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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 partners Internships in the industry as part of standard university curricula Industrial partners lecturing at the universities Sabbaticals of university professors in the industry

12 Culture of Science Building 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 Education Others: Israel, Finland, Denmark, Austria, Norway, Russia, Italy each 1.

15 The Super-League in 2005 from Shanghai Jiao Tong University data
1 HARVARD USA 11 Yale USA 2 Cambridge UK 12 Cornell USA 3 Stanford USA 13 UC San Diego USA 4 UC Berkeley USA 14 UC Los Angeles USA 5 MIT USA 15 Pennsylvania USA 6 Caltech USA 16 Wisconsin-Madison USA 7 Columbia USA 17 Washington (Seattle) USA 8 Princeton USA 18 UC San Francisco USA 9 Chicago USA 19 Johns Hopkins USA 10 Oxford UK 20 Tokyo Japan

16 Types of academia-industry/business collaboration
(survey based on 25 universities and research institutions) Consultations 17% Training, seminars, conferences 13% Organization of student, doctoral, etc. research practices 11% Assisting the management of business processes 8% Studies of the effectiveness of technologies/ products/services 7% Creation of new technologies 6%

17 Results attained by academia-industry/business collaboration
Gaining new experience 20,9% Making contacts with foreign organizations with similar activities 16,1% Development of new research fields 15,7% Initiating of new university subjects, post-graduate qualifications and courses 13,4% Getting more information about the innovation needs of companies 12,7% Getting actual economic information 11,8% Receiving of additional funding 9,3%

18 The Mission of a University
Education, research and public service Source 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 of Being in ivory towers, removed from the needs of the community pursuing knowledge of little relevance to the developmental needs of the country producing a workforce ill equipped to meet the challenges of industry and in general contributing very little to the practical development needs of a country

20 Investigator initiated – Discovery driven
University Research Investigator initiated – Discovery driven University sets priorities for future research New faculty are hired based on these priorities New faculty investigators seek research support Faculty 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 agreements Consulting agreements Collaborators who may be joint inventors

22 Stakeholders in the University
Faculty Deans and Department Heads Research Legal Finance University Relations Alumni Affairs and Development

23 Influences on Technology Transfer
Philosophy of the University Entrepreneurial vs. Risk averse Expectations Proximity/Access to venture capital Access to management Local business community Local assistance programs State economic development programs

24 Business Development in a University
Do lots of deals, make lots of money Respect academic values Insure obligations to sponsors of research Compliance with gov’t regulations Stay within budget Maintain relationships Avoid controversy

25 Roles of the Technology Transfer Office
Disclosure evaluation and patent decisions Management of patent prosecution Technology marketing Licensing Management of existing licenses Material transfer agreements

A gap between Research and Economy Limited impact of R&D on competitiveness Limited cooperation between RDI and SMEs A challenge all over the world Most countries support R&D Gvts. expect to get R.O.I. from their R&D spending A UNIVERSAL CHALLENGE ALL OVER THE WORLD

27 A « DOUBLE » CHALLENGE Res. Scientists are not motivated to work with SMEs SMEs are not motivated to work with « academic » scientists STRONG INCENTIVES ARE NEEDED

28 Push or Pull ?

29 (Technology absorption)
Push or Pull ? Market Pull (Technology absorption) From market needs to the lab AND Back to market Need identified by industry Limiting step : Identifying the customer Identifying the need BOTTOM UP Technology Push From the Lab to the market Idea of a scientist Limiting step : selling the idea (and the project) to industry TOP DOWN

30 Push or Pull ? Technology Push
Give more « fancy » results but it will take more time and it is very risky Market pull (Technology absorption) Give less « exotic » results but much 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 Pull High (50%, with some experience) Market pull offers a potential usually 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 services SMEs Identify the market needs Manage innovative projects The Government (Ministries, agencies ..) Stimulate the process to boost the economy Provide incentives (for Scientists and for Industry) Provide assistance Often provide some funding

34 Targeting SMEs The main issue is to :
Identify potentially interested SMEs AND « Sell » them technology services

35 Targeting SMEs... Conferences, seminars… Commercial fairs
Brokerage events Existing networks Regional networks (Chambers of commerce) National networks (Innovation agencies) European networks E.U. « networking » activity (ERA-NET) V.C. forums Private consultants Data Banks ? ……

36 Targeting SMEs... Communicating with SMEs BUT :
The most efficient way to communicate is not to present what an RDI can do BUT : 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 contacts Usually the first cooperation are « modest » At that stage Gvt. support is needed

38 SMEs –RDI cooperation R&D contracts Consulting
Numerous way to cooperate R&D contracts Consulting Technology « diagnostic » …… Licensing

39 The role of Governments: Public-Private Partnerships

40 Governmental programs
Many programs to support SMEs: National Regional International One common goal : to bring assistance to SMEs to improve their competitiveness

41 Governmental programs
To strengthen SMEs competitiveness Assistance for: Identifying partners Preparing a Business Plan IPR and legal matters To provide some public funding Financial support for project preparation Matching grants Soft loans

42 A few National Programs
United States : SBA Europe : Finland : TEKES France : Oséo-Innovation The Netherlands : Senter Spain : CDTI + Numerous Regional programs Ex. Flanders

43 International Programs
World Bank projects on Tech. Development Far East (India, Korea…) Latin America (Mexico…) Eastern and Central Europe (Croatia, Ukraine…) European Union Framework Program Research for the benefit of SMEs Other European programs Eureka initiative Intergovernmental (Mkt. Oriented, nationally funded) European Space Agency Technology Transfer program

44 E.U. programs for SMEs Research for SMEs (former CRAFT)
Coordination of SMEs RTD co-operation ERA-NET Eurostar SMEs participation to RTD projects + Various supporting actions Network of National Contact Points Coordination and support actions

45 The role of Governments
To create a favourable environment Fiscal laws Patent laws Encourage mobility R&D funding allocation

46 The role of Governments
To provide infrastructures Incubators Technology parks To provide assistance Financial Legal Economical

47 The role of Governments
Incentives, Incentives Incentives…. Incentives for SMEs Incentives for Scientists

48 The role of Governments
A stable legal framework over a long time A rigorous monitoring process To follow progress To learn (from failures)

49 Methods to Transfer Technology
Training of students Publication of research results Exchange of research materials Collaborative research projects Consortia Faculty consulting Technology licensing Start ups

50 Technology Transfer Commercialize research results funded primarily by the federal government for the public good Recruit, reward, and retain faculty and students Induce collaborations with industry Promote economic growth Generate income to promote and support teaching and research

51 Roles of the Technology Transfer Office
Disclosure evaluation and patent decisions Management of patent prosecution Technology marketing Licensing Management of existing licenses Material transfer agreements

52 Criteria for Start Ups Business plan
Expectation that company can accomplish goals Faculty and staff involved have cleared conflict review No equity only deals Equity represents fair value for technology licensed

53 Stakeholders in the University
Faculty Deans and Department Heads Research Legal Finance University Relations Alumni Affairs and Development

54 Investigator initiated – Discovery driven
University Research Investigator initiated – Discovery driven University sets priorities for future research New faculty are hired based on these priorities New faculty investigators seek research support Faculty 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 agreements Consulting agreements Collaborators who may be joint inventors

56 Influences on Technology Transfer
Philosophy of the University Entrepreneurial vs. Risk averse Expectations Proximity/Access to venture capital Access to management Local business community Local assistance programs State economic development programs

57 Business Development in a University
Do lots of deals, make lots of money Respect academic values Insure obligations to sponsors of research Compliance with gov’t regulations Stay within budget Maintain relationships Avoid controversy

58 Changing Role of Universities
Universities key players in the Knowledge Economy. They produce the raw material for the knowledge economy Universities 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 people Inadequate state funding, no means of creating funding sources Inadequate infrastructure and facilities Gap 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 benefit It will bring in badly needed funds allowing the university to fulfill its fundamental mandate. Supplement the income of staff to retain talented staff Provide 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” - Fortune Research should be curiosity driven not market driven Open culture of sharing and publication now clouded in secrecy and driven by profit Loss of control private interests may undermine the objectivity of research by causing bias, suppression of results, and even fraud

62 Benefits to industry Industry is not usually in the business of basic research whereas that is the function of university Source of new technologies Expert 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 market Universities tend to publish early What follow up support could be expected from the inventor for further development Universities’ mind set is academic and not entrepreneurial Universities 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 maximise income; limit or control competition; create entry barriers for others; develop brand awareness; enter new areas; motivate staff Retentionist Universities/Colleges Generate income; cultivate new markets; get rid of non-core/incidental inventions/processes; develop new products; control costs Sale and licensing options “Ivory Tower” Lesser emphasis on commercial imperatives; greater commitment to open dissemination of knowledge; emphasis on social mission etc. Donation Eastman Chemical donation to to North Carolina universities Basic Research

65 Intellectual Property Confidential Information
Revenue Mission Policies Need To Be Flexible Not Fixed? One Mission or Many Missions? Internal and External Relationships; IPRs Intellectual Capital Intellectual Property Assets Management Value IPRs H&FE Tangible Intangible Collegiality Outreach within and between sectors Patents; Trade Marks; Copyright; Designs; Confidential Information IPRs and Asset Management Will Be A Compromise? Many Missions In A Single Institution? Mission Revenue

66 The Cultural Dilemma UNIVERSITY INDUSTRY
Commercialization of New and Useful Technologies Teaching Research Service Economic Development Profits Product R&D Knowledge for Knowledge’s Sake Academic Freedom Open Discourse Management of Knowledge for Profit Confidentiality Limited Public Disclosure

67 Blending the University Research and Entrepreneurial Cultures
Academics research priorities set by investigator grant-seeking publications serendipity transfer at early stage Industry research priorities set by management profit-seeking proprietary control add value before transferring

68 Factors that Influence University-Industry Collaborations
Technological advances in science-based and technology-intensive industries Computer software Advanced materials Biotechnology Increased international competitiveness Slowing of public and private support for industrial R&D

69 Factors that Influence University-Industry Collaborations
Encouragement of research collaborations Federal research programs to promote national competitiveness through technology development State 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 research Emphasis on commercialization Encourage university-industry collaborations

71 Issues in University-Industry Relationships
Ownership of intellectual property Confidentiality Publication Indirect costs of research Exchange of research materials

72 Concerns about University-Industry Relationships
Universities will abandon their core missions Potential change of university research focus –less basic, more applied University research funding tied to job creation

73 Conflicts of Interest Conflicts of Commitment
Concerns about the loss of objectivity Investigator conflicts of interest Collection and analysis of data Sharing results and materials Institutional conflicts Equity management Patient protection in clinical trials

74 Useful Web Sites Association of University Technology Managers – Council on Governmental Relations – Association of American Universities –

75 Types of Cooperation Direct funding of research through gifts and grants Exchange programs and internships Consulting by faculty Commercialization of inventions, innovations and research findings

76 Discovery to entrepreneurship Source UC Davis

77 Inventions: Process Evaluation of Invention Complete Invention
Disclosure Form (web) and provide all data on Invention Evaluation of Invention (2 – 4 weeks) Depends on Extent Of data (CSRL) Convey Decision To Principal Investigator CSRL Notification of Patent Filing to Inventors Free to Publish (or make other public Disclosure) Yes, Patent Filing Outside Attorneys File. Collaborative – CSRL, Inventors, Attorney (1-3 months) No Patent Filing Free to Publish Inventors to complete Declaration and Assignment Documents Critical

78 Inventions: Evaluation of Inventions (Case Manager)
Preliminary Screening for Appropriate Filing Content Evaluation of the Product and its Market Evaluation of Science Strength/ Evaluation of Institutional Issues Evaluation of Patent Position Additional Considerations

79 Invention: Process (continued)
YEAR 1 YEAR 2 YEAR 3 Y0 Y4 PROSECUTION Back and forth with the Patent Office PATENT FILING ISSUANCE Identify Licensee Negotiate License Option Manage Licensee Relationship Start-up? VC?

80 Finding a partner company: Marketing and licensing
Identify companies that may have an interest in the invention Related product market analysis and reports Inventor knowledge and experience Contact companies Non-confidential disclosures Disclosure of confidential information under a Confidentiality Agreement Negotiate license Exclusive or non-exclusive Royalties, 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 Income Inventor(s) (25%): Divided equally among all co- inventors Inventor’s Laboratory (25%) Inventor’s Department (25%) MGH (25%)

82 From invention to issued patent (annual numbers)
Scoring tool/ Screen Patent Office Decision 3,000 lead researchers (PIs) with $1 billion in annual expenditures 350 to 400 invention disclosures submitted annually to RVL 175 to 200 patent applications 80 to 100 patents issued 75 to 125 licenses* *License amounts vary widely and some technologies have more than one licensee 50% 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 holders The university employs the researcher, provides the facilities and its name The researchers expends his time, energy and skills The govt uses its scarce resources to support universities and expects the knowledge produced to promote national development Sponsors 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 country US - Bayh Dole Act. Japan Bayh 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, USA Prior 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 license The 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 inventions Universities are expected to protect IP Government retains non-exclusive license Government retains march-in-rights Uniform guidelines for granting licenses Universities 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 revenue For 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 research Inventions 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 university Usually 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-mouse On April , the U.S patent office granted Harvard a Patent rights over the Oncomouse, a transgenic mouse designed to have a predisposition to cancer Dupont 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 Inventor If 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 revenue If 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 assets Responsible 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 Disclosure A 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 patentability An invention disclosure is treated with confidentiality by the TLO Submitting 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 inventions Commercialize (Locate commercial partners and negotiate licensing agreements)

100 Elements of an IP Policy - 3. Income Distribution
Gross income - license fees, royalties, milestone payments etc Net 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 -Off Commercialization 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 invention a spin off company is one that is established by members of university staff to exploit IP that belongs to the university For 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 offs An example of how a university would deal with a spin off

102 Incubators Business incubators are designed to help start-up firms. They usually provide: flexible space and leases, many times at very low rates fee-based business support services, such as telephone answering, bookkeeping, secretarial, fax and copy machine access, libraries and meeting rooms group rates for health, life and other insurance plans business and technical assistance either on site or through a community referral system assistance in obtaining funding networking with other entrepreneurs The 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 Technologies Nanosolar, Inc. Netflix Nike NVIDIA Octel Communication Odwalla Orbitz Rambus Rational Software Silicon Graphics Sun Microsystems Sun Power Corp. Taiwan Semiconductor Tandem Computers Tensilica Tesla Motors Trilogy Varian Associates VMware Whole Earth Catalog Windham Hill Records Yahoo! Zillow Altera Atheros Communications BEA Systems Charles Schwab & Company Cisco Systems Cypress Semiconductor DNAX Research Institute Dolby Laboratories eBay E*Trade Electronic Arts Gap Google Hewlett-Packard Company IDEO Intuit Kiva Linked In Logitech Mathworks McCaw 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 consider Is the mission of universities being compromised by commercial interests Should research results funded by tax payer money be privately appropriated Policy Options for LDC Governments Balance 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 community Answer 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 results Allow each university and PRO to develop their own internal policy along the above lines within the broader national goals Governments 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 activities Companies 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 funding Less independence Rise in “real world” research

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