Protecting Intellectual Property in the Research and Manufacturing environment

17 April 2018, Pretoria – Intellectual property, including patents, trade marks, registered designs, copyright and know-how, has long been considered as essential for fostering innovation. This is due to the ability of the IP to generate revenues (for example, through licensing), encourage synergistic partnerships and create a market advantage for the owner of the IP.

According to a report entitled, ‘Is intellectual property important for future manufacturing activities’ by the Government Office of Science in the United Kingdom, the use of formal IP rights protection mechanisms by firms has increased in importance globally during the past 40 or so years, due to the rise of the knowledge economy.

Speaking at an industry event hosted by the Council for Scientific and Industrial Research (CSIR), named, “Technologies Available for Licensing”, Spoor & Fisher Partner, John McKnight, commented “There is an increased use of IP and particularly patents, worldwide, especially in the manufacturing industries. For IP holders in industries such as these, the licensing of IP to a third party has by far been the most common form of IP commercialisation.”

According to a National Science Foundation-backed study in 2014, 49% of manufacturing and service firms used IP obtained from external sources to develop their new products and services. In many cases, the patents behind the technology served as the legal support around which joint ventures and strategic partnerships were constructed.

“From a legal perspective, being the owner of a valuable IP portfolio, which is properly managed can result in the owner being the recipient of significant overtures for joint ventures or strategic alliances, be they from the public or private sector. Each approach is always judged on its merits but in our experience, it often proves to be of considerable value to the IP owner,” said McKnight.

In terms of commercialising, it always remains the prerogative of an IP owner to self-commercialise but in effect, this means the owner must be resourced to research, design, test, procure, manufacture, store, distribute, market and sell a product incorporating the IP. Resource would also be required for product support and returns.

More often than not, this lies outside of the skill set of the technology creator and so using third parties who have this resource is often the best way to commercialise technology. However, the importance of choosing the correct partner in the exploitation of IP cannot be overestimated. “It is critical that a due diligence is conducted aimed at determining if the third party is financially sound to support the commitments it is about to undertake and whether it understands the importance and value of IP. “ added McKnight.

With the growth of Science and Technology in South Africa, partnering with an organisation such as the CSIR, offers new modes of accessing the IP behind their technology, particularly in the areas of research and manufacturing.

CSIR Materials Science and Manufacturing Research & Development Outcomes Manager: Phumuza Langa also added, “We see this as a move in the right direction to increasing technology transfer activities and ensuring that potential commercial partners have sight of technologies available for licensing.”

“Quality IP helps increase certainty in the marketplace and greatly assists in moving the technology into commercialisation. It is important for inventors to understand that IP is a high value asset and should be managed accordingly.” concluded McKnight.

Date published: 17 April 2018
Author: Spoor & Fisher

Tags: intellectual property research manufacturing