Presentation on theme: "University Industry Partnership"— Presentation transcript:
1 University Industry Partnership Guriqbal Singh Jaiya
2 Necessity of a Holistic Approach Sustainable R&D funding Long term R&D strategies Professional R&D management Proactive communication efforts Technology transfer strategies Regional development in general Market development Tax, immigration and property rights laws Good governance
3 National / International Competition: International competitiveness is key for every R&D system.Cooperation: International cooperation strengthens R&D-systems. Moreover, it creates foreign R&D demand where domestic R&D demand is lacking. Brain drain can be reduced.National needs and possibilities: Restructuring R&D systems will have to follow national needs and possibilities, but with the perspective of international competitiveness. Focusing on quality instead of quan-tity will be essential. Setting priorities means admitting posteriorities.
4 No “Stop and Go Policies” in R&D Long term: Developing R&D systems is a long term task. The political system therefore has to offer long term stability with regard to strategies and public funding. “Stop and go policies” won’t work.Beyond political agendas: R&D strategies should not be affected by political changes in governments. There has to be an understanding of R&D needs that goes beyond electoral agendas of political parties.Not only words! Strategies only become relevant when they are linked to objective based funding.
5 Regional Strategies to R&D Regional approaches: Regional approaches to R&D and to technology transfer are decisive since every region and each economic sector are facing specific challenges and opportunities. The advantage of proximity is essential.Regional Development: Fostering regional R&D means fostering regional development in general and regional authorities with regional revenues.Joint efforts: Successful R&D and technology transfer strategies have to be developed as joint efforts of authorities, universities and the economic sector. Thus, also building up mutual trust.
6 Looking for Effective R&D Funding Competition and accountability: Competitive fun-ding is crucial to foster scientific excellence. Funding of institutions should also be objective based. And: Objectives should be output targets.R&D management: Universities and research insti-tutes need professional management capacities in order to successfully allocate R&D funds.Absorption capacities: R&D funding has to take regional aspects into consideration. Not every region has the same capacity to successfully absorb R&D investments.
7 University Teaching is Key What’s most important: Graduates are the most important output of universities and thus, their most important contribution to technology transfer. There-fore, university teaching is key – also for the econo-mic development of a country and its regions.Best faculty: If university teaching is key – hiring the best faculty is even more important.Entrepreneurship: Start-ups initiated by university graduates are more important for the economic tissue of a region than spin-offs of a university. Therefore, fostering entrepreneurship has to be part of standard curricula.
8 Including Technology Transfer in R&D Explicit and comprehensive: Universities and research institutes should develop explicit technology transfer strategies. Moreover, technology transfer has to be part of an overall R&D management.Basic and applied science: One of the best ways to be successful in technology transfer is to link basic and applied science.Technology transfer is a give and take! Integrating business partners and their specific needs already in the design of research projects facilitates the transfer of innovation.
9 Demand Driven – Innovation Driven! More than improvements: Demand driven R&D mostly improves existing technologies or processes. Innovation driven technology transfer has to be enhanced as well in order to achieve real innovation.Seed money: Public money will be needed to support innovation driven technology transfer and proof of concept projects.Matching responsibilities: Industrial partners should contribute financially. Matching funds are the most successful way to foster innovation driven technology transfer.
10 Specific Challenge: Addressing SME Sustainable economic development: SME are key for a sustainable economic tissue of a region. Special attention therefore, has to be given to integrating SME in R&D networks.Special care: SME usually don’t have the resources to tackle more than their daily business. Moreover, they don’t have ties to the scientific community. Knowing their specific needs and offering concrete services therefore is decisive for successfully addressing SME.
11 Technology Transfer: Some Best Practices Regular, institutionalized contacts of universities and industrial partners can build up mutual understanding.Specific clubs of regional companies as “group of friends of the university” seem to be promising.Joint projects of research institutes and industrial partnersInternships in the industry as part of standard university curriculaIndustrial partners lecturing at the universitiesSabbaticals of university professors in the industry
12 Culture of ScienceBuilding up a culture of science: A “culture of science” is decisive for a sustainable public R&D funding – and beyond.Bridging the gap: Professional “interpreters” are needed bridging the gap between science and a broader public.Proactive R&D communication: Communication strategies have to address politicians, staffers, the economic sector and the public in specific ways.
13 Why We Want to Improve?We need knowledge and innovation based societies not only to assure economic growth in global markets, but also to cope with the global challenges of today.
14 Top 100 research universities data from Shanghai Jiao Tong University Institute of Higher EducationOthers: Israel, Finland, Denmark, Austria, Norway, Russia, Italy each 1.
15 The Super-League in 2005 from Shanghai Jiao Tong University data 1HARVARD USA11Yale USA2Cambridge UK12Cornell USA3Stanford USA13UC San Diego USA4UC Berkeley USA14UC Los Angeles USA5MIT USA15Pennsylvania USA6Caltech USA16Wisconsin-Madison USA7Columbia USA17Washington (Seattle) USA8Princeton USA18UC San Francisco USA9Chicago USA19Johns Hopkins USA10Oxford UK20Tokyo Japan
16 Types of academia-industry/business collaboration (survey based on 25 universities and research institutions)Consultations17%Training, seminars, conferences13%Organization of student, doctoral, etc. research practices11%Assisting the management of business processes8%Studies of the effectiveness of technologies/ products/services7%Creation of new technologies6%
17 Results attained by academia-industry/business collaboration Gaining new experience20,9%Making contacts with foreign organizations with similar activities16,1%Development of new research fields15,7%Initiating of new university subjects, post-graduate qualifications and courses13,4%Getting more information about the innovation needs of companies12,7%Getting actual economic information11,8%Receiving of additional funding9,3%
18 The Mission of a University Education, research and public serviceSource of discoveries, new knowledge and basic research (upstream research)Provide skilled and educated manpower to meet the developmental needs of the country.Mission of a university is to engage in teaching and research and ultimately produce a skilled workforce and knowledge to meet the challenges of tomorrow
19 The Mission of a University… Many universities, however, are accused ofBeing in ivory towers, removed from the needs of the communitypursuing knowledge of little relevance to the developmental needs of the countryproducing a workforce ill equipped to meet the challenges of industry andin general contributing very little to the practical development needs of a country
20 Investigator initiated – Discovery driven University ResearchInvestigator initiated – Discovery drivenUniversity sets priorities for future researchNew faculty are hired based on these prioritiesNew faculty investigators seek research supportFaculty act like entrepreneurs within the university seeking research support form government and private sources
21 Network of Agreements Sponsored research Federal Foundations Corporate Material transfer agreementsConsulting agreementsCollaborators who may be joint inventors
22 Stakeholders in the University FacultyDeans and Department HeadsResearchLegalFinanceUniversity RelationsAlumni Affairs and Development
23 Influences on Technology Transfer Philosophy of the UniversityEntrepreneurial vs. Risk averseExpectationsProximity/Access to venture capitalAccess to managementLocal business communityLocal assistance programsState economic development programs
24 Business Development in a University Do lots of deals, make lots of moneyRespect academic valuesInsure obligations to sponsors of researchCompliance with gov’t regulationsStay within budgetMaintain relationshipsAvoid controversy
25 Roles of the Technology Transfer Office Disclosure evaluation and patent decisionsManagement of patent prosecutionTechnology marketingLicensingManagement of existing licensesMaterial transfer agreements
26 A « UNIVERSAL » CHALLENGE A gap between Research and EconomyLimited impact of R&D on competitivenessLimited cooperation between RDI and SMEsA challenge all over the worldMost countries support R&DGvts. expect to get R.O.I. from their R&D spendingA UNIVERSAL CHALLENGE ALL OVER THE WORLD
27 A « DOUBLE » CHALLENGERes. Scientists are not motivated to work with SMEsSMEs are not motivated to work with « academic » scientistsSTRONG INCENTIVES ARE NEEDED
29 (Technology absorption) Push or Pull ?Market Pull(Technology absorption)From market needs to the labAND Back to marketNeed identified by industryLimiting step :Identifying the customerIdentifying the needBOTTOM UPTechnology PushFrom the Lab to the marketIdea of a scientistLimiting step : selling the idea (and the project) to industryTOP DOWN
30 Push or Pull ? Technology Push Give more « fancy » results but it will take more time and it is very riskyMarket pull (Technology absorption)Give less « exotic » results butmuch more frequent + a higher success rate
31 Market pull offers a potential usually underestimated Push or Pull ?SUCCESS RATE :Technology push :Low (a few %)Market PullHigh (50%, with some experience)Market pull offers a potentialusually underestimated
32 A Challenge !!! RDIs think almost exclusively…. « TECHNOLOGY PUSH » S.E.T.S(*) are more interested by« MARKET PULL »(*)S.E.T.S. : Traditional Sectors Small Entreprises
33 A 3 Partners cooperation Technological Institutes (RDIs)Provide the appropriate technology servicesSMEsIdentify the market needsManage innovative projectsThe Government (Ministries, agencies ..)Stimulate the process to boost the economyProvide incentives (for Scientists and for Industry)Provide assistanceOften provide some funding
34 Targeting SMEs The main issue is to : Identify potentially interested SMEsAND« Sell » them technology services
36 Targeting SMEs... Communicating with SMEs BUT : The most efficient way to communicate is not to present what an RDI can doBUT :To ask the manager of an SME who has had a successful partnership with an RDI to testify in front of other other SME managers
37 The « next » step… Building up mutual respect It takes some time Personal contactsUsually the first cooperation are « modest »At that stage Gvt. support is needed
38 SMEs –RDI cooperation R&D contracts Consulting Numerous way to cooperateR&D contractsConsultingTechnology « diagnostic »……Licensing
39 The role of Governments: Public-Private Partnerships
40 Governmental programs Many programs to support SMEs:NationalRegionalInternationalOne common goal : to bring assistance to SMEs to improve their competitiveness
41 Governmental programs To strengthen SMEs competitivenessAssistance for:Identifying partnersPreparing a Business PlanIPR and legal mattersTo provide some public fundingFinancial support for project preparationMatching grantsSoft loans
42 A few National Programs United States : SBAEurope :Finland : TEKESFrance : Oséo-InnovationThe Netherlands : SenterSpain : CDTI+ Numerous Regional programsEx. Flanders
43 International Programs World Bank projects on Tech. DevelopmentFar East (India, Korea…)Latin America (Mexico…)Eastern and Central Europe (Croatia, Ukraine…)European Union Framework ProgramResearch for the benefit of SMEsOther European programsEureka initiativeIntergovernmental (Mkt. Oriented, nationally funded)European Space AgencyTechnology Transfer program
44 E.U. programs for SMEs Research for SMEs (former CRAFT) Coordination of SMEs RTD co-operationERA-NETEurostarSMEs participation to RTD projects+Various supporting actionsNetwork of National Contact PointsCoordination and support actions
45 The role of Governments To create a favourable environmentFiscal lawsPatent lawsEncourage mobilityR&D funding allocation
46 The role of Governments To provide infrastructuresIncubatorsTechnology parksTo provide assistanceFinancialLegalEconomical
47 The role of Governments Incentives, Incentives Incentives….Incentives for SMEsIncentives for Scientists
48 The role of Governments A stable legal framework over a long timeA rigorous monitoring processTo follow progressTo learn (from failures)
49 Methods to Transfer Technology Training of studentsPublication of research resultsExchange of research materialsCollaborative research projectsConsortiaFaculty consultingTechnology licensingStart ups
50 Technology TransferCommercialize research results funded primarily by the federal government for the public goodRecruit, reward, and retain faculty and studentsInduce collaborations with industryPromote economic growthGenerate income to promote and support teaching and research
51 Roles of the Technology Transfer Office Disclosure evaluation and patent decisionsManagement of patent prosecutionTechnology marketingLicensingManagement of existing licensesMaterial transfer agreements
52 Criteria for Start Ups Business plan Expectation that company can accomplish goalsFaculty and staff involved have cleared conflict reviewNo equity only dealsEquity represents fair value for technology licensed
53 Stakeholders in the University FacultyDeans and Department HeadsResearchLegalFinanceUniversity RelationsAlumni Affairs and Development
54 Investigator initiated – Discovery driven University ResearchInvestigator initiated – Discovery drivenUniversity sets priorities for future researchNew faculty are hired based on these prioritiesNew faculty investigators seek research supportFaculty act like entrepreneurs within the university seeking research support form government and private sources
55 Network of Agreements Sponsored research Federal Foundations Corporate Material transfer agreementsConsulting agreementsCollaborators who may be joint inventors
56 Influences on Technology Transfer Philosophy of the UniversityEntrepreneurial vs. Risk averseExpectationsProximity/Access to venture capitalAccess to managementLocal business communityLocal assistance programsState economic development programs
57 Business Development in a University Do lots of deals, make lots of moneyRespect academic valuesInsure obligations to sponsors of researchCompliance with gov’t regulationsStay within budgetMaintain relationshipsAvoid controversy
58 Changing Role of Universities Universities key players in the Knowledge Economy. They produce the raw material for the knowledge economyUniversities are expensive institutions for any country, what ever be the level of development (investment)There is a certain expectation now that countries cannot afford to let this very important resource go unmanaged. That there must be a return on investment and that knowledge generated in universities must be fashioned to meet the needs of the country after development by others (down stream research), in many products beneficial to the community.
59 The Challenge of Universities Unable to retain qualified peopleInadequate state funding, no means of creating funding sourcesInadequate infrastructure and facilitiesGap between the outcome of university research and the stage which firms can assimilate it
60 University Industry Cooperation -Benefits to University Industry is the conduit through which the results of university research can be transferred, disclosed and disseminated to the public for the public benefitIt will bring in badly needed funds allowing the university to fulfill its fundamental mandate.Supplement the income of staff to retain talented staffProvide early exposure to universities of the inner workings of industry
61 Concern – will universities be able to fulfill its fundamental mandate Universities have evolved from “public trusts to something akin to venture capital firms” - FortuneResearch should be curiosity driven not market drivenOpen culture of sharing and publication now clouded in secrecy and driven by profitLoss of controlprivate interests may undermine the objectivity of research by causing bias, suppression of results, and even fraud
62 Benefits to industryIndustry is not usually in the business of basic research whereas that is the function of universitySource of new technologiesExpert support at lower cost
63 Concerns…University inventions are sometimes considered too early stage (arcane!, impractical) and a lot of innovation may be required to make it ready for marketUniversities tend to publish earlyWhat follow up support could be expected from the inventor for further developmentUniversities’ mind set is academic and not entrepreneurialUniversities are less inclined to work with small firms who cannot provide the same legal and financial security as a larger firm.
64 Strategy Impact Applied Research Corporates Strategies vary Direct use of IP in each field to maximiseincome; limit or control competition; createentry barriers for others; develop brandawareness; enter new areas; motivate staffRetentionistUniversities/CollegesGenerate income; cultivate new markets; get ridof non-core/incidental inventions/processes;develop new products; control costsSale andlicensing options“Ivory Tower”Lesser emphasis on commercial imperatives;greater commitment to open dissemination ofknowledge; emphasis on social mission etc.DonationEastman Chemical donation to to North CarolinauniversitiesBasic Research
65 Intellectual Property Confidential Information Revenue MissionPolicies Need ToBe Flexible NotFixed?One Mission orMany Missions?Internal and ExternalRelationships; IPRsIntellectual CapitalIntellectual PropertyAssetsManagementValueIPRsH&FETangibleIntangibleCollegialityOutreachwithin andbetween sectorsPatents; Trade Marks;Copyright; Designs;Confidential InformationIPRs and AssetManagement WillBe A Compromise?Many MissionsIn A SingleInstitution?Mission Revenue
66 The Cultural Dilemma UNIVERSITY INDUSTRY Commercialization of New and Useful TechnologiesTeachingResearchServiceEconomic DevelopmentProfitsProduct R&DKnowledge for Knowledge’s SakeAcademic Freedom Open DiscourseManagement of Knowledge for ProfitConfidentiality Limited Public Disclosure
67 Blending the University Research and Entrepreneurial Cultures Academicsresearch priorities set by investigatorgrant-seekingpublicationsserendipitytransfer at early stageIndustryresearch priorities set by managementprofit-seekingproprietarycontroladd value before transferring
68 Factors that Influence University-Industry Collaborations Technological advances in science-based and technology-intensive industriesComputer softwareAdvanced materialsBiotechnologyIncreased international competitivenessSlowing of public and private support for industrial R&D
69 Factors that Influence University-Industry Collaborations Encouragement of research collaborationsFederal research programs to promote national competitiveness through technology developmentState programs to promote technology development
70 Changing Roles“University-industry technology transfer can be a stimulant, precursor or complement to building a high skills, high wage, state economy.”Increase in interdisciplinary researchEmphasis on commercializationEncourage university-industry collaborations
71 Issues in University-Industry Relationships Ownership of intellectual propertyConfidentialityPublicationIndirect costs of researchExchange of research materials
72 Concerns about University-Industry Relationships Universities will abandon their core missionsPotential change of university research focus –less basic, more appliedUniversity research funding tied to job creation
73 Conflicts of Interest Conflicts of Commitment Concerns about the loss of objectivityInvestigator conflicts of interestCollection and analysis of dataSharing results and materialsInstitutional conflictsEquity managementPatient protection in clinical trials
74 Useful Web SitesAssociation of University Technology Managers –Council on Governmental Relations –Association of American Universities –
75 Types of CooperationDirect funding of research through gifts and grantsExchange programs and internshipsConsulting by facultyCommercialization of inventions, innovations and research findings
77 Inventions: Process Evaluation of Invention Complete Invention Disclosure Form (web)and provide alldata on InventionEvaluation of Invention(2 – 4 weeks)Depends on ExtentOf data (CSRL)Convey DecisionTo PrincipalInvestigatorCSRL Notification ofPatent Filing toInventorsFree to Publish(or make other publicDisclosure)Yes, Patent FilingOutside Attorneys File.Collaborative –CSRL, Inventors, Attorney(1-3 months)No Patent FilingFree to PublishInventors to completeDeclaration andAssignment DocumentsCritical
78 Inventions: Evaluation of Inventions (Case Manager) Preliminary Screening for Appropriate Filing ContentEvaluation of the Product and its MarketEvaluation of Science Strength/ Evaluation of Institutional IssuesEvaluation of Patent PositionAdditional Considerations
79 Invention: Process (continued) YEAR 1YEAR 2YEAR 3Y0Y4PROSECUTIONBack and forth with the Patent OfficePATENT FILINGISSUANCEIdentify LicenseeNegotiate License OptionManage Licensee RelationshipStart-up?VC?
80 Finding a partner company: Marketing and licensing Identify companies that may have an interest in the inventionRelated product market analysis and reportsInventor knowledge and experienceContact companiesNon-confidential disclosuresDisclosure of confidential information under a Confidentiality AgreementNegotiate licenseExclusive or non-exclusiveRoyalties, up-front payments, milestones etc.Due diligence provisions
81 Distribution of License Revenue Expenses incurred in IP protection or creation are deducted prior to distribution of License IncomeInventor(s) (25%): Divided equally among all co- inventorsInventor’s Laboratory (25%)Inventor’s Department (25%)MGH (25%)
82 From invention to issued patent (annual numbers) Scoring tool/ScreenPatent Office Decision3,000 lead researchers (PIs) with $1 billionin annualexpenditures350 to 400inventiondisclosuressubmitted annuallyto RVL175 to 200 patent applications80 to 100 patents issued75 to 125 licenses**License amounts vary widely and some technologies have more than one licensee50%50%
83 Goal of a University IP Policy Not conflict with the primary goals of an university (teaching and research)Balance the interests of all stake holdersThe university employs the researcher, provides the facilities and its nameThe researchers expends his time, energy and skillsThe govt uses its scarce resources to support universities and expects the knowledge produced to promote national developmentSponsors want to own the results of sponsored research
84 Elements of an IP Policy - 1. Ownership Inventions and innovations arising from activities using university resources and facilities are owned by the university“Under the US Common Law an individual own rights in any invention they create, regardless of whether that invention was created in the course of employment. In the absence of a clear common law right to inventions created by academics, most universities have enacted IP policies which purport to claim ownership of inventions made using university resources and/or in the course of employment” - Analysis of the legal framework for patent ownership in publicly funded research institutions, Australia 2003
85 The ownership of inventions and innovations that arise from activities using government grants depends on the law of the countryUS - Bayh Dole Act.JapanBayh Dole Act - This legislation was introduced to address the problem that a large number of potentially valuable inventions created by universities with government funds were not being conmmercialised. The problem was attributed to the absence of a uniform policy governing the ownership of inventions.Under this Act the University has rights to inventions created with project specific public funds. Govt retains the right to a non exclusive irrevocable license to use the invention throughout the world and “march in rights”allowing it to make the university grant a license to a third party where the university fails to commercialize the invention, where a license is necessary for health and safety needs or where preference for US industry has not been observed.In 1986 only 619 university patents were granted. In 2000 it was 3661.
86 Bayh-Dole Act of 1980, USAPrior to the Bayh-Dole Act public funded research belonged to the public. 50% of all research in the US was government funded but very little was put to use. No private ownership no investment.Under the Act, inventions made by universities that have received federal funding may be owned by the university.The inventor must disclose the invention to the university and to the government with a statement that the invention was made with government support.The government retains a non-exclusive, non-transferable, irrevocable, paid up, world wide licenseThe government can require the inventor to grant reasonable licenses to third parties under certain circumstance (march in rights)
87 Bayh-Dole Act Important Provisions Universities may elect title to inventionsUniversities are expected to protect IPGovernment retains non-exclusive licenseGovernment retains march-in-rightsUniform guidelines for granting licensesUniversities must report on activities
88 Since Bayh-Dole came into force, nearly 5,000 companies have been spun out of American campuses, over 40,000 licence agreements have been concluded between academic institutions and outside parties.Companies with their roots in the US university system now contribute an estimated US$40 billion a year to the country’s economy.The Bayh-Dole is credited for the creation of around 1500 biotech companies, employing more than 180,000 people generating upwards of US$40 billion in revenueFor example the California Institute of Technology (CALTECH) received in one year some 10m $ in licensing revenue, filed 416 patent applications, received 142 patents, started 14 new companies.
89 A wide range of new products have stemmed from university -based research Kansas State University developed nanomaterials that can neutralise a wide range of contaminants and chemical warfare agents. The technology is licensed to NanoScale Materials Inc of Manhattan, Kansas.University of North Carolina invented a software program that incorporates a 3D microscope, which allows students to experience microscopy in the classroomand from home. The technology is licensed to Science Learning Resources Inc, of Carboro, North Carolina.Researchers at Boston University, developed an optical device known as the Numerical Aperture Increasing Lens (NAIL) to produce high-resolution images of wafer circuitry.EdgeTech of Marlborough,Massachusetts, has taken a licence to a sonar technology developed at Florida Atlantic Univeristy that can be used to locate buried underwater mines.Purdue University developed a miniature mass spectrometer now licensed to Griffin Analytical Technologies Inc, of West Lafayette, Indiana. This portable device can be used to identify chemical warfare agents, explosives and toxic industrial chemicals.University of Texas scientists developed wired enzyme technology, which allows diabetes patients to measure blood glucose with a much smaller sample than required by existing methods.Allergan Inc, of Irvine, California, is selling a new drug, Restasis, which is based on technology licensed from the University of Georgia. Restasis, an immunosuppressant, decreases tear duct inflammation and is used to treat dry eye.The Bayh-Dole Battle by Victoria Slind-Flor, Intellectual Asset Management December/January 2006
90 Sponsored researchInventions arising from research sponsored other than by the government would be governed by the terms of the agreement which would normally have been approved by the universityUsually the sponsor would expect to own the results of the research (but powerful universities like UCLA own the IP even in such cases).In effect work for hire and would in most cases be owned by the sponsor but powerful universities like UCLA own the IP even in such cases.
91 The Onco-mouseOn April , the U.S patent office granted Harvard a Patent rights over the Oncomouse, a transgenic mouse designed to have a predisposition to cancerDupont had provided some $6 million US funding for the research that resulted in the Onco mouse and under the terms of that funding were granted an exclusive license giving DuPont the right to “make and have made, to use and have used, to sell and have sold, the Oncomouse, and to fully exploit the patent rights”.
92 Limits on informal exchange of mice - DuPont would not allow scientists to follow their traditional practices of sharing mice or breeding extensively from the mice.Contractual control of scientific disclosure - DuPont imposed forms of contractual control on scientists, most notably a requirement that they fulfill annual disclosure requirements; this was not a strict prohibition on publishing but a requirement that scientists using an Oncomouse would provide an annual research report on their published findings.Reach through rights on future discoveries made with an Oncomouse - DuPont required that scientists give them rights to future inventions made using oncomice. These so-called reach-through rights give the licensor of a patented technology a share in any proceeds from a product even though the original technology is not incorporated into the end product. These rights are not an integral part of patent law but instead emerge as part of a negotiation over the terms of conditions of a contract to make use of a technology – they are part of the price of use. While common in the contracts between biotechnology and pharmaceutical firms, this was the first time a company had sought to impose such a provision on academic scientists.
93 By late 1999, after four years of negotiations, DuPont and the NIH signed a Memorandum of Understanding under which academic scientists (when funded by the NIH) could use oncomice without cost, providing they were not using them for any commercial purpose, including research sponsored by a commercial firm.
94 InventorIf the university does not proceed to patent an invention the inventor may request that the right to patent be transferred to him. The University may retain a non exclusive right to use the IP for educational and research purposes and perhaps a right to a percentage of the revenueIf the invention was made without “significant” use of the university’s resources the inventor could claim ownership
95 Elements of an IP Policy 2. Management Create a department/office such as a Technology Licensing Office to be in charge of managing the university’s IP assetsResponsible for the protection and commercial development of inventions and creations
96 Responsibilities of a TTO/TLO Processing and safeguarding relevant IP agreements;Determination of patentability, managing invention disclosures, undertaking patent search and completing applications for patents;Evaluating the commercial potential of an invention;Obtaining appropriate patent protection;Locating suitable commercial development partners;Negotiating and managing licenses.
97 Invention DisclosureA disclosure is the first signal to the university that an invention has been made.It is typically used to give a formal description of an invention that is confidentially made by the inventor to his or her employer.It provides information about the inventor or inventors, what was invented, the circumstances leading to the invention and facts concerning subsequent activities.It provides the basis for determining patentability and the technical information for drafting a patent application.
98 All researchers are obliged to report to the University TLO all potential patents through the disclosure document. Premature public disclosure may affect novelty and disqualify it from patentabilityAn invention disclosure is treated with confidentiality by the TLOSubmitting a disclosure is the first formal step towards obtaining proper intellectual property protection through the university.
99 Identify commercially valuable inventions Protect them (assess their patentability, prepare and make the patent application)Reward employees who create such inventionsCommercialize (Locate commercial partners and negotiate licensing agreements)
100 Elements of an IP Policy - 3. Income Distribution Gross income - license fees, royalties, milestone payments etcNet income - gross income less university expenses for filing patents, negotiating license agreements etc..Distribution of revenue - generally the inventors share and that of the university as total net revenue Many universities grant an average of 35% income to the inventor.
101 Start-up/Spin -OffCommercialization of research can also take place (other than through licensing to another company) through the route of a spin off company that will commercialize the inventiona spin off company is one that is established by members of university staff to exploit IP that belongs to the universityFor example the university will transfer the relevant IP free of royalty to the spin off and will seek a majority shareholding in the company.Incubators have been useful in assisting the development of spin offsAn example of how a university would deal with a spin off
102 IncubatorsBusiness incubators are designed to help start-up firms. They usually provide:flexible space and leases, many times at very low ratesfee-based business support services, such as telephone answering, bookkeeping, secretarial, fax and copy machine access, libraries and meeting roomsgroup rates for health, life and other insurance plansbusiness and technical assistance either on site or through a community referral systemassistance in obtaining fundingnetworking with other entrepreneursThe primary goal of a business incubator is to produce successful businesses that are able to operate independently and financially viable.
103 Companies that spawned from Stanford MIPS TechnologiesNanosolar, Inc.NetflixNikeNVIDIAOctel CommunicationOdwallaOrbitzRambusRational SoftwareSilicon GraphicsSun MicrosystemsSun Power Corp.Taiwan SemiconductorTandem ComputersTensilicaTesla MotorsTrilogyVarian AssociatesVMwareWhole Earth CatalogWindham Hill RecordsYahoo!ZillowAlteraAtheros CommunicationsBEA SystemsCharles Schwab & CompanyCisco SystemsCypress SemiconductorDNAX Research InstituteDolby LaboratorieseBayE*TradeElectronic ArtsGapGoogleHewlett-Packard CompanyIDEOIntuitKivaLinked InLogitechMathworksMcCaw Cellular Communications
104 Stanford University – Some of the inventions licensed Digital sound synthesis: John Chowning developed FM sound synthesis for digitally generating sounds in the late 1960s, leading to the music synthesizer.Disease management: The Stanford Patient Education Research Center develops programs for people with chronic health problems, including arthritis and HIV/AIDS. The program has been licensed to more than 500 organizations in 17 countries and 40 states.DSL: In the 1980s, John Cioffi and his students realized that traditional phone lines could be used for high-speed data transmission, resulting in patents used in asymmetric digital subscriber lines.security: Identity-based encryption, developed by Dan Boneh and Matt Franklin, offers an efficient way to encrypt and protect .Functional antibodies to treat disease: In the 1980s, Leonard Herzenberg, Vernon Oi and Sherie Morrison discovered how to mass produce antibodies— molecules that detect foreign substances—and target them for destruction by the body’s immune system.Genome sequencing: Two tools assist in the sequencing of DNA: CHEF electrophoresis, invented in 1987 by Ron Davis, Gilbert Chu and Douglas Vollrath; and Genscan software, developed by Christopher Burge.Google: The world’s most popular search engine got its start at Stanford when Sergey Brin and Larry Page developed the page-rank algorithm while they were computer science graduate students.Personalized medicine: The gene chip, based on spotted microarray technology developed in the 1990s by Pat Brown and Dari Shalon, allows doctors to create genetic profiles of patients and their diseases.Recombinant drug production: Recombinant DNA technology, developed in 1973 by Stanley Cohen and Herbert Boyer, laid the groundwork for modern genetic engineering by allowing scientists to combine pieces of DNA from different organisms.
105 Questions to considerIs the mission of universities being compromised by commercial interestsShould research results funded by tax payer money be privately appropriatedPolicy Options for LDC GovernmentsBalance the fundamental role of universities as places of learning and academia uncompromised by commercial interests with the need to put to good use socially useful results for the greater good of the communityAnswer the fundamental question as to whether research results derived from public funds (tax payers money) should be commercialized or made freely available for community benefit
106 If commercialization of publicly funded research is appropriate Ensure clarity on ownership of research resultsAllow each university and PRO to develop their own internal policy along the above lines within the broader national goalsGovernments could inject humanitarian/public service licensing policies into such national goals
107 Trends…Major private research labs are down sizing while smaller start ups are increasing their research activitiesCompanies are funding more basic and applied research in universities. Less corporate funding for the sake of public good but tied directly to corporate goals.More fundingLess independenceRise in “real world” research