There are five great traditions of intellectual property management. These can be arranged under the heurstic WASTE.
W waive
A assert
S share
T transfer
E exclude
The first order of business in IP management is deciding what is worth managing at all. Waiver of IP interest is an incredibly important management decision and an organization that can do this well demonstrates that it indeed can make management decisions about IP.
Assert management uses IP as a monetizing asset built on the successful use by others. An assert play can be made by an industry leader or by a company that exists for no other purpose than to find potential infringers and become an essential part of their budgets. Typically, an assert right is of no other use to an organization but for its monetizing value. Licenses in assert management attach the parasite to the host in the most comfortable position possible under the circumstances.
Share management drives toward the creation of user communities, standards, interoperability, and commons. In share environments, an organization finds value in the use of covered technology and information, and establishes the ground rules on which others work with this same information. Sharing environments can be proprietary (as in a beta test program) or open (as one finds with open source and creative commons approaches). Share licenses tend to be self-executing, emphasize behavior over payments, and to some extent damp out incentives to innovate outside the share community.
Much has been made about transfer management, in which an originating organization seeks one or more partners to develop a technology to commercial application, relying on holding rights, typically exclusively, to justify the investment against free riders and others who would simply knock off the commercial version once the heavy lifting has been done. It’s an important model that has operated in the US for 100 years. But it captures only a small portion of the actual research output of American universities, for all the press and attention.
The fundamental right of intellectual property is that its owner can exclude others from protected practices. This works well for a company with a potential or active product line, markets to compete in, facing competitive pressure. One need not do anything other than assert one’s rights to extract value–which comes from the revenue streams from one’s own products and from the equity value of one’s company reflecting a degree of risk management recognized by investors. For universities developing research technologies, of course, exclusion is rather the opposite of what is desired, leading to a keen sense of irony when they take up IP positions. Beyond the irony, however, there are reasons to exclude some behaviors–for quality control, to define a developing standard before it is co-opted or badly implemented, to ensure interoperability.
A starting point for examining how IP is transacted in research environments is to consider the match between the model of IP management put forward by the originating institution and the model of IP management desired by a partnering organization. If a university proposes to transfer rights, and a biotech firm seeks to use the IP to exclude others–then there’s a match. If however, the biotech firm wants to share the IP with everyone, this will present a problem for the university’s transfer model, as it will potentially blow off the typical royalty calculation based on sales, push the emphasis to sublicensing, and cause all sorts of problems.
Other combinations help to make the point. A university can choose to waive its IP positions in research developments, only to find that its own personnel privately take up IP positions, or that surrounding organizations, rather than reciprocating by also waiving their IP positions, establish positions on improvements that tie up the IP anyway. The consequence in such a situation may be that the originating university simply becomes a non-player in the developing technology.
An important element of IP management is to establish conditions that will match research based management choices with recipient practices. This is not easy to do if a university has built out only the single method of transfer management. Thus, one of the first points of development in IP management is expanding the range of IP resources available for partnering.