technology transfer and competition law: exploring … · competition law: exploring policy...
TRANSCRIPT
Technology Transfer and Competition Law: Exploring Policy
Pointers for India
Prof. Anil B. Suraj
IIM Bangalore
1st May, 2012
Issues
• To initiate a discussion on the following: – Nature of Competition Law, and that of IPRs
– Process of transfer of technology and its unique challenges
– IP and Competition related tech transfer policy challenges
– Are there positive policy trends for India to consider?
A. B. Suraj, 2012
International pulls of Competition
• Core principles of Competition Policy & Law = focus on local economy and welfare
– Efficiency + consumer welfare + innovative technology development + market integration and de-concentration + encouraging of SMEs
• International focus on multilateral rules for = Definitions; Institutions; and Procedures
– UN + UNCTAD; OECD; WB; WTO = Policy coherence?
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Disparate regional factors
• What could affect “Competition” in an economy? – Overall Social, Economic & Industrial policy framework – State monopolies; regional development; USOs; privatization – Tariffs + Foreign investment policy regime – “Workably competitive” markets presumed as beneficial
• Inherent “conflicts” = need policy coherence:
– National priorities vs. International uniformity – Public interest of efficiency vs. Consumer welfare and equity – Objectives of Sector-based regulation and standards vs. Overall
pro-competitive policies and related goals – Licensing autonomy of IPR laws vs. Precluding RBPs
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The IP “Intangibles”
Goodwill and brand reputation
Acquired and intuitive know-how
Scientific, industrial and consumer acclaim
Stronger balance sheets – short and long-term valuations
Traditional “prominence” enjoyed in region/sector
Each of the above forms an exclusive dimension of IPRs
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Pressures of IP Enforcement
• IPRs and Global recognition
– IPRs are inherently territorial in nature
– National systems and interests continue to preside
• IPRs = fiercely competitive usage; justifies criminal remedies too – Copyrights and TMs violations
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Intellectual capital & assets
Key Principles:
Aggressive pursuit of IP protection – internal and external Visibility and full exploitation
Role of Intellectual assets in business alliances and joint ventures Inorganic growth directions – e.g., “Innovation
market” analysis
Research clusters – high potential + competitive
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Legalese of Tech Transfer
• “Technology” = wide ambit including operational know-how – Mutuality, Exclusivity, and Adaptability
• Mode = contract-based licensing
– Differing levels of enforcement – JVs; Tech assistance; Project Management; PPPs
• Defined outcomes = products; trade; and capacity
– Fine balancing strategy required – between being restrictive and allowing direct competition
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IP & Offshore Collaborations
Typically of three types: Captive entity – wholly owned subsidiary – IP is fully owned by
Parent
Joint venture – a new combined company – IP is based on the Shareholding Agreement ○ BOT/BOOT/BOOST Model – involves transition risks
Contracting – with a local entity – enforcement with due diligence – e.g., Confidentiality; Parent-subsidiary relations
Determining factors = cost, commitment, control,
flexibility and liability models
A. B. Suraj, 2012
Transfer of Public funded Technology
• The Protection and Utilisation of Public Funded Intellectual Property, Bill (2008) – Instructions for Technology Transfer and IP utilization regime – 1/3rd royalty sharing mandated for the inventor
• University and Small Business Patent Procedures Act
(Bayh-Dole), 1980 – USA – Permits universities, not-for-profits, and small businesses to
obtain title to inventions developed with governmental support
– Allows government-owned, government-operated laboratories to grant exclusive licenses to patents
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Case 1
• French MNC – tech transfer JV with PSU in India – Involves “adaptation” and “fabrication” by SMEs – SMEs’ IP preparedness/hygiene a huge concern! – Highly restrictive form of licensing and lack of “adequate disclosure” in implementation
• Policy pointers?
– Importance of technical know-how and confidential data (especially, trade secrets) – Indian position?
– Public sector and IPRs – public-interest framework – IP awareness and management eco-systems
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Case 2
• Transfer of traditional knowledge owned by local tribes – Involving local/institutional intermediaries
– High prospects of commercialization – local and international
• Policy pointers? – Issues of “equity”, “access” and “fairness”
– Commercialization framework with due representation of all stakeholders
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Case 3
• Independent inventors vs. Resourceful potential licensees
– Involving specific technological patenting
– High value for commercialization, but lacks local industry demand – high-tech sector oriented
• Policy pointers?
– Lack of an enabled ecosystem for technology transfer
– Minimum guarantee of equitable terms in Contracts?
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Contractual and IP risks
• Sharing regime + sustained ownership
• Disparities in applicable laws & IP rights
• Identify, define and document – processes and products
• Due diligence & IP Valuation
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Risks …
• Enforcement – involves local issues too
• Employer-employee relations – towards a framework of trusteeship
• Data protection and security
• Dispute settlement and arbitral enforcement
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THANK YOU
A. B. Suraj, 2012