Role of IP Benefiting from University-Industry Partnerships: Incubators and IP Casey K. Chan National University of Singapore IP Academy of Singapore

New Paradigm  labor intensive  high end manufacture  value added manufacturing  value creation Investment Driven vs Innovation Driven

New Job Create  15 million new jobs in the US from 95 to 2000  90%<50 employers

Geek Index (Wired Aug 2001)

Partnership  Only the scientific and technologically driven innovation can power the economy to be globally competitive.  Close collaborative partnerships in scientific research is critical to sustain this innovation.

Corporations  Increase shareholder value  Servicing customers  Financial bottom line

University  Education  Research  Service ? entrepreneurship

Paradigm Shift Can potentially create new problems  No longer straight forward partnership  Ownership of and access to IP  Conflict of interest  Once-clear lines are now blurred

Academic Independence  Bias observation and conclusion  Confidentiality  Publication right What is acceptable delay Right of review vs right to censure and edit

Conflict of Interest  Equity ownership vs royalty  Clinical trials Paid consultant Benefit Founder  Use of product in which one has a royalty interest

Dr. Oliveri versus Apotex Inc  deferiprone in the treatment of iron overload in patients with thalassemia major  drug lost effectiveness with long-term use  drug might worsen hepatic fibrosis  revised consent form  drug trails were being terminated by Apotex  published result in NEJM  threat of lawsuit for violating confidentiality agreement

Management of Conflict of Interest  No exception school (MIT)  Management school (others) Is there a conflict? Can it be manage? How to manage?

Warranty & Indemnification  Does not warrant fitness for use or merchantability  Technology is usually early stage and requires much additional development  University has no control over product development  Requires indemnification for product liability

Reach through clauses  For improvements  For research tools

Reach Through Clause for Improvement  University general does not agree to blanket improvement clause  Exception: improvement is dominated by base technology  Terms of employment for academic staff is different from that of industrial scientist

Research Tools  PCR  Vectors  Cre-Lox Recombinant  Stem cells

Possible obligation from the use of research tools  No obligation  No patenting  First rights of refusal  Royalty on derivative

Reach through clause for Research Tools  Pre-publication right  Rights of derivative material and IP  Typewriter analogy  Protest from the scientific community

Tragedy of the Common  Great discoveries were available to all but no one benefited.  Bayh-Doyle – to promote the economic development of the products of federally funded research.  Has the pendulum swung too far?

Benefits  Real-world issues and practical methods of problem solving  Enrich the professional experience  Widen the horizon of our staff and students beyond the academic frontier  Enhancement of translational research  Alternate source of research funding

Mutually beneficial relationship when carefully managed  Detail is in the agreement  Work towards common goal  Understand each others’ objectives  Understand each others’ limitation  Academics need professional help in negotiation