It is claimed that modern biotechnology addresses many of today’s problems in agriculture, food production, medicine and environmental quality. However, most of the new and emerging biotechnologies reside with private sector companies in the industrialized world. Technology transfer offices may contribute to the accessing, handling and management of these new technologies for developing countries.

Recent changes in global treaties such as General Agreement on Tariffs and Trade (GATT), Trade-related Aspects of Intellectual Property Rights (TRIPs), World Trade Organization (WTO), International Union for Protection of New Varieties of Plants (UPOV) and Convention on Biological Diversity (CBD) require that signatory countries respect the Intellectual Property Rights (IPR) of other member states. Technology transfer in the global biotechnology arena is now changing from an informal and free exchange of material to more formal agreements, covering both research and commercialization.

A framework to allow technology transfer to the public institutes of developing countries must be stimulated and developed. This has been addressed in some countries by the establishment of technology transfer offices (TTOs). TTOs are often located in a governmental unit associated with some aspect of agriculture. These offices work with researchers, allowing them to develop new crop varieties, and with government officials to develop appropriate laws and policies for intellectual property protection. They develop means for providing plant variety protection, biotechnology invention protection and intellectual property management.

This article addresses the establishment, management, institutionalization and sustainability of TTOs, using case studies from the USA, Brazil, the Philippines and Indonesia.

Possibilities of a technology transfer office

Developing countries, on the other hand, usually do not have governmental offices to handle copyrighting, trade marking or patenting. Developing countries that do have such offices usually lack sufficient and trained staff. Furthermore many developing countries do not have laws providing intellectual property protection. Before GATT and TRIPs were enacted, many developing countries had no or little awareness of intellectual property value, management or protection.

Technology transfer in the United States was promoted by the Bayh-Dole Act of 1980. This legislation allowed universities and other publicly funded institutes to licence technologies from research projects that are directly funded from federal sources. It provides the legal platform for universities to commercialize the technologies they generates. Michigan State University (MSU) is one of the premier land-grant universities in the USA, with an average annual research budget of approximately US$ 200 million. The Office of Intellectual Property (OIP) was established at MSU as a TTO in 1992. It handles intellectual properties developed by MSU faculty, staff and students.

According to MSU policy, inventions developed using university facilities or funding under MSU control are the property of MSU. These inventions are to be reported to the OIP, which reviews the technology with the inventor(s). If the filing of a patent is considered necessary, a patent attorney is commissioned to perform an initial search. The results of this search are reviewed together by the OIP and the lead researcher and if the invention is deemed patentable, then the potential commercial value is determined.

If the invention appears to have commercial value, the patent attorney is instructed to prepare a patent application and the OIP begins searching for an industrial partner or licencee. The optimal end result of such a process is an industrial partner with a successful product and a steady royalty payment to MSU, which is shared by the inventor, the inventor’s academic unit and the university.

Over 540 inventions have been processed by the OIP since 1992, including technologies in human, animal and plant health as well as the physical sciences and engineering. In 1999, the OIP negotiated 30 licence agreements in animal health, new crop varieties, human health, plant biotechnology and chemical engineering. The operating budget is approximately US$ 1 million and royalties of approximately US$ 20 million are anticipated, of which the majority are derived from an earlier licence for the cancer treatments cisplatin and carboplatin.

Royalty income is not secure because protection may expire on a licenced technology and new ideas from elsewhere may make currently licenced technologies obsolete. The office holds joint seminars providing information and training in the handling of technologies and inventions.

Establishing and operating a technology transfer office

TTOs can play multiple roles in research and development (R&D) institutes:

• Protection of intellectual property. TTOs review new inventions by an institute’s research staff and assist them in determining the patent status of the technology. Assigning a financial value to the research is important for approaching industry with the aim of licensing the technology.
• Revenues through licensing of intellectual property. TTOs can assess the commercial potential of intellectual properties and market these technologies through licensing, so as to generate new revenues for the institute. Licencing of technology involves promotion and marketing, negotiation, implementation and execution of the actual licence agreement, including royalty payments.
• Education and awareness. TTOs can conduct educational programmes to make scientists and research administrators aware of the correct ways to handle new inventions, including issues such as official lab books for record-keeping, confidential disclosures, publication guidelines and agreements.
• Networking. TTOs can stimulate networking by maintaining a database of new technologies with commercial potential and sharing this with other institutes under conditions of confidentiality. The office may also facilitate networking with technology transfer associations, training and service organizations.
• Creation of new start-up companies. TTOs can help in the establishment of new start-up companies through links with venture capital firms in countries where these are available. Office staff can help to address any conflicts of interest which may arise between researchers’ duties to their parent institutes and their spin-off company.
• Institutional policies related to technology transfer. TTOs can help develop and enforce policies dealing with inventions, discoveries and intellectual properties that are generated by the institute.
• Service to society. Society supports public institutes indirectly through the payment of local and state taxes. TTOs may stimulate access to the knowledge and biotechnologies developed in the institutes for the benefit of society.

The second aspect relates to newly developed biotechnologies and the manner in which they are distributed. Providing the biotechnology at no cost to the farmer may be the most appropriate way to distribute a new product. However, there is a chance that someone else will patent or protect the new biotechnology and restrict distribution by the original developer of the biotechnology. The primary developer can protect the new biotechnology through patenting and then distribute it as preferred. The new biotechnology, with protection, could then be given at no cost to some, could be provided at low cost to others and could be licenced for distribution to a third group.

Technology transfer in Brazil

Three mechanisms are in place to help in the implementation of the IPR policy: an institutional national committee, composed of representative members of staff; local committees formed in every research centre; and a centralized unit, the Intellectual Property (IP) Secretariat. The national committee started work in 1997 and has been important in the initial deliberations about general policies and other IP issues relating to processes, products and technologies developed by EMBRAPA’s research programmes. The committee prepared guidelines and mandatory documents, for instance, to make researchers more aware of their responsibility to safeguard information and maintain confidentiality with consultants, grantees, visitors, and students who develop joint projects with EMBRAPA’s staff members. The committee has also worked on guidelines about the use of laboratory books to ensure verification of data.

Developing technology transfer in the Philippines The University of the Philippines (UP) educational system established the University Intellectual Property Office (UIPO) in 1997 in an effort to coordinate technology transfer and IP management between six autonomous campuses located nationwide: UP Diliman, Manila, Los Baños, Visayas, Mindanao and Open University. While the UIPO does not report to any particular government office, it operates in coordination with the Intellectual Property Office (IPO) the national office for handling IPR in the Philippines. The UIPO is in its infancy, and there is some difficulty in determining the exact number of inventions processed, patents granted, and licences and collaborative research and development programmes negotiated. Recent budget cuts may delay the development of this office even more. However, it is anticipated that the office will be able to handle most situations within two to three years. At present, an inventory of university inventions of all the member campuses is being developed in the form of a central database. The UIPO is reviewing and preparing revised IPR policies. The immediate tasks facing UIPO are to continue raising awareness of IPR among university personnel and to ensure that the full potential in terms of marketability and use of these works may be achieved. A longer-term goal is to make the UIPO a revenue-generating office for the university in order to fund more projects, inventions and research of university staff. Carmelita P. Yadao-Guno & Luisa del Rosario-Felizardo

EMBRAPA’s policies and decisions are administered by a set of general protocols (statutes) which are approved by the board of directors. In the specific case of IP rules and regulations, explanatory courses and video conferences were organized during the first two years to raise awareness among researchers and clients.

Local committees are responsible for reviewing patent or plant variety applications and for determining which are to be filed for protection. Scientists can approach the local committee for advice regarding the disclosure and dissemination of information.

The IP Secretariat was inaugurated in 1998 and serves as a general coordinating structure for the management of EMBRAPA’s proprietary assets and for the licensing of third parties’ assets. In addition, it serves as the policy-making body with a responsibility to keep IPR policy up to date with rapid global developments. The IP Secretariat also participates in national discussions related to intellectual property, such as the ongoing negotiations for a review of TRIPs and the adaptation of intellectual property matters, such as the importance of indigenous knowledge for the implementation of the CBD.

Most of EMBRAPA’s current technology is not appropriable and is directly released to clients through training courses, congresses, publications and field days. The impact of technologies is measured by the rate of adoption and by the increased competition and productivity observed in the Brazilian agricultural sector over the past two decades.

One of the tasks for EMBRAPA and its IP Secretariat has been to develop and implement a set of regulations to adapt the operation of its breeding programme and seed business to the plant variety protection environment. Farmers who had previously received improved germplasm at minimal cost found it difficult at first to understand the changes. Now, two years after implementing the new rules, the seed market has accommodated itself to serve all kinds of farmers. Protected varieties coexist with older public domain varieties, which still produce very well. Royalties are paid without problems when the cultivars carry improved characteristics which give farmers better productivity or better quality price. At present only nine species can be protected.

Transgenic plant varieties have not yet been commercially grown in Brazil. An international company applied for the commercialization of Roundup Ready soybeans in 1998 and received approval by the National Technical Biosafety Committee and the Ministry of Agriculture. However, an injunction by non-governmental organizations (NGOs) has prevented the commercial release of the seeds. It is difficult to speculate on how the market is going to react to this new technology, which will probably also introduce contract-linked seed usage. Small-scale farmers can benefit from social programmes carried out by the Ministry of Agriculture and take advantage of a special article in the Plant Variety Protection Law which allows them to propagate and distribute seeds among programme participants, while selling is not allowed. For a TTO linked to a governmental research institute such as EMBRAPA, a case-by-case approach seems to be most realistic until existing uncertainties are clarified.

Developing technology transfer in Indonesia The Intellectual Property and Technology Transfer Office of the Agency for Agricultural Research and Development (AARD) was established in July 1999. It is called Kekayaan Intelektual dan Alih Teknologi (KIAT). The office is part of the Indonesian Agricultural Research Foundation, a private non-profit organization established by the national government to facilitate technology transfer, licensing and commercialization of agricultural technologies developed through conventional and biotechnology methods. The general director of AARD serves as a member of the board of trustees for this foundation. Being a private and non-profit organization, the foundation is able to interact freely in dealing and doing business with the private sector. Funds received by the foundation are used to finance operating costs of the KIAT, royalties for researchers, research support and intelectual property (IP) protection. KIAT serves as a main focal point for technology transfer within AARD and is responsible for serving 31 agricultural research and socio-economic assessment institutes of AARD located across Indonesia. Several licence agreements to commercialize a wide range of agricultural technologies, such as bio-fertilizer, bio-bactericide and hybrid maize, are already being negotiated. KIAT has licenced Rhizobium based bio-fertilizer for soybean to a private company, for production and sale throughout Indonesia. The company pays royalties and provides quality control services. A series of hybrid maize varieties has been licenced to a leading seed company owned by the government of Indonesia. This company buys parent stock of the maize and develops the market with the assistance of AARD researchers. Animal vaccine technology is also being developed. Nearly all of the animal vaccines sold in Indonesia are imported from abroad. The Research Institute for Veterinary Science in AARD has already developed several animal vaccines that have proven to be effective for Newcastle disease in chickens, as well as brucellosis in ruminants. KIAT will facilitate licensing of these vaccines to the private sector for marketing in Indonesia. KIAT will play a role in educating AARD researchers and administrators on various aspects of IP and technology transfer. The office will also facilitate the establishment of spin-off companies based on technologies generated from AARD. Djoko S. Damardjati & Tantono Subagyo

Benefits for developing countries

A TTO can make recommendations on how to handle new technologies and, if the recommendations are accepted, on implemention. The examples presented in this article are based on TTOs which have only recently become active in developing countries. Each office is still searching for the best way to work with their administrators and scientists as well as the optimal way to transfer technologies to industry.

The Indonesian Kekayaan Intelektual dan Alih Teknologi KIAT has already licenced several new technologies which would probably not have been made available to society through the usual means of distribution. The University of the Philippines’ TTO has not had as much direct impact as KIAT so far, although faculty and scientists have expressed appreciation for the office that, had it been set up earlier, it could have helped them with their research programmes. Policies being developed by this office are not only used by the university, but are also being reviewed for adoption by various government offices.

TTOs can support institutes involved in modern day biotechnology research. These offices can provide appropriate information to researchers and administrators to take the results of research forward for the benefit of the society. For a TTO to remain successful in a globally competitive environment, it will have to gain a positive and strong reputation. TTOs may prove to be an instrument for advancing technologies that benefit society.

TTOs are proving to be important in the development of an energetic, robust research community by allowing researchers to work toward serving the needs of a developing country. A major obstacle for the TTO to overcome is the idea that its activities will always generate considerable revenues and royalties. Whether an office will generate revenues depends on the quality and types of new proprietary materials developed by researchers and the goals of the office’s institute. Another misconception is the idea that a TTO will prevent the free exchange of new ideas and information, whereas in practice it may actually contribute to facilitating this exchange.

Karim M. Maredia*, Frederic H. Erbisch** & Maria José Sampaio***

*Institute of International Agriculture, 416 Plant & Soil Sciences Bldg., Michigan State University, East Lansing, MI 48824, USA.
E-mail kmaredia@pilot.msu.edu

** Office of Intellectual Property, 238 Administration Building, Michigan State University, East Lansing, MI 48824, USA.

*** EMBRAPA-Labex, USDA-ARS, Tower Road, Ithaca, NY 14850, USA.

Sources
Maredia, K., Erbisch. F. and Dodds, J. (1997), "Strengthening the Technology Transfer Framework in Developing Countries" Industry and Higher Education, June, pp. 145-149.

Parker, D., Zilberman, D. and Castillo, F. (1998), "Offices of Technology Transfer: Privatizing University Innovations in Technology Transfer". CHOICES, First quarter, pp. 19-25.

ASampaio, M.J.A. and Da Cunha, E.A.B.B. (1999), "Managing Intellectual Property in EMBRAPA: A Question of Policy and a Change of Heart". In: Managing Agricultural Biotechnology: Addressing Research Programme Needs and Policy Implications for Developing Countries, Wallingford, UK: CABI/ISNAR.