements or equity participation in academic start-ups. Recognition of patent activity in the evaluation and recruitment of faculty can also provide incentives for young researchers.

The collection, use and subsequent transfer of biological materials, including genetic resources (GRs) and associated traditional knowledge (TK) is often a critical part of universities’ activities in many disciplines, for example the life sciences, agronomy, anthropology, pharmacology, taxonomy, marine sciences and biology. In both developed and developing countries there is growing attention to biocultural sensitivities, food security-related issues and various requirements on access to germplasm, including the access and benefit-sharing (ABS) requirements under the UN Convention on Biological Diversity and its complementary instruments.

Universities’ can play a crucial role as “intermediaries” in the transfer of information, knowledge and intermediate research products, including biological materials (e.g. advanced breeding lines, isolated microorganisms, etc.), to the private sector and other research partners. That being so, there is a great need to raise awareness of, and promote respect for, applicable legal requirements, including customary laws, regarding the use of GRs and associated TK. This need is accentuated when R&D occurs in the context of transnational research projects or larger consortia, where researcher partners in other jurisdictions could also access research materials and results, and could take important decisions regarding the protection of the resulting IP. It is therefore important to consult national IP laws in respect of disclosure of TK or GRs, benefit-sharing arrangements and consent from TK/GR owners.

Universities should undertake sound due diligence in relation to the initial collection, use and possible transfer of GRs and associated TK. This should enable and support – or at least not preempt – the possibility of providing defensive as well as positive protection of GRs and associated TK, in accordance with the applicable national legislation of the provider country. Due diligence will also help universities ensure future investment in the development of their IP assets throughout a chain that goes from fundamental or basic research up to the possible delivery of new and useful technologies.

Countries are negotiating possible new legal instruments on the interface between IP, GRs and TK. These negotiations, being conducted within the WIPO Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC), might also eventually have a bearing on how universities collect, use, conduct research on and manage IP rights in relation to TK and GRs.

Find out more about WIPO’s activities regarding IP, GRs and TK.

In order to be patentable, an invention must, among other things, be novel. If a researcher or student publicly discloses information about his/her invention before filing a patent application, such disclosure could have the effect of barring the invention from being patented. This is because many countries adopt the so-called universal novelty requirement, which means that information that is published or otherwise made available to the public in any country of the world before the patent application is filed may destroy the novelty of the invention.

For example, the following disclosures of the key features of the invention prior to filing a patent application may prevent you from obtaining a patent:

• disclosure at an international exhibition;
• disclosure in a journal, book, poster or other publication;
• disclosure via a website or other electronic means;
• disclosure through oral presentation; and
• disclosure to someone (for example, a potential investor) who is not under an obligation to keep the information confidential.

For more details, go to Patents.

However, many countries allow for a grace period – usually between 6 and 12 months – which provides a safeguard for applicants who have disclosed their inventions before filing a patent application. In such countries, if the inventor or his/her successor in title publicly discloses his/her invention but then files a patent application claiming that invention within the grace period, such public disclosure will not affect the determination of novelty of the claimed invention. There are different ways of disclosing an invention, as indicated above, and the types of disclosure covered by the grace period differ from one country to another: in some countries, only very limited types of disclosure can be safeguarded.

In general, non-confidential disclosure of an invention before filing of the relevant patent application should be avoided. If disclosing the invention before filing a patent application is unavoidable – for example, to a potential investor or a business partner – then any disclosure should be accompanied by a confidentiality or non-disclosure agreement. If an inventor wishes to publish her/his research results, it is advisable to delay the publication until patent applications are filed.

Universities and PRIs should ensure that all stakeholders concerned, whether employees, visiting researchers, outside collaborators or students, are aware of the confidentiality issues related to their activities, along with the opportunities arising from their own and the institution’s IP. An IP policy should provide clear rules for them regarding disclosure and confidentiality, as well as model non-disclosure agreements.

University and Public Research Institution (PRI) employees, students, visiting researchers and outside collaborators all create IP in the performance of their research or teaching duties. This IP may take the form of confidential technical information protected by trade secrets, patentable inventions, designs, software programs, original written works, diagrams, lectures and presentations and it can be the output of many other types of creative endeavors. Find out more about the role of IP in universities and public research institutions.

Who owns the rights to these works and results? The answer is not always easy or clear; it may vary from one country to another, from one institution to another, and within a given institution depending on:

• the type of creator/inventor (employee, student, visiting researcher, outside collaborator);
• the nature of the work (invention, copyright work, confidential technical data, design, etc.);
• the creator/inventor’s use of resources or funds of the institution and/or sponsors; and
• the circumstances of creation (whether work is created by an individual or as part of a collaborative effort).

In order to determine the ownership of particular research outcomes and teaching materials, one needs to look at (1) the applicable national IP law, (2) the IP policies of the university/PRI and (3) the individual contractual agreements among the university/PRI, creators and sponsors.

In the first instance, the issue of ownership is defined in the applicable national IP law. Countries take different approaches in legislating on this matter: there may be relevant provisions in patent/copyright laws, employment laws, laws on employees’ inventions (which contain chapters relating to inventions made by university/PRI staff) and/or laws dealing with university IP and technology transfer.

While there are important differences among national laws and also among the IP policies of different universities/PRIs, in many countries IP rights vest in the creator/inventor except:

• where IP was created/invented by an employee: in the course of his or her employment and was a result of tasks that he or she was assigned;
• where there is an express contractual agreement: (parties may agree as to who owns the IP, subject to applicable national law);
• where IP emanates from research funded by the government (the national laws of some countries establish special rules on ownership of publicly funded IP, as a balance between private interests and the broader public interest must be reached).

For more information about IP laws in different countries, visit the WIPO Lex database, and for an overview of some possible issues relating to IP ownership, see the WIPO Magazine article “IP Ownership: Avoiding Disputes”.

Countries have adopted different approaches to whether the employee (researcher, professor, etc.), the employer (university/PRI), the state or the sponsoring agency will be considered the owner of innovations, inventions and other research results developed within universities or PRIs using public funds.

There are two typical approaches.

Professor’s privilege:

University professors and researchers have full rights to the IP they created. This allows them, and not the institution, to decide whether or not to patent and how to further develop their discoveries, even if the underlying research was supported by public funds. Usually the university has some form of license to use the IP. In some cases, if the institution provides substantial support to the inventor for technology transfer, the benefits may be shared with the institution. Examples of professor’s privilege countries include Italy and Sweden.

Institutional ownership:

The IP rights or results of publicly-funded research are owned by the institution where the researcher works and not by the researcher (although there are often exceptions, for example, for inventions made by researchers in their own time using their own equipment, or for inventions developed within the framework of a collaborative or sponsored research agreement). The institution is usually given responsibility for the protection and further development of the inventions. In recent years there has been a clear trend toward institutional ownership. Countries that currently apply this principle include Brazil, China, Denmark, Germany, Japan, Kenya, Norway, Singapore, Spain, Thailand, the United Kingdom and the United States of America, among others. There are two primary systems of institutional ownership:

Pre-emption rights: The first owner is the employee/researcher, but the institution is entitled to claim the invention, most usually within a specified period of time. This is the system, for example, in Austria and the Czech Republic. In most of these pre-emption rights systems, the institution must pay some form of remuneration to the employee inventor as compensation for transferring the right to patent the invention to the institution. Examples: Hungary and Lithuania.

Automatic ownership: The institution is automatically the first owner of the IP rights. This approach is usually subject to certain conditions and rights of inventors, for example, the right to remuneration and moral rights to the inventions. Examples: Denmark, Finland, Germany and the United States of America.

There will be circumstances in which national laws impose limitations on how individual universities and PRIs can deal with IP rights. Subject to those limitations, each institution may regulate the principles of ownership of IP rights through its internal IP policy, employment contracts and other contractual arrangements.

In many cases, the key issue will be the appropriate distribution of rights among the creator/inventor, other participants in IP creation and the university/PRI. No single model IP policy exists for this; each university/PRI has the autonomy to develop its own approach, generally seeking to take into account the interests of all stakeholders.

As explained in the Ownership issues section, rules on IP ownership will depend on national law and individual institutions’ policies, among other things. But it is common for universities to apply different rules for IP in research results and IP in teaching materials.

Ownership of IP in research results generated by employees

Many universities/PRIs claim ownership of any IP that is generated by academic staff in the course of their employment, and also when IP is created using substantial institutional resources. Nevertheless, in such cases universities/PRIs may grant a variety of rights to their employees, most commonly as follows:

• Employees keep the copyright in certain categories of creative works they created.
• Employees receive a share of net benefits arising from commercialization of the IP.
• Any IP that the institution decides not to commercialize is assigned to the employees.
• Employees have the right to be consulted about whether and how to commercialize the IP.
• Employees receive a license to use the IP for their own teaching and research purposes.
• Employees have the right to publish research.
• Employees have the right to be acknowledged as the creator/inventor.

Disputes often arise when an employee does some work at home or after hours, or produces work outside of the scope of his or her ordinary employment. It is good practice to have employees sign a written agreement that clearly addresses the duties of employment and the issue of ownership of rights in such cases.

IP in teaching materials generated by employees

Every member of the university community has rights and responsibilities with respect to copyright and other IP in teaching materials.

Countries have adopted different approaches to regulate IP ownership in such materials.

One approach among the vast array of approaches, for example, is to grant the employee copyright in the teaching materials he/she creates, even within the scope of an employment relationship. In such cases, the employee will be generally required to grant the institution a royalty-free, non-exclusive license to use the materials for teaching purposes. The employee remains, however, sole owner of the copyright and has the freedom to further license his/her works to third parties.

Another model is to take the opposite road, by making the institution the sole owner of copyright in teaching materials created by its employees in the scope of their duties. The employee is then usually granted a royalty-free, non-exclusive license for personal use of the work, including teaching purposes, even after the end of his/her employment in the institution, provided that such use will be of a non-commercial character. In this case, the right to exploit and license the work belongs to the institution, but the creator may be given a share in the commercialization revenues generated by successful exploitation of the IP.

Universities can facilitate the dissemination of copyrighted materials by developing an adequate policy that, complying with national law, balances the protection of rights of their authors, publishers and other right owners and the use of those materials for legitimate educational and research purposes.

Special rules are regularly established with respect to, among others:

• teaching materials specifically commissioned by the institution;
• works created by employees in the performance of administrative duties;
• collective works the authorship of which cannot be attributed to one or a discrete number of authors but is rather a result from simultaneous or sequential contributions over time by multiple academics or students;
• databases, software programs and courses captured on video or in other digital forms;
• moral rights; and
• exceptions and limitations (for example for library lending, use of works for educational and research purposes, etc.).

Browse our database to see examples of copyright policies from different institutions.

Most universities recognize as a general principle that students who are not employees of the university own the IP rights in the works they produce purely based on knowledge received from lectures and teaching. However, there may be some circumstances where ownership has to be shared or assigned to the university or a third party. Typically, these include:

• Students who are sponsored. Any conditions made by the sponsor regarding ownership of IP developed during the period of sponsorship, particularly granting ownership to the sponsor, must be respected. Students should be forewarned of the terms of their sponsorship agreement at the outset of the project.
• Students working on a sponsored research project. Ownership of IP from the project will usually be covered by the research contract between the sponsor and the university. Students should be informed of these terms before starting work on the project.
• Students working on research, theses or publications in collaboration with academic staff. Where students undertake research in a team with academic staff (collaborative work), this will often be connected in some way to academics’ ongoing research and may be part of a much larger research program. In such cases, students may be required to assign IP rights produced during the project to the university.
• Use of university resources. Where a student makes substantial use of the university’s facilities, equipment, IP and other resources, the IP generated is often owned by the university, while the student will usually be entitled to benefit sharing from successful commercialization.

While it is important to address these issues in the university IP policy, the university would usually need to have an express agreement from the student before he or she embarks on the research. This is because students are not automatically bound by the policies of the university. Supervisors must also ensure that students are aware of the consequences if IP associated with a project is disclosed prematurely.

For more info, consult our Database, selecting the “students” as your focus.

Visiting researchers may bring existing IP to use at the host institution and may also create IP during their time at the host institution.

The position of the visiting researcher depends on whether the host institution has a specific agreement with the funding agency or sponsor. Such agreement will usually set out the circumstances under which the host institution may seek ownership of IP that visiting researchers create. However, the host institution will also usually still need to have a written agreement from the visiting researcher to be bound by those terms. The situation may be more complex where the visiting researcher is either self-funded or funded by an agency or sponsor with which the host institution has no agreement. In either case, IP issues must be clarified with the visiting researcher in writing before research starts.

The terms of the collaboration agreement or the funding arrangements will specify who will own the IP created and who may benefit from access to the IP, e.g. by way of a license. Generally, as in the case of South Africa, where industry pays full cost for the R&D, the industry owns the IP.

Some universities/PRIs include provisions in their IP policies to address collaborative or sponsored research. In general, rights arising out of a particular collaboration will be determined by the contractual arrangements between the parties.

Contractual provisions governing collaboration should be clear about:

• the ownership of rights in “background IP” (IP which is held by participants before a project in question was started);
• the ownership of rights in “foreground IP” (IP arising from the research undertaken in the course of the collaboration, whether or not it can be protected); and
• the rights to use the IP where one party does not own it, or where it is jointly owned.

Decisions on ownership of IP and distribution of rights will depend on the mission of the university/PRI, the legal and political framework, the areas of research concerned, the constraints on funding, the types of material in which IP rights exist and the purposes for which they have been created. Decisions may also be affected by the social/cultural environment surrounding the university/PRI. Consequently, there is no good or best approach that is suitable for all.

The most important guidelines for universities/PRIs are to ensure that any decision on ownership of IP:

• gives the best potential for all stakeholders (researchers, students, public at large) to have access to the IP for their specific purposes and at an affordable cost;
• achieves a fair balance of rights; and
• establishes clear rules for IP ownership to maximize legal certainty.

Universities and PRIs need to remember that it is one thing to adopt an institutional IP policy that regulates ownership of IP and provides a rule on fair distribution of rights. It is entirely another to obtain and exploit IP rights for successful dissemination and transfer of technology. These objectives can only be achieved if employees and other creators/inventors:

• are aware of the way in which ownership is regulated and rights and obligations are distributed;
• are willing to cooperate in protecting IP derived from their creations/inventions and in further development and commercial application of such creations/inventions;
• trust that the university/PRI is competent to manage the IP in a professional manner and protect their interests.

Openness and commercialization may seem like diametrically opposed concepts, but in fact, they coexist naturally in today’s knowledge economy.

With the development of the Internet, the “open science” movement has emerged, encouraging the free publication of research results in order to spark innovation. Often, open access publication will be an appropriate way of disseminating scholarship and research results for public benefit.

But commercialization continues to play an invaluable role too. Many research results require substantial further work and investment to generate useful inventions. The temporary “monopoly” granted by IP protection encourages industry (e.g. the pharmaceutical industry) to partner with researchers and market their inventions by ensuring that businesses have a chance to recoup their investment. Through being developed and marketed, these inventions become actual products that can be used by the public and so improve society.

The patent documents for an invention are published 18 months after the first patent application is filed in relation to that invention (the priority date). This means that it is possible to file for patent protection while also publishing research results in a peer-reviewed publication. In other words, patenting and publication can co-exist: having reserved the IP rights by filing a patent application, a researcher may still publish his/her research results.