IP POLICIES AND ISSUES IN ITALIAN UNIVERSITIES ALBERT LONG HALL Thursday, May 17, 2012 Mr. Alberto Camusso - Attorney-at-Law / Partner Jacobacci & Associati, Turin, Italy “IP Universities” Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY

IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy “IP Universities” Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY Summary An Overview 1.Legal and regulatory framework 2.University spin-offs 3.Patenting practices and licensing issues 4.A look ahead & conclusions

1.Legal and regulatory framework The University system “IP Universities” Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy State Universities  Different funding and financing  Same legal framework  Different governance Non-State Universities Public research entities/centres (CNR)

“IP Universities” Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy  State law → framework for university establishment and public funding  Governance through autonomy → By-laws/statutes General legal framework 1.Legal and regulatory framework  Law n. 297/1999 and subsequent decrees on spin-offs  Law n. 383/2001 → Section 65 of the Code of Industrial Property on IP ownership IP legal framework

“IP Universities” Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy  Researchers employed by universities / R&D centres  Independent researchers Researchers … 1.Legal and regulatory framework  Institutional / Developed within the scope of activities of the university  Developed within specific projects financed by private entities … and research

“IP Universities” Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy  The researcher is the exclusive owner of patent rights  Universities can establish the maximum amount of royalties due, provided that researcher gets at least 50% of revenues (70-50%)  If the invention is not exploited within 5 years, the university gets a free, non-exclusive, right to exploit the invention Ownership and entitlement for institutional R&D (Sec. 65 CIP) 1.Legal and regulatory framework

“IP Universities” Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy  Non-employed researchers are normally treated as employed researchers, through university regulations  Patent rights belong to the university, if expressly agreed pass on to commissioning private entity  Ownership and entitlement rights under Sec. 64 CIP (for private companies) may apply 1.Legal and regulatory framework Ownership and entitlement for institutional R&D (Sec. 65 CIP)

2.University spin-offs “IP Universities” Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy  Entity established for the industrial/economic exploitation of the R&D results (“companies which evolve from universities through commercialization of IP and transfer of technology developed within academic institutions”)  Mixed public/private funding  University personnel/students/professors involved or employed  Governance rules bound to achieve institutional goals, ie providing a strategic link between universities and businesses and maximising the value of IP

“IP Universities” Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy 2. University spin-offs  24 spin-off companies  13 out of 21 participated by industrial partners or investors  over 60% achieving positive results * Source: University of Milan University of Milan Spin-off experience*

“IP Universities” Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy 2. University spin-offs  180 new inventions (constant growth since 1992)  exclusive ownership of 66% of the patent portfolio  co-ownership with universities and foreign research centres  transfer of 25% of patents (license/assignment agreements) IP results of Milan University

3.Patenting practices and licensing “IP Universities” Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy  Patenting strategies are affected by budget (overall University patent expenses in 2010: 2,1 million Euro*)  Mainly Italian applications (over 80%), then EP (9%) and PCTs (US and Japan, 9%)*  Managing and exploiting IP → Spin-offs acting as either IP holders or IP (master) licensees * Source: NetVal

“IP Universities” Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy Hence …  University spin-offs MUST licence, how?  Non-exclusive grants, at least for “umbrella” patents (ie nanotechnology)  Limited duration (3 – 7 yrs)  Minimum royalties /lump sum, regardless of patent file history  Options for new products, extensions, divisional applications  Standing for legal actions on licensee 3.Patenting practices and licensing

4.A look ahead & conclusions “IP Universities” Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy  Patent strategies: quality v. quantity? applications filed in 2010 (around 13,000 IT/4,000 EP/2,600 PCT applications) patents granted in over 2,600 patents in universities’ portfolio  Young patents being licensed, no mature technology → higher risks and less revenues in the short run  Technology transfer is a resource for Italian system: still under construction (first office for TT founded in 1999), yet over 170% increase since 2004

“IP Universities” Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy  Sec. 65 CIP called for reform – is ownership key to successful exploitation?  Still poor resources to finance public reasearch  Potential for co-ownership and co-financed projects → careful legal handling  High potential for private-funded R & D activities  Major increase of IP awareness and culture in the last 10 years 4. A look ahead & conclusions

Thank you Alberto Camusso Partner Jacobacci & Associati Corso Emilia, Torino - ITALY “IP Universities” Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy