IP in Universities: Putting Policies in Place

Tom Ogada is an Associate Professor of Energy and Environmental Engineering at Moi University, Kenya, and was head of the University’s technology transfer office until his appointment this year as Director of the Kenya Industrial Research and Development Institute. He has worked closely with WIPO on a number of publications, as a trainer in intellectual property (IP) strategy workshops, and as a coordinator in the WIPO University Initiative. In 2004 he led the Kenyan team on the WIPO- sponsored National IP Audit.

In our interview he describes how Moi University addressed the need for a policy framework for dealing with IP issues, and he talks about patenting in African research institutes.

Professor Ogada, you were instrumental in putting in place a formal policy for dealing with IP issues in Moi University. Why are such policies important?

What do think a university’s IP policy should aim to achieve?

Many things. It should create an environment that encourages and expedites the dissemination of new knowledge for the greatest public benefit, while protecting the traditional rights of scholars to control the products of their scholarly work. It should ensure that the financial or other benefits of commercialization are distributed in a fair and equitable manner that recognizes the contributions of the inventors and the institution as well as other stakeholders. It should promote, preserve, encourage and aid scientific investigation and research. It should sensitize students to IP and tap the creativity of the young. It should create incentives for researchers to conduct research and provide rewards for intellectual capital. In developing country universities, it should also stimulate research efforts to find solutions for pressing problems, such as medicines, clean water and energy.

How did you start?

We began in 2002, following a meeting at which vice chancellors from universities all over Kenya pledged to develop IP policies. We appointed a committee, which I chaired, to spearhead the process. We were supported by a team of experts from the Kenya Industrial Property Institute. We started by sensitizing the faculty and creating awareness on IP.

And what kind of reactions did you meet from the research staff and faculty members?

Initially the researchers were not enthusiastic about IP policy. Most scientists associated IP rights with law and copyright, and could not see its relevance to their R&D activities. Some saw the exercise as meant to take control of their IP. In particular, the issues of delaying the publication of research results for the sake of patentability did not go down well with many researchers. They were also concerned about questions of ownership, benefit distribution and conflict of interest and commitments. To overcome these challenges, we organized IP awareness exercises and debates at various faculties. Consensus building was very important.

Not easy! So what, for you, is key to ensuring that an IP policy is accepted by the people for whom it is intended?

I learned a lot during the process. For example, the choice of the right team and team leader to draft the policy is crucial as they must command the confidence of the faculties. The team should include respected staff members and outside experts. The team needs to spend time understanding why an IP policy is required, so that they can define the objectives and the issues to be covered. The policy should be written in a simple language, easy to understand. This is because the main users are scientists, who are easily put off by legal language.

All the stakeholders must feel that they have contributed towards the development of the policy. It is therefore important that the draft is presented for discussion to all levels of management, working upwards. At each stage, whenever a revision is made after discussion, the draft must be re-presented for approval before going to the next higher level. This back and forward strategy may seem tedious, but it will enhance ownership of the document as well as create IP awareness.

Do you see any differences for developing country universities compared with their counterparts in, say, the U.S. or Japan?

In general, the process would be the same in terms of the need to educate, to create awareness among the faculty on IP and build consensus in key issues related to IP policies. And the general objectives of the IP policy would also be more or less the same. But universities in developed countries often have more experience in interacting with industries. And they are likely already to have other policies and legal frameworks to manage consultancy and contract research, which are important instruments for consideration in IP policies. So the process of developing IP policies could be shorter.

Also, the emphasis in IP policies in developing countries may include issues which are of less significance to universities in developed countries - for example, providing incentives to R&D researchers as a way of reducing brain drain.

The biogas project at Moi University Holdings Ltd. treats waste and waste water from the agricultural sector in order to generate energy for heating and lighting. The treated water can also be used for irrigation.

Tell us about the first patent application filed by Moi University in 2004.

The patent was developed by a professor from the department of Wood Science and Technology. It covers a colour removal technology from waste water and has potential application in several industries including tea, coffee and pulp and paper industry. The filing of this first patent generated a lot of interest and excitement in the University, which led to increased awareness of staff about IP rights. Unfortunately, the process has been slow and communication between the relevant processing offices and Moi University has not been good. This has disappointed the inventor and several potential applicants.

You were at that time director of Moi University Holdings Ltd. What role did it play?

Moi University Holdings Ltd. acts as the commercial arm of the university. It was instrumental during the filing of the first patent. The company provided an environment which enabled the inventor freely to disclose his invention. It undertook the preliminary examination, drafted the patent application, filed the application, paid the application fees and communicated with the various offices to monitor the progress. These are activities, which cannot be undertaken by researchers themselves because they are time consuming and can be frustrating.

There is as yet relatively little patenting going on in African universities. Why do you think this is?

The low numbers of filed patents in African countries compared to other countries should not be interpreted as an indication of low levels of innovation and pioneering research and engineering activities. There is quite a lot of innovation being undertaken by African scientists and engineers in R&D institutions and universities. Most of these innovations go unnoticed because of lack of IP awareness. The barriers to patenting include the low funding of R&D activities by African Governments (currently less than 1 percent of the GDP); a lack of funds to finance patent applications and maintenance; a lack of IP professionals, such as patent agents; the lack of institutional framework, such as technology management offices in our universities and R&D institutions; and a low level of IP awareness.

Will this change?

The situation is changing as universities and R&D institutions in Africa become more IP aware, and as the decision-makers start to see the need for increased funding of R&D in science, technology and innovation.

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IP Policies: Ten Questions

Professor Ogada is currently working with WIPO on Choices in Developing IP Policies, a short guide for managers of universities and research institutes. It is based around the following key questions which IP policies should address.

• Who owns the IP generated by government-funded research activities?
• How will revenues/benefits from the commercialization of IP be shared e.g. between the researcher/inventors, the department, the institution, government funding providers etc.?
• Are any government rights/stipulations attached to the commercialization of IP generated under government funded research?
• In the case of privately funded research, who will own any resulting IP?
• Will spin-off companies or licensing contracts be used to transfer technology to the private sector for commercialization?
• Who will manage IP assets, including negotiation of licenses and royalty-sharing?
• To what extent will the institution encourage research commercialization through entrepreneurial activity?
• How will the costs of IP protection and maintenance be paid?
• How should any invention disclosure procedure be managed?
• How will conflicts of interest between teaching/research duties and commercially-driven projects be handled?