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Managing the University IP Office

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Presentation on theme: "Managing the University IP Office"— Presentation transcript:

1 Managing the University IP Office
Marta Catarino TecMinho Universidade do Minho Nairobi, the 31st March 2009 Regional Forum on the Role of Patents and the PCT in research in Developing Countries

2 Agenda Different IP/TT Office Models Defining a model for a Tech Transfer Office Reaching the market through Entrepreneurship

3 The Challenge Knowledge transfer is stimulating communication between two very different cultures.

4 The Challenge The Technology Transfer Office (IP Office, Knowledge Transfer Office) provides this much needed support.

5 How to manage TT? New Knowledge generation Application TT - R&D centres - Universities Scientific know-how and competencies (knowledge, vision,...) Service provider Competencies?(mixed…) Industrial know-how & competencies (technology, market,...) Industry companies start ups - spin-off - projects

6 TT by external providers
Different TT models 1 TT by external providers New Knowledge Application 2 Integrated TT (company with R&D centre, Univ. spin-off) generation TT New Knowledge generation Application 3 TT to “sell” knowledge TT New Knowledge generation Application 4 TT to “buy” knowledge TT New Knowledge generation TT New Knowledge Application

7 Functions of a TTOffice
Different TTO models Functions of a TTOffice Research information and financing Managing R&D information Context analysis – legal and market Managing industry relations Project Management Invention disclosure IP Portfolio management and evaluation Contract drafting and negotiation Identifying best exploitation route Knowledge Transfer Management Patent drafting and application Negotiating licensing terms Defining profit/equity Company Functions

8 Models Different TTO models Model Emphasis Legal status Legal model
Ownership Policies Governance Legal department of University Administrative model Administrative processes, relationship with research base, contract research Dedicated dept. of University Business model Managing & commercialising IP, collaborative research, business development, spin-offs, seed capital Subsidiary of University Outsourcing Bundling (gathering) IP Independent company

9 Agenda Different IP/TT Office Models Defining a model for a Tech Transfer Office Reaching the market through Entrepreneurship

10 Values, resources and objectives
Defining a model Values, resources and objectives Audit and evaluate resources* Culture/context Relative weight of University Departments Areas of scientific excellence Previous experience in TT Researcher attitude *tangible and non-tangible

11 Political, Environmental and Legal Context
Defining a model Political, Environmental and Legal Context Consider: Available Financing structures, levels and opportunities Governmental policies and strategies Legal Context: IP ownership and regulations Regulations for the exploitation of R&D results Economic Environment: Labour market Type of Industry

12 Mission, Strategy & Objectives
Defining a model Mission, Strategy & Objectives Should be: Compatible with the University mission Clearly defined, clearly defended, clearly communicated Sufficiently explicit to provide directions for more detailed actions and procedures Supported by all stakeholders Periodically reviewed

13 Internal Objectives Defining a model What are the TTOffice objectives?
Generate research funding Encourage innovation in faculty, researchers and students Reward, retain & recruit faculty and students Create employment opportunities in S&T areas for graduates Facilitate the setting-up of spin-off companies

14 Aligning the Structures
What does the University expect from TT? Who is responsible for which objectives? What level of responsibility? How are TT processes structured and supported? What processes exist to identify and evaluate IP? What processes are in place for its exploitation? Who decides on how it should be exploited? Using which criteria? How are these processes controlled?

15 Main operational difference
Faculty service Profit generation - Raising awareness - Each disclosure raises the same interest - Researchers are key - Happy researchers - Focus on profit - Pressure to concentrate on potentially profitable disclosures - Professionalisation - Few very happy researchers A combination of both is possible (and desirable)

16 Main operational difference
Examples of Faculty service: Organize meetings between researchers & industry Recognize and disseminate the impact of research Active contribution to University seminars, courses, workshops. Publication of “how to” guides in industry relations Legal support in managing industry funding Allow enough freedom for researchers to get involved in industry relations Profit generation - Focus on profit - Pressure to concentrate on potentially profitable disclosures - Professionalisation - Few very happy researchers A combination of both is possible (and desirable)

17 How to start? (the Research side)
Know the rules of the game: internal context, external context, Mission, strategy and objectives Know what you have to offer Know who the clients are and what are their needs Identify (and involve) who can support: financing schemes, governmental support, development funding, industrial associations, chambers of commerce, banks…

18 Companies Who must be involved? Government National IP Office Service
providers (IP Lawyers, consultants) University & Research institutions Companies Financing institutions (VC, banks) Incubators, S&T Parks

19 Companies Who must be involved? Government National IP Office Service
providers (IP Lawyers, consultants) University & Research institutions Companies Financing institutions (VC, banks) Incubators, S&T Parks

20 Innovation Ecossystem: All stakeholders are implicated

21 Remarks on the regional level
Importance of structuring partnerships at regional level (top-down approach), as adequate framework for bottom-up long-term partnerships Importance of measuring outcomes of strategic partnerships in the regional context (cost-effectiveness) Design new partnerships or cooperation models inspired in the best practices available, but always addressing the specific regional situation (it is not possible to create “Silicon Valleys” everywhere!)

22 Back to research context…
Screening & Evaluation IP Protection & Management Marketing Business Dev. Deal making Is it feasible? Is there a market? Is the researcher committed? Do we own it? Is it patentable? Can IP be enforced? What can we make public? Is it too early? Is it feasible? Will it be too expensive? Does it have other applications? Do we have enough intormation? Do we need to reduce to practice? How to draft the application? How to present information? What tools to use for marketing? How should the clients be reached? What are the markets? What is our segment? How to target ir? Where and how to reach possible partners? Do we have a team? Is the business model sound? Have companies expressed interest? What countries/regions? Are NDAs in place with every contact? Do agreements secure IP? Licensing or spin-off? Exclusive or non-exclusive licenses? Does the business plan make sense? How to approach the client? What information is needed? How much is the IP worth? What is the vale proposition? How to negotiate? Research Proof of concept Industrial Prototype Business model Market What are the licensing terms? What is the impact in future research?

23 Intellectual Property Policy
A clear (and reasonable) IP Policy is vital to the establishment of an effective Tech Transfer activity within the University. It allows To define ownership (University? Researchers? What about students?) To motivate researchers by providing incentives To clarify interinstitutional collaboration To facilitate understanding by industry of the ways of University…

24 Invention disclosure If the TTOffice is to manage the IP Portfolio, it must know what the University is doing. Is there a clear process for disclosing new inventions that might be patented? Is this information centralised? Meetings with Research Centre Directors? Visits to all researchers? Internal “call for papers”?

25 Invention disclosure The disclosure has 2 objectives: Internal: Identify technologies/know-how from the University in order to know what can be transferred to industry External: comunicate to industry what the University has to offer – Technology Marketing

26 Invention disclosure Internal: Identify technologies/know-how from the University to transfer to industry – who is doing what? Is it new? Does it have advantages? Can it be applied and by whom? Can it be patented? External: communicate to industry what the University has to offer – who can be interested in this know-how? How can it be applied? What are the expected results? What is the roadmap to bring it to market?

27 Invention disclosure If the previous questions can’t be answered (in some way), it’s not an invention disclosure The less resources you have, the earlier in the research process you have to work on Scientifically valuable and patentable results may not be commercially relevant Lack of market kills the business Industrial validation by companies asap! Protect IP whenever possible !

28 Clearly defined IP Policy
Some Best Practices Invention pipeline Identify most promising scientific areas Thorough and timely Disclosure to enable IP protection Clearly defined IP Policy Who owns the technology? Which rights? Investment in support to research and TT Professional team and professional management of processes Internal delimitation of responsibilities

29 Best Practice Guides Best practice guides (in english) available
in our website:

30 Agenda Different IP/TT Office Models Defining a model for a Tech Transfer Office Reaching the market through Entrepreneurship

31 3 levels of Academic Entrepreneurship
Entrepreneurship at UMinho 3 levels of Academic Entrepreneurship Entrepreneurship - a subject itself Training and supporting entrepreneurship - starting new businesses  spin-offs The entrepreneurial university - creation and maintenance of an enterprising culture

32 Entrepreneurship at UMinho
Entrepreneurship activities are carried out following 3 axis: Raising Awareness Training and Coaching Direct support

33 Phases of spin-off creation
Direct support Phases of spin-off creation University University/Project Project/Company Company Research Proof of principle Feasibility Proof of concept Market & Technology Preparation Market & Product Venture Production & Business Development Scouting Screening Support Participation and/or continued support Go on / No go License /Spin-off

34 Awareness and motivation
Direct support Entrepreneurship is about people: Awareness and motivation is essential!

35 Examples of Awareness Activities

36 Examples of Awareness Activities
Society in general Seminars and awareness sessions Ideas competition (InventUMinho) for groups of students + teacher from Secondary Schools

37 Examples of Awareness Activities
Graduate students Seminars and awareness sessions Project Based Learning including evaluating market potential of technologies and pre-Business Plan to start companies Campus companies

38 Graduate students and post-grads
Training and Coaching Graduate students and post-grads Seminars and awareness sessions PhD curricula including Entrepreneurship topics + elaboration of a BP for the commercialisation of the results of the PhD programme

39 Graduate students and post-grads
Training and Coaching Graduate students and post-grads Technology Commercialisation Programme: 5 month course where teams of researchers + business students elaborate a plan for the commercialisation of R&D results (Friday afternoons + Saturday morning)

40 Spin-off creation Entrepreneurs must have a link to the University of Minho: teaching staff; researchers; under-graduation and post-graduation students; recent graduates; technical personnel.

41 UMinho Spin-offs (May 2004 until Sept. 2008)
Field BIOTEMPO Biotechnology SIMBIENTE Environment ULTRAVISIOGRAPH Medical devices CPC UBISIGN ICT VINALIA BYZYMO EDIT VALUE Business Management WIDECOLOUR Physics PMINNOVATION TECNOWAVE Civil Engineering MICROPOLIS Polymer Engineering GLYCONSTRUCT SOMATICA Spin-off Field ACUTUS Physics SINERGEO Geology GEOS ARBORVALUE Biology BIOTEKNICS SAR Automation DNAMIMICS Biotechnology EDS Polymer ESI Mechanics PURMEDIDA EXVA Video Analysis SPECTRALBLUE Communications X-TREME MATERIALS New materials KEEP SOLUTIONS Informatics MEINTEGRA Sociology

42 UMinho Spin-offs

43 An entrepreneurial University
Establishing an entrepreneurial culture Rewarding entrepreneurship Getting connected to the market Supporting potential entrepreneurs Implementing a dual approach towards knowledge valorisation

44 Focus on quantity: support all ideas
The dual approach Focus on quality: mechanisms for identification of high potential ideas for customised support Focus on quantity: support all ideas MARKET/COMPANY IDEA

45 Marta Catarino Thank you very much for your attention!
Je vous remercie de votre patience! Marta Catarino TECMINHO Universidade do Minho Portugal

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