Transcription
A very warm welcome in the course IP management and Technology transfer titled "How to Use IPM Audit Model for IP System Development."
So, in the last module this week, we have focused on the IP audit framework. Now, in that framework, what exactly we have done is that we tried to understand what is the status of IP creation or IP generation. And we just tried to understand what is the IPR score of the organization or individual or startup or an industrial organization, whatever it may be. And probably that has given us an idea where exactly we stand and what progress we have to do related to IP management.
Now, how we should go for that particular thing? How can we develop our IP system and improve our IP system so that the current IPR score, whatever we have achieved, can be improved? So that is the question. So, how can we do that thing? So, we remember that we have seen three models actually. The first, which is giving us the idea where exactly the IP management system is present in the whole organization. In the second module, what we have seen is the IPMS system, which is suggested by Sullivan. And in the third module, we have seen one more IP management model where there were five stages and 15 IPM processes. So, there were five stages and 15 major IP processes, okay? This much we know now.
Now, we have to apply it so that we can get benefit for IP creation and commercialization. So, let us today focus on how that IPM model we have just seen. So, now, what exactly we have seen in the IPM model? So, as you can see here, there are five IP stages actually and 15 IPM processes. So, you can see here that there is an IP policy and contract. Then there is an IP security system. Then there are idea generation drivers. Then there are idea generation processes. Then there is an inventory. IP inventories. Idea inventory is created. Then in the next stage, what exactly happens that there is an idea selection process, IP administrative protocols. Then there is an IP assessment system. And then again, next, there is a creation of an IP inventory. Then in the third stage, what exactly happens that there is an IP maintenance. Then there is IP commercialization. Then there is an IP inventory. In the fourth stage, you can see here there is an acquisition. So, there is an acquisition need and there is an inventory related to that. And in the last, you can see here, enforcement. That is IP enforcement.
So, these are the 15 major processes. We have understood very detailed information about that in Module 3 of Week 2. Now, we also know that there are five stages. Which are that five stages? You can just check here that there is a pre-IP stage. Then there is an IP stage. Then there is a post-IP stage. IP acquisition is there. And there is an IP enforcement is there. Fine. So, these are the five stages. Then 15 major IP management related processes. And which type of inventories are created? There are total four inventories. Which are that four inventories? There is a potential IP, non-commercialized IP, commercialized IP, and acquired IP. So, we have total four inventories in our hand. So, this is the model which we have understood.
Now, we have to apply it to our organization. So, now, you may be a startup, you may be an academic organization, you may be an industrial organization, you may be an individual, you may be a scientist or inventor and you have your own lab. You may be an MSME. Whosoever is trying to apply this model, definitely you are able to apply that model and you can develop your IP system, your IP management system using this. So, let us check how we can go for that thing. So, let us focus on that first.
For you, Stage 5 processes under the pre-IP stage. And this is the background. Actually, this is a kind of processes which are necessary for IP generation. Now, which are these processes? IP policy is mandatory because without policy, probably you may not be able to handle the problems or issues or cases which may arise in the latter stage. At this stage, probably you will feel, "What is that? Why will I require an IP policy?" No, we have to create our IP policy to avoid any confusion, any conflict in the latter stages. So, that IP policy and contract, that is the first one. Next is that, that is an IP security system. How are you going to protect the trade secret, actually? So, we have to take care about that particular thing. Then there is idea generation drivers. What are the different processes you are following for idea generation? And at last, you have to note down whatever ideas are generated. Whether there is a system to make a database or to make a noting or to make any physical order, a digital system which can take care of that idea inventory. And this is what you can say that there is a potential IP, actually. So, whatever you are creating, that is a probability. Obviously, that you are creating the potential library. So, you just try to understand anything out of these five processes you are following or not. Policy, then there is a security system, especially if it is a trade secret or confidential information, what kind of precautions or processes you have developed to protect that thing? How are you capturing ideas? Because suppose you are an MSME, 100 employees are working in your MSME or maybe 50 staff members are there. Whether there is a system to capture the suggestions, capture the ideas which are related to your processes? Processes may be product development, may be service, whatever it may be. Okay? So, just make sure that these systems are or the processes are in place, actually.
If we go into details of this, these are the 15 major processes. There are almost 150+ small or you can say sub-processes. So, we are not able to cover it here, but I am just giving you the idea about the major processes. Okay? Let us move further and just say that there is a next, that is an idea selection process. Very critical. Which ideas will you consider for further development? Which are the processes for that? Whether there is any system for that? Just think over. Next is the IP administration protocol. Means, what is the procedure that if I create some IP, I am suppose an employee in an academic institute, what are the processes where I should go for filing for my IP? How can I disclose my invention disclosure form? Who is there to help me to draft the patent? Who is there to help me for a trademark filing? If I am creating, so whether we have that kind of a system in place? Okay? Whether there is a single contact point who will take care of that particular thing? Just think over whether you have all this thing in place.
Then next is the IP assessment and administration, actually. Means assessment and then administration related to that. So, how exactly are you doing the assessment of that IP which is created? So, that means novelty check, is there a prior art search? How exactly are you selecting that particular? Because so many invention disclosures will be there. Generally, this happens in the industry that many invention disclosures are received by the IP department. So, they have to keep strict guidelines for the selection of the inventions which they will consider for filing, actually. So, when we are talking about this particular assessment, this assessment is very critical if there is more IP generation and you have a limited cap. If it is there that, "Okay, we want to file only 100 patents in this month," if something like that is there, you have to keep some parameters which help you to do the correct or a justified selection of the invention. So, we will not go into much detail about that, but probably you have got the glimpses of this particular thing. How IP assessment works. Just imagine. So, that you will just get the idea about that. Three lakh employees are the global presence. You can just imagine every inventor is working, everyone is passionate about their work. Everyone will, especially I'm talking about R&D teams, they are filing so many invention disclosures, actually, in the automated system. Then this task is very critical, actually. So, this is what the IP assessment is. And what you are getting at the end is like a non-commercialized IP. So, we are getting the second, you can say, the inventory. The first one is a potential IP, second one is a non-commercialized IP.
Now, the next one, the next thing is like related to the IP maintenance related decision. Now, again, the process is like, which patent will you hold? Or which patent for which patent will you give the maintenance fee? Whether there is a renewal of trademark? Whether you are doing that trademark renewal or not? So, whatever that IP portfolio is there, if it is small, generally you will not bother about it because you want to maintain that thing. But if that portfolio is big, probably you have to take decisions related to maintenance. And then next is like a commercialized IP. Obviously, if the organization is a big organization, IP commercialization also is again a big task. So, obviously, there are so many patents, either in-house developed, they are used in the product or service, or they are licensed, or they might be a cross-licensing, whatever it may be. So, some commercialization aspect is there.
I will come down to startup now. If you are a startup, definitely you have built up your startup on some or the other technological development. Probably you have protected it by patent, and you have to check where, obviously, the meaning of this is that if that patent you are working on and based on that your startup is, you have already commercialized your IP, and definitely you are developing around that IP. So, some incremental changes are going on, and probably I hope that you are taking decisions related to IP filing at that time also, so that your core IP will be protected. This is again part of IP strategy. So, let us not enter into that. Just focus on the current IP which is under consideration. Check that whether you have protected it, and whatever the further developments you are doing, check that you are taking care wherever necessary that that IP instrument is used effectively. It may be trademark, it may be industrial design, it may be patent, whatever it may be. Okay? And at the end, what you will get, you will get the commercialized IP.
Suppose you are an academic institute and you are at the point of IP commercialization. There are so many enthusiastic faculty members who have filed patents. I have seen that there are faculty members with 150+ patents also. Probably that may be due to association with an industrial organization or maybe they have developed through the project. Whenever they are doing the project, they have developed that thing. But that scenario is there. 150+ patents and say, probably out of that 150, 100 are commercialized. That is a possibility. Definitely, it is a possibility. And now that when we talk about a commercialized IP, out of 150, 100 are commercialized and 50 are non-commercialized IP. Probably I have got the idea. Suppose I am taking one inventor, only one faculty member in an academic institute who have filed 150+ patents. I will take the exact number as 150. So, what will happen? Suppose he has filed that 150 and out of that 100 are commercialized. Now, commercialization may be due to licensing. It may be like in-house development. Some entrepreneurial activities are going on. A startup is created by the faculty member, and definitely that will be like in the because of that entrepreneurial activity, you can say that that IP is commercialized. That is one of the ways of IP commercialization. So, that is the case, or maybe some sale of patent or IP might have happened in the past. So, that also comes under the IP commercialized. So, I have taken only three examples here: sale, in-house development in the form of a spin-off or a startup, further. And the next is like there is a difference in spin-off and startup. Again, we will not go into details of that. Just remember that entrepreneurial activity is developed around that IP, and some IP is licensed. And out of 150, say 100 are commercialized and 50 are non-commercialized. And probably in that lab, probably still the ideas are coming up. So, maybe 1000 or 2000 may be potential IP. Fine. This is the scenario.
Now, let us move further and check the acquisition related thing. Now, when we are talking about the acquisition, actually, so this is something maybe mostly with the industrial organization. We have seen that particular thing, but you just think about the acquisition need in maybe an MSME setup or maybe an industrial organization, academic organization. That scenario is probably zero or very less. That expectation is very less. And because of that, what will be there? There is an acquired IP, and that will be the inventory created will be of acquired IP.
And the last one you can see is the IP enforcement. So, again, IP enforcement. Now, what is academic institutes are becoming also very active and they are taking steps for IP enforcement. The way probably will not be that much aggressive like industrial organizations, but definitely the awareness is there. So, what is the enforcement? We have already seen that thing that what are the processes which are decided that when you will go for enforcement? Because it is not possible, even I can just tell you that industry also will not go for every. They know that, "Okay, this infringement has occurred," but still, every time, every infringement case, whatever it may be, that industry may not go for the enforcement of rights. So, suppose, and generally in an industrial scenario, what happens? The local vendors, then local players, they generally imitate the invention. So, at that time, industry may not go for enforcement decisions related to that. So, there are certain processes which are set in the organization. So, you just check that whether you have something like that. If you are a startup, because that is very much important for a startup that if there is an infringement, probably you have to be very alert because your whole entrepreneurial activity is dependent on that. So, as a startup, we have to be very, very, very, we have to keep an eye on that, enforce that infringement, and take decisions related to enforcement. But in an academic institute, probably that scenario is not that aggressive enforcement. You cannot, it is not generally observed. But we can think of if there is an infringement, we have a full-proof claim draft. I should not go into details of that, probably, but just focus on claims, check the evidence of use, do the proper infringement analysis. So, all these processes are there. We will not go into details of that, but just check such processes are there or not. Okay? So, that is the, that is the 15 major processes, whatever are there, we are talking about.
Now, let us move further and check that, yes, that yes, I have an IP policy. Just mark there in the framework. So, you can just take a pen and paper, you just draw 15 boxes like this, and now you know what exactly that point is. So, what exactly you do? Okay, IP policy, whether it is initiated or whether it is already in place or it is not there. So, I take an example like we will just go through this example as for understanding. We are considering this example. Okay? So, suppose you have that IP policy. Now, the next scenario that, "Yes, for related to this particular point, yes, I have that security system in place, actually." Then idea generation drivers. Okay, I have idea generation drivers. Suppose if it is idea translation process, just check whether you have that idea generation processes and you feel that, "Yes, we have processes in place." Now, you just check whether idea inventory, proper documentation is there, and I feel that, "No, no, no, that thing is not there with me." So, I have put that "No." Okay? So, what just we have done? We just analyzed our current scenario of IP management system that, "Okay, I have IP policy, I have security system, I have the drivers and processes, but no, I have not documented anything." So, that point is like coming as a "No."
Now, let us move further. So, they say, for example, IP selection processes. Whether there is any guidelines for IP selection process? And I'm just considering an academic organization as an example only, because this is the most of the academic organizations are at this stage now. That they have policies. Most of the academic organizations now, they have developed their policies. More or less, they are aware about the security system or the confidential information, how they are going to protect that thing. That particular idea is definitely there. Then related to idea generation drivers and processes, and generally that idea campaigns and all that things are going on in the academic organization, but documentation is an issue. So, I just put there a "No."
Now, let us move further. Whether IP selection processes are there? Definitely not, because that much awareness is not there that so many IPs are filed or so many invention disclosures are filed. IP administration processes, I will say "No." At some academic organizations, you can say there are very well digitalized systems. So, in this week only, we will go through the IP management system of IIT Kharagpur, actually. So, we have a very well digitalized system. In IIT Bombay also, there is a very well digitalized system. So, we will go through that how exactly the system is, so that if you are an academic organization, you can try to develop your system based on these two case studies, actually. Okay? So, this is the scenario.
And next one like that assessment related processes, no, we don't have IP assessment related processes. Then the inventory, obviously, if we are not doing all this, we probably may not have that that inventory properly made. But we may have that non-commercialized. Okay, we have filed some IP, certain patents we have filed, and we have noted, "Okay, these 10 patents." Because for NIRF ranking, we require that. For NIRF ranking, we require that. So, we have made a database of a database out of that particular thing. So, that way, this probably might be the scenario.
Now, the next related to maintenance, again, probably there are no processes. Then the related to IP commercialization, very rare. So, I have taken it as a "No." And probably commercialization is so weak, so I have taken it as a "No." But if you have initiated something, you have done, suppose out of 10, suppose two IPs are commercialized, then you can say that "Yes," or you can say that "Initiated." Okay. Next is the acquisition, and then the inventory related to acquisition. There is a probability is very less. And for related to enforcement, again, I will say "No."
So, suppose the academic organization is exhibiting this kind of a scenario. Okay? So, what happened? Only five, I have received. So, the meaning is that out of 15 processes which are required for an IP management, okay, I have only five processes in place, probably at different levels of development. Again, I will not say that they are of the level which is expected, but here still it is there. So, we can say at this point that, "Yes, I have that system in place, but I don't have that remaining ten processes." Probably I do not have.
So, if you say, if you analyze, now with the previous session, you know the score. You know the score. And now this session, you know that where we are lacking exactly. That, "Okay, these are the 10 processes I am lacking in." So, now we have to focus on to develop this particular. So, we received score. It's like a, I have given the examination. I have see given my the question paper. According to that, I have written the answers. I have received say out of 100, say 35 marks. But I have, the remaining marks, like where exactly the problem is. So, this model will give you an idea. Okay, this is the reason because of that, probably your IPR score is less. So, how do you have to improve that thing? So, we have to focus on these ten processes here, and probably that will help you to improve.
Now, without considering this is just a starting of IP management. So, we don't want to burden you. But if you see that these 15 processes, major processes, if I, as I have already said, if I bring all the sub-processes together, these are around 166 processes. And if we follow all that 166 processes properly, probably you have a foolproof IP management system, and probably your IPR score will be very high if you have that kind of a system. But at this point, as we are in a starting phase, this much is good enough. Okay? So, this way, you can understand where exactly we are lacking.
Okay, here I guess this is good enough for us to understand the IP management system and for development, we require that processes. Now, again, we will just go into details and just check here that which are these. No, no, actually. So, you can just see here. Okay, these are the 10 processes I am lacking in. You just check here. These are the 10 processes we are lacking in. Now, we have to focus on that. We have to develop that IP administration related processes. We have to develop the maintenance related processes. We have to develop the commercialization. How can we do the commercialization of IP? Which processes? How should we plan for that? So, that particular focus should be. Okay? And which are the, yes, like which are the processes we have? So, you can just see here that, "Yes, these are the processes I have in place." So, if you want to improve on that, probably you can focus on that improvement. And this "No, no" where it is, you have to have to focus on that.
Again, I can suggest you, you need not to go on working on all the 10 processes simultaneously. Just now, if this is the scenario, I will say that first, we have to focus on IP administration because that is very important. Database of that idea inventory, again, that is another important thing you can focus on. And then slowly, you can work on the other points, actually. So, that instead of working on simultaneously on all the 10 points, probably you can focus on each process, develop it at a certain level, and then move on to the next process. Probably that will be helpful to build up an IP management system in a maybe a time of one year or something. And it depends again how that is imbibed or how that is utilized by all stakeholders effectively. Okay? So, this is the scenario.
Now, let us take a break now, and we will watch a video here. Enjoy the video.
So, if we see now the outcome in the form of inventions and the revenue in this one example, in this one presentation, you can see the outcome. So, the outcome is like this. If we have to give five top inventions, these five top inventions of this university are functional antibodies, PageRank algorithm, recombinant DNA technology, then CD47 cancer immunotherapy, and the transcription-mediated amplification. Okay? So, these are the five top inventions of this university. Cumulative licensing revenue, if you can see there, it is a 2 billion dollars. So, more than that, that is the revenue, cumulative revenue, licensing revenue generated by the university. Huge amount, right? Then number of technologies which are kind of creating or generating $100,000 as income for at least one fiscal year, that number is around 575. Then if you see the number of technologies that had more than one million dollar income for at least one fiscal year, 11407. Inventors, 415. Startups, 13699. Cumulative technologies, 2539. Revenue-generating inventions, then you can see here that 4872 US patents which are issued, granted. Then 5267 or 61 licenses are issued or these are assigned. Then if you see the agreements which are cumulative agreements which are signed, it is this number is approximately 21722. Then the sponsored research agreements, if we see, it is around 5440. And as we have seen that the revenue is approximately 2 billion dollars plus. So, cumulative revenue is around that particular number, that is two billion dollars.
So, if we see the overall outcome of this university, definitely it is outstanding. And probably we have to keep the benchmark of this Stanford University. And if we see or compare it with the Indian scenario, now if we see the current kind of output of patents in India, that is approximately goes in hundreds or thousands, something like that. Stanford University, 4000+ patents. And definitely the giants, whatever entrepreneurial activity we have seen, definitely it is outstanding. Silicon Valley, again, it is the outcome of Stanford University only. So, it's a great contribution by an academic institute by creating that invention, protecting that inventions by using intellectual property, and then developing the startup ecosystem. And that startups are now becoming the giants. So, that is the kind of scenario we can see. And this is a classic example of that.
Now, next example, if we see that about the, this Office of Technology Transfer. Everything is happening. We can see that these many patents and then they are like, how they are like developed, the commercialization of that patent, because that is something very challenging. If we see the story of this Office of Technology Transfer, especially in 1975, when Cohen and Boyer, they have that restriction endonuclease. From that, if we see the Nils' contribution, he's a technology officer in the Technology Transfer Office. And his efforts that help to do the patenting of that restriction endonuclease. If he would not have contributed, if he would not have taken efforts, probably this restriction endonuclease will not have received this much revenue, whatever we have said. Because this restriction endonuclease, it has created, developed that different kinds of hormones and many procedures, you know, especially the medicine become very easy because of that restriction endonuclease. And that contribution was patented. And thanks to the rule at that time in the USA, that is the invention, that one-year timeline is given after the publication. Means, if that patent goes into the public domain, there's first to file is a rule. That was a rule. First to invent, that is another kind of a rule. So, that first to invent rule, if we follow that doctrine, if it is followed, then that was in USA. And because of that, in one year after that invention which is published in a conference, actually, Nils put his efforts. And that Nils has developed the technology transfer office. It was a starting point, actually. And he developed that technology transfer office.
So, now we have understood how to use that model, right? That 15 processes, five stages are there, and how I am going to apply that processes to develop my IP management system. So, today's quiz time now. So, what we want you to do today is like, just check that out of that 15 processes, how many IP management processes are in place in your organization? Just "Yes" or "No," you have to write down in the boxes. Just do that thing. And just check out of 15. In the example we have just seen, only five processes are there. So, you just apply to your academic institute, if you are an academic institute. If it is a startup, apply to that. If you are an individual, you can apply to your laboratory, whatever you are working on. What is how you are developing your IP system for your laboratory? If you are a research organization, try to apply for your either that department or a whole research organization. Or you can do the simple activity that you can give one assignment kind of a thing or create a competitive scenario in the research organization or academic institute by just asking them that whether they are following that particular at a departmental level or a that unit level. Probably it is generally these things should be followed at an organizational level. But check that there may be somebody, some inventor who might be very active in IP creation. Probably he is following already this particular processes. So, you just check that out of 15, how many are followed in whatever setup you are. Write it in the comment box. And if you have any queries related to this IP development, if you want some suggestion, guidance, you can just write down into the discussion forum. We can discuss this there. And maybe if we feel that, as I have already told you in the first session, that some points probably we will not be able to, if you are, we will not be able to answer you on the discussion forum, just be part, participate in a live session, and there we will discuss it in detail. Okay? So, I hope you have understood the application of the model. Because only understanding the model is not important. Application of that model for the benefit of IP management system development is very important. And I hope you will use it effectively. So, let us stop here. See you in the next session. Thank you.