wipo conference on dispute resolution in international science & technology collaboration,...

WIPO Conference on DisputeWIPO Conference on Dispute Resolution in International Resolution in International Science Science && Technology Technology Collaboration, Geneva, Collaboration, Geneva, Switzerland, 25-26 April 2005Switzerland, 25-26 April 2005

Structuring Science &Structuring Science &Technology Collaborations:Technology Collaborations:

The Role &Perspective of aThe Role &Perspective of aDeveloping Country UniversityDeveloping Country University

Rosemary WolsonIntellectual Property Manager: UCT Innovation

University of Cape Town+27-21-650-2425/+27-83-784-3648

Rosemary.Wolson@UCT-Innovation.co.za

WIPO Conference on DisputeWIPO Conference on Dispute Resolution in International Resolution in International Science Science && Technology Technology Collaboration, Geneva, Collaboration, Geneva, Switzerland, 25-26 April 2005Switzerland, 25-26 April 2005

UCT Facts & FiguresUCT Facts & Figures

• SA’s oldest university• ~20,000 students• ~2,000 academic staff• Research budget ZAR

360 million (~US$ 60 million)

• Research & Innovation Department– UCT Innovation

(contracts, IP, commercialisation)

• Faculties:– Commerce (and

Graduate School of Business)

– Engineering & the Built Environment

– Health Sciences– Humanities– Law– Science

WIPO Conference on DisputeWIPO Conference on Dispute Resolution in International Resolution in International Science Science && Technology Technology Collaboration, Geneva, Collaboration, Geneva, Switzerland, 25-26 April 2005Switzerland, 25-26 April 2005

Importance of Research Importance of Research Collaborations for UCTCollaborations for UCT

• Funding

• Access to technology

• Access to complementary expertise

• Equipment

• Capacity-building

• Value adding

WIPO Conference on DisputeWIPO Conference on Dispute Resolution in International Resolution in International Science Science && Technology Technology Collaboration, Geneva, Collaboration, Geneva, Switzerland, 25-26 April 2005Switzerland, 25-26 April 2005

Features of UCT’sFeatures of UCT’sResearch Research

CollaborationsCollaborations• Location of collaborator– Local & international

• Type of collaborating organisation– Academic, industry, government, ngo, igo,

development agencies• Stage of research

– Early stage to applied• Nature of the outputs

– Innovative/cutting-edge science to ‘routine’ provision of services

• Funding– Externally funded, co-funded, self-funded

WIPO Conference on DisputeWIPO Conference on Dispute Resolution in International Resolution in International Science Science && Technology Technology Collaboration, Geneva, Collaboration, Geneva, Switzerland, 25-26 April 2005Switzerland, 25-26 April 2005

One Size Does One Size Does NotNot Fit Fit All…All…

• Wide range of collaborators and diversity of relationships– Different conditions attach

• Calls for a flexible approach• Within certain policy parameters

– Proactive research management and support therefore critical to ensuring that both UCT and its collaborators derive benefit out of these relationships

WIPO Conference on DisputeWIPO Conference on Dispute Resolution in International Resolution in International Science Science && Technology Technology Collaboration, Geneva, Collaboration, Geneva, Switzerland, 25-26 April 2005Switzerland, 25-26 April 2005

UCT’s ApproachUCT’s Approach

• What’s important to us might not be the same as what’s important to our collaborators

• But benefits for both parties can still be achieved

• Compromises are necessary• Identify ‘dealbreakers’ for each party

– Requires clear policies, consistently applied– If unacceptable – walk away– If acceptable – reach common ground

WIPO Conference on DisputeWIPO Conference on Dispute Resolution in International Resolution in International Science Science && Technology Technology Collaboration, Geneva, Collaboration, Geneva, Switzerland, 25-26 April 2005Switzerland, 25-26 April 2005

Most Common Most Common Causes of DisputeCauses of Dispute

• Confidentiality & publication rights– Distinguish between information received from

other party & information generated in course of project

– Time-limited embargo on disclosure; right to review

• IP ownership, access & use– Licensing preferred over assignment, but approach

depends on circumstances– Minimum condition: royalty-free, perpetual license

to university for teaching & research – fto

WIPO Conference on DisputeWIPO Conference on Dispute Resolution in International Resolution in International Science Science && Technology Technology Collaboration, Geneva, Collaboration, Geneva, Switzerland, 25-26 April 2005Switzerland, 25-26 April 2005

Avoiding DisputesAvoiding Disputes

• Disputes more common during negotiation than in implementation

• Clear contracts that represent a true ‘meeting of minds’– Deliverables, budget, timelines– Contracts signed off by university – but must be

understood by the researchers concerned

• Dispute resolution provisions

WIPO Conference on DisputeWIPO Conference on Dispute Resolution in International Resolution in International Science Science && Technology Technology Collaboration, Geneva, Collaboration, Geneva, Switzerland, 25-26 April 2005Switzerland, 25-26 April 2005

Developing Country Developing Country IssuesIssues

• Unequal collaborations - not taken seriously– UCT inventors left off patent applications filed by

overseas collaborator ‘Drudge work’• Resource constraints make for a poor

bargaining position– Can’t afford to walk away– Limited capacity

• Choice of law and forum for dispute resolution– Litigating overseas could bankrupt the institution!

• Biopiracy’– Plant material, tissue collections, clinical data

WIPO Conference on DisputeWIPO Conference on Dispute Resolution in International Resolution in International Science Science && Technology Technology Collaboration, Geneva, Collaboration, Geneva, Switzerland, 25-26 April 2005Switzerland, 25-26 April 2005

PIIPA ProposalPIIPA Proposal

• Public Interest Intellectual Property Advisors– www.piipa.org

• Proposal for a Facilitation, Mediation & Dispute Resolution Network

• Focus on developing country IP issues, including traditional knowledge– Design culturally appropriate negotiation process– Facilitate negotiations– Resolve disputes

• Is there a need?• Appropriate partners – WIPO?

WIPO Conference on DisputeWIPO Conference on Dispute Resolution in International Resolution in International Science Science && Technology Technology Collaboration, Geneva, Collaboration, Geneva, Switzerland, 25-26 April 2005Switzerland, 25-26 April 2005

Thank You!Thank You!