Universities around the world have frequently struggled with the competing aims of serving the public interest by disseminating knowledge created through research, and of ensuring that where possible the intellectual property associated with such knowledge is appropriately protected, developed and commercialised. Both approaches can provide substantial benefits to the university and to society generally.
Patentable inventions and other marketable forms of intellectual property (IP) may result from research undertaken at a university. Universities have traditionally found it difficult to avoid the loss of patentable technology through the premature disclosure of that technology before commercialisation. The majority of jurisdictions have patent laws that stipulate that public disclosure of a patentable invention before a patent application has been filed will invalidate any subsequent patent obtained for that invention. Consequently, it is necessary to ensure that procedures are in place to ensure that research is kept confidential pending an active decision as to whether or not to seek a patent in respect of any related invention.
It should be noted that some jurisdictions grant a grace period to inventors allowing them to disclose their invention for a period of time prior to seeking a patent (usually either 6 months or 12 months earlier). It is not recommended to rely on this grace period as it will invalidate patents sought in countries without a grace period. This also gives competitors a clear indication of the nature and type of research undertaken, which may allow them to seek protection for different, but closely connected technology.
There are various methods available to universities to ensure that knowledge and research is retained to allow active decisions to be made as to whether or not to seek patent protection, namely:
- The implementation of clear IP and technology transfer policies at universities which contain:
- incentives to inventors and a progressive environment for technology transfer;
- a clear process for the creation and management of IP, its disclosure and commercialisation;
- an explicit openness to industry and a strategic approach to technology transfer in specific fields of research (as or where appropriate to the institution).
- An ongoing education system within the university that reinforces the IP policy and gives a basic outline of the critical elements of IP law. This should reflect an HR policy that ensures that employment contracts and student registration documentation underpins the IP policy.
- The development and maintenance of key relationships with commercial partners that may provide funding or commercial assistance for the purpose of technology transfer activities and which may provide future employment opportunities.
- Focussed and pre-planned research objectives in areas where marketable IP may be created.
In the UAE, patents are protected by the UAE’s Industrial Property Law. Patent protection can be obtained in the UAE through the national patent office, through the PCT system, or otherwise through the Gulf Cooperation Council (GCC) patent office - which allows for the grant of a unitary GCC patent covering the six GCC countries.
The UAE has also continued to make strides to develop the administration of its national patent office. Most recently in early 2014, the UAE Ministry of Economy entered into an agreement with the South Korean patent office (“KIPO”) for the examination of patent applications. Importantly, the deal included moving patent examiners from KIPO to the UAE to ensure that skills were developed locally. This builds on an agreement with the Austrian Patent Office which has historically helped to examine patents on behalf of the UAE. It is hoped that these initiatives will improve the delays associated with the examination of patent applications in the UAE and is necessary given the choice provided to applicants by the ever increasing popularity of the GCC patent system.
With the ongoing efforts to improve patent law practice in the UAE, universities would be well advised to ensure that their IP policies are also sufficiently well developed and enforced to reflect their desire to undertake and commercialise research in the global market.
Faced with greater financial pressures than ever, institutions operating within the education sector are becoming increasingly commercially focused. With greater emphasis on knowledge transfer and collaborations between institutions, the importance of protecting IP has a major role to play.