مکانیسم های حفاظت از مالکیت معنوی در همکاری های پژوهشی

A set of US-based companies is investigated regarding the effectiveness of intellectual property protection mechanisms (IPPMs) in the formation of research partnerships. Patents are the most frequently used IPPM to protect both background and foreground knowledge in partnerships. Other IPPMs are used to protect know-how, especially in the early, forming stages of a partnership. Existing IP titles are quite useful when negotiating new partnerships. IPR negotiations are reported to be more complex in horizontal partnerships and when universities are involved.

Research partnerships involving firms, universities and, less often, government agencies have grown in numbers and in importance in most industrial nations. This nearly two-decade old phenomenon is the result of a number of factors including, but not limited to, the complexity and speed of technical advance and the globalisation of the world economy. Public policy has shifted over this period, especially in the United States, from discouraging such relationships on antitrust grounds, to encouraging new research joint ventures (RJVs) by modifying antitrust regulations.1 The Department of Justice and the Federal Trade Commission (FTC) have adopted specific guidelines for companies to receive limited indemnification should antitrust issues arise during partnership activities.2 Research partnerships are complex organisational arrangements. They take many forms ranging from infrastructures to support the informal sharing of information among partners to the creation of entirely new research entities. Some include large numbers of firms joining together to set industry standards. Others are truly one-on-one research ventures with specific technological goals. Still others are specific product-focused partnerships with either customers or suppliers aimed at solving a particular problem and thereby generating more business with just one other firm. Intellectual property protection mechanisms (IPPMs) – such as patents, copyrights, trademarks and trade secrets – are considered to be critically important to research partnerships because sharing of information is key not only to the initial formation of the research partnership, but also to its ability to complete successfully the designed research. Extant economics and business literature anticipates that the use of IPPMs in research partnerships depends on many factors relating to the type of knowledge to be protected, the kind of competition in the specific industry, the organisational characteristics and culture of the owner of the knowledge as well as of its partners (e.g. competitors, suppliers/buyers, universities), the nature of the partnership, the objectives of the partnership and the position of the partnership in the continuum from the early planning stage to termination (Hertzfeld et al., 2001). Yet, there is a conspicuous absence of empirical analysis, beyond anecdotal information and case studies, about the use of different IPPMs in research partnerships, the role that these mechanisms are expected to have and the relative effectiveness of these mechanisms in protecting intellectual property in a research partnership context.3 Our exploratory research in this area was intended to begin to fill this conspicuous void, accounting for all aspects of intellectual property in formal collaborative R&D agreements. This paper presents a set of results from a multi-year, multi-faceted project on IPPMs. It describes findings from a sizeable set of firms that were investigated with regard to their assessment of the role and effectiveness of IPPMs used in the formation and execution of research partnerships. The samples of surveyed and interviewed firms include large, diversified US-based companies. All in all, our findings confirm the view that resolving issues of IP protection is a fundamental consideration for all partners. While there is strategic variation among firms regarding the way they approach the issue of IPRs in research partnerships, our evidence does not, however, indicate that this has been an issue presenting insurmountable problems for large, diversified companies. Patents are found to be the most frequently used IPPM to protect both firms’ existing technologies when entering into an RJV (background knowledge) and the technology created by the RJV (foreground knowledge). Other IPPMs, and especially trade secrets, are also used extensively to protect know-how and tacit knowledge, especially in the early, negotiating stages of a partnership. Existing IP titles – especially patents – are reportedly quite useful when negotiating new RJVs. Prior experience with the specific research partners facilitates the formation of a new collaborative R&D agreement. Finally, IPR negotiations are reportedly more complex in horizontal RJVs and when universities are involved. Almost without exception, the sampled companies expressed serious concerns in reference to their recent experience with universities, especially with regard to negotiating IPR agreements with university technology transfer offices. The remainder of the paper is organised as follows. Section 2 considers conceptual issues related to the protection of IP in research partnerships. Identification of these issues will lead to a better understanding of the complexity of IP-related activities associated with the organisation of research partnerships. The design of the study and the data collection process are described in Section 3. Section 4 discusses our survey and interview findings. Section 5 presents a summary of an exploratory econometric analysis of a portion of these data relating to the importance of patents in protecting background and foreground knowledge in partnerships. Finally, Section 6 concludes the paper with summary remarks.

The results in this paper confirm the hypothesis that IP protection is a fundamental consideration for all research partnership members. While there is strategic variation among firms regarding the way they approach the issue of IPRs, however, the evidence in this paper does not indicate that this has been an issue presenting insurmountable problems for large, diversified companies with specialised legal resources. If such firms consider it beneficial to engage in research cooperatively, IP protection is one of several negotiated problems but typically not the ‘showstopper’.17 Patents are the IPPM most frequently used by firms to protect both background knowledge and foreground knowledge in research partnerships. Exploratory econometric analysis suggests that patents do not have a homogeneous effect in IP protection. Rather, the use and presumably effectiveness of patents, at least in the context of RJVs, is not independent of the experience of the firm with such an organisation form. In order of general importance, patents are followed by trade secrets, copyrights and trademarks. Virtually all firms surveyed and interviewed reported that they routinely rely upon some form of IP protection to guard know-how and tacit knowledge carried by their employees, especially in the early stages of exploring the possibility of a partnership with other firm(s). Such protection may include confidentiality agreements, non-disclosure agreements, or non-compete agreements or all of the above. Often overlooked as a form of IP protection, the routine use of such early stage agreements is, perhaps, even more effective than patents during the research partnership. Firms stress the importance of using existing IP titles – especially patents – when negotiating entry into new RJVs. The use of existing patents as ‘currency’ seems to be even more important for small firms to substitute for a lack of widespread market recognition. The use of patents as bargaining chips is in agreement with other recent literature that has substantiated the role of intellectual property rights (IPRs) as a means of avoiding hold-up problems (Hall and Ziedonis, 2001). Prior experience with the same research partners – companies as well as universities – facilitates the formation of a new collaborative R&D agreement by reducing red tape and by speeding up negotiations on intellectual property issues. IPR negotiations were reported to be more complex when other firms in the same industry(ies) are involved in the venture (i.e. horizontal RJVs) as well as when universities are involved. With respect to the latter, industry sounded especially concerned with the increasing ‘aggressiveness’ and ‘greediness’ of universities in their negotiations with firms over IP for expected research outputs from the partnerships, an observation stressed by Siegel et al. (2003). University–industry relationships concerning intellectual property ownership and rights have reached a critical point. Negotiations have become very strained and much more difficult to resolve in recent years. The major issue is on value and income from IP and on overcoming the different perceptions of firms and universities. It also appears that the formation and staffing of special offices within universities to handle these negotiations has, from an industry viewpoint, created additional tension and difficulty in completing these agreements. There are bright spots too. A seemingly successful solution has been the development of long-term, formal strategic partnerships with a few specific universities that cover a multitude of situations and provide a flexible and predictable base for cooperation. Moreover, the frequently documented tension between academic needs for timely publication of research results and the needs of firms for keeping results private did not appear to be an insurmountable problem. The interviewed firms have reportedly found ways to work around this. Views were mixed regarding the extent to which foreign firm involvement in a research partnership increased the complexity of IP negotiations. For the most part, European firms were considered easier to deal with in collaborative R&D than East Asian partners. Views were also mixed regarding the use of ‘boiler plate’ IP protection clauses in contracts for collaborative R&D. Several firms reported that prior experience has resulted in the use of standard forms as a starting point upon which they can build upon more or less extensively depending on the case (e.g. the nature of the technology, of the partner and of the partnership itself). These results have important implications. One implication is that incentives for cooperative R&D are very much affected by the ability of firms to protect their intellectual property. Although IP protection was not seen as a showstopper in the case of large, diversified companies, the question is still open regarding the extent of its importance to smaller firms in negotiating new RJVs. Another implication is that the exclusivity given by analysts from a variety of disciplines to patents when studying IP issues in technology-based firms is unjustified. Many other IPPMs, especially trade secrets, are being actively employed while negotiating and undertaking cooperative research. A third implication is that, in addition to their traditional role as mechanisms to protect intellectual property, patents have now become bargaining chips to gain entrance into desired partnerships and influence the direction of the cooperative activity. Important implications relate to university–industry collaboration. To the extent that the reported characterisation of aggressiveness and frequent overestimation of the value of university IP for short and medium term returns is correct, it may simply reflect temporary adjustment problems for universities to an environment significantly different from the one they are used to. It may, however, also reflect deeper adjustment problems that have to do with the compatibility of the university organisation with collaboration with industry. Nevertheless, several firms reported successful solutions to the negotiation problems with universities, hinging on the ability to maintain longer term relationships. Finally, it is fair to say that efforts to create model contracts for cooperative R&D – see, for example, the European Framework Programmes – are bound to be successful only to the extent that they provide a minimum acceptable standard. While several firms reported that prior experience with R&D cooperation has resulted in standard IP protection rules upon which they build more or less extensively on a case-by-case basis, no firm reported using ‘boiler plate’ contracts for collaborative R&D. This agrees with what appears to be the practice in Europe where partners in government funded cooperative R&D ventures tend to sign customised side agreements regarding IP protection in addition to the mandated common basis.