Commercial Exploitation of Inventions at the Technische Universität München Centre for Research Support and Technology Transfer - SFT WIPO UNIVERSITY RESEARCH AND DEVELOPMENT INITIATIVE: Subregional Workshop on Searching of IP Information for University IP Coordinators Vilnius, Lithuania May 18 and 19, 2006 Dr. Alexandros Papaderos Inventor Consultant Technische Universität München

Outline Short presentation of the Technische Universität München Knowledge and Technology Transfer from Universities Implementation of the Bayern Patent Project at the TUM 3 success stories from the TUM Centre for Research Support and Technology Transfer - SFT © Dr. Alexandros Papaderos, Inventor Consultant, Technische Universität München

The Technische Universität München founded in 1868 by King Ludwig II. as Polytechnische Schule München, since 1970: University highly-modern research and teaching institution offering 12 faculties as well as numerous scientific, educational and administrative facilities four leaved model: Natural Sciences, Engineering, Life Sciences, Medical Science interdisciplinary collaboration and innovation-promoting processes of a future-oriented approach Nobel Prize Laureates, famous scientists and inventors including: Rudolf Diesel, Carl von Linde, Willy Messerschmitt, Emil Erlenmeyer, Hans Fischer, Robert Huber Centre for Research Support and Technology Transfer - SFT © Dipl.-Biol. Alexandros Papaderos, Inventor Consultant, Technische Universität München

The Technische Universität München Summer semester 2006 students: ca. 20,000, 30% female freshmen: 4,800 graduates: 2,800 students from abroad: ca. 20% 260 chairs, 440 professors 8,500 staff (academic and non-academic staff Centre for Research Support and Technology Transfer - SFT © Dr. Alexandros Papaderos, Inventor Consultant, Technische Universität München total budget 2004: million research funding: million fundraising: 81 million (endowed funds since 1998) for further information, please see also:

Knowledge and Technology Transfer Knowledge and Technology Transfer Knowledge and Technology Transfer is the connecting link between basic and applied research and between applied research and development commercial utilization and economic exploitation of IPR, esp. patents, are one aspect of Knowledge and Technology Transfer between science and economy licensing and sale of patents have a long tradition in the Anglo- Saxon countries (Research Corporation founded 1912 in the USA) in other European countries (including Germany) the active commercial utilization and economic exploitation of IPR is now evolving Centre for Research Support and Technology Transfer - SFT © Dr. Alexandros Papaderos, Inventor Consultant, Technische Universität München

Technology Transfer from Universities IPR: licensing of IPR to companies (IPR remains the university) sale and assignment of IPR to companies (IPR is assigned to the company) provision of IPR to university start-up companies: exclusive licensing (IPR remains with the university) sale of IPR (IPR is assigned to the company) sale or exclusive licensing of IPR; university obtains in return shares of the company (IPR is assigned to the company) Centre for Research Support and Technology Transfer - SFT © Dr. Alexandros Papaderos, Inventor Consultant, Technische Universität München contract research and services offered by the universities (in most cases IPR is assigned to the contractor)

Centre for Research Support and Technology Transfer - SFT © Dr. Alexandros Papaderos, Inventor Consultant, Technische Universität München Technology Transfer through IPR USA/Germany USA in 1980: ~ 250 patent applications (1980: Bayh-Dole Act) in 1991: ~ 1,600 patent applications in 2003: ~ 8,000 patent applications Germany before 2002: negligible amount of university patent applications 2002: abolition of the Professors Privilege 519 patent applications in patent applications in the name of German universities, including technical colleges

Centre for Research Support and Technology Transfer - SFT © Dr. Alexandros Papaderos, Inventor Consultant, Technische Universität München AUTM Licensing Survey: Fiscal Year 2004 (approx. 195 institutions) 16,871 16,871 inventions reported (82% potentially patentable inventions) 10,5173,680 10,517 new patents filed, 3,680 patents issued new companies (in 52% of the cases institutions received an equity interest) license income: billion US-$ Technology Transfer through IPR Benchmarking USA since 1980:4,543 since 1980: a total of more than 4,543 companies, 2,671 still operating 3,114 since 1998: 3,114 new products on the market

legal framework (Professors Privilege) scientists in Germany focus more on publications lack of interest from the inventors and universities for the patent system lack of resources for the financing of patent applications, etc. lack of infrastructure for patenting and commercial exploitation The situation in Germany before the year 2002: Centre for Research Support and Technology Transfer - SFT © Dr. Alexandros Papaderos, Inventor Consultant, Technische Universität München Technology Transfer through IPR

Commercial Exploitation of University Inventions in Bavaria Centre for Research Support and Technology Transfer - SFT © Dr. Alexandros Papaderos, Inventor Consultant, Technische Universität München Fraunhofer Patent Center for the German Research BavariaHigh-Tech Bavaria High-TechInitiative Bavarian Universities and Technical Colleges

Starting points of the Bayern Patent Project raise awareness for the importance of patents promote and intensify the patent culture provide funds for patenting and commercialising of inventions provide infrastructure: Inventor Consultants Patent- Licensing Bureau at the Fraunhofer Patent Centre for the German Research (FhG-PST) e.g. at the TUM Centre for Research Promotion and Technology Transfer - SFT © Dipl.-Biol. Alexandros Papaderos, Inventor Consultant, Technische Universität München

Mission of the Inventor Consultant at the TUM e.g.: consulting and support for the inventors contact with high inventive potential research groups of the TUM support for the identification of patentable research results organisation of information events, conferences, workshops etc. enforce the legal frame mission is complemented by the Bayern Patent Project the Inventor Consultant is the junction between inventors, TUM administration, Technology Transfer Agency (Bayern Patent Project), industry etc. Centre for Research Support and Technology Transfer - SFT © Dr. Alexandros Papaderos, Inventor Consultant, Technische Universität München

Mission of the Patent Bureau Centre for Research Support and Technology Transfer - SFT © Dr. Alexandros Papaderos, Inventor Consultant, Technische Universität München evaluation of inventions (patentability, technical feasibility, economic exploitability) recommendation to the TUM whether to claim or release the invention instructing patent attorneys, supervising patent applications and patenting process co-ordination regarding patenting strategy with the TUM according to business and market specific criteria (what kind of protection to apply for, in which countries, maintain applications etc.) initiation of licensing activities by the Licensing Bureau central database for patented technologies

Mission of the Licensing Bureau Centre for Research Support and Technology Transfer - SFT © Dr. Alexandros Papaderos, Inventor Consultant, Technische Universität München commercial exploitation of inventions covered by patent applications co-ordination of the licensing strategy in co-operation with the TUM drafting of technology offers search for potential licensing partners presentation of the invention at companies negotiation of the conditions for the licensing agreement between TUM and industry partner supervision of licensing agreements balancing accounts of licensing revenues

University employee decision, if and when to disclose the invention in case of disclosure, obligation to: report the invention to the university indicate the disclosure date (normally two months before disclosure) University decision whether to claim the invention or release it (4 months) in the case of claiming obligation to file a patent application in the case of realization of profits obligation to compensate the inventor Special provisions for university employees in the German Employees Inventions Act Centre for Research Support and Technology Transfer - SFT © Dr. Alexandros Papaderos, Inventor Consultant, Technische Universität München

Workflow in case of a invention inventor contacts the Inventor Consultant for (legal) advice inventor reports his invention to the TUM Bayern Patent Project evaluates the invention and gives a recommendation TUM decides either to claim the invention or to release the invention to the employee in the case of claiming: TUM files a patent application (mostly in Germany) parallel to patenting the invention: commercial exploitation begins Centre for Research Support and Technology Transfer - SFT © Dr. Alexandros Papaderos, Inventor Consultant, Technische Universität München

Sharing of revenues and costs Centre for Research Promotion and Technology Transfer - SFT © Dipl.-Biol. Alexandros Papaderos, Inventor Consultant, Technische Universität München Inventor 30% 0% !!! Revenues Costs TUM 45% 1 0% BayernPatent 25% 100% !!! 1 : 50% for the academic group/institute/department

Statistical Data from the TUM Centre for Research Support and Technology Transfer - SFT © Dr. Alexandros Papaderos, Inventor Consultant, Technische Universität München *: 09/ /2000 * *: 194 inventions are made within the framework of industry research funding projects and are assigned to contractor

Self assembling spider silks identification of a gene for the fabrication of nature-like spider silks transfer in bacterial cells, which produce spider silks Example of a successfully commercialized IPR I: Spider Silks: exceed the characteristics and properties of man-made materials superior mechanical properties such as strength, toughness etc. Commercial applications: medical products (i.e. as non allergic material in wound-closure systems, artificial ligaments, tendons) textiles (i.e. protective clothing, parachutes, body armour, ropes, fishing nets) cosmetics leather and paper refinement Centre for Research Support and Technology Transfer - SFT © Dr. Alexandros Papaderos, Inventor Consultant, Technische Universität München

beer containing xanthohumol : XAN Wheat Beer and XAN Wellness Drink Xanthohumol: Xanthohumol from hop can dispose free radicals due to its antioxidant nature and can thus contribute to keep the somatic cells healthy Special brewing method (pending patent application): concentration of the natural active ingredient Xanthohumol is up to 15 times higher in the XAN Wheat Beer and up to 50 times higher in the alcohol- free XAN Wellness drink in comparison to usual wheat beers Example of a successfully commercialized IPR II: Centre for Research Support and Technology Transfer - SFT © Dr. Alexandros Papaderos, Inventor Consultant, Technische Universität München

ANTICALINS® technology: ANTICALINS® are engineered ligand-binding proteins with antibody-like functions therapeutic use in a variety of diseases, particularly in cancer and cardiovascular diseases technology invented in a large part at the TUM and developed at PIERIS Proteolab AG Cooperation and license agreement between TUM and PIERIS PIERIS was founded in January 2001 – after being awarded the first prize in the Munich Business Plan Contest 2000 Laboratories and offices are located at Freising- Weihenstephan, well situated in the neighbourhood of the TU Munich life science campus Example of a successfully commercialized IPR III: Centre for Research Support and Technology Transfer - SFT © Dr. Alexandros Papaderos, Inventor Consultant, Technische Universität München see also:

Key Factors for a successful IP- and TT-management establishment of a systematic IP- and TT-management process backup through the academic and administrative management in form of IP- and TT-guidelines establishment of patent and licensing bureaus and use of all communication channels information about possible IP-exploitation partners further education of the staff members professional contractual commitments for all IP- and TT-matters soft factors: measures for establishing an IP-culture Centre for Research Support and Technology Transfer - SFT © Dr. Alexandros Papaderos, Inventor Consultant, Technische Universität München

Centre for Research Support and Technology Transfer - SFT © Dr. Alexandros Papaderos, Inventor Consultant, Technische Universität München Agreements Supervision Commercial Exploitation Protection Evaluation Ongoing Activities close contact to researchers continuous analyzing of the research activities screening of patent literature IP-culture and infrastructure identification and evaluation of the market relevance of the invention evaluation of protectability check-up with existing patent portfolio identification of exploitation strategies patent application defence against infringers development of exploitation strategies, e.g. licensing, transfer, start- up etc. implementa- tion of the exploitation strategies revenue management monitoring of license agreements legal problems

Contact: Dr. Alexandros Papaderos Patent- and Licensing Bureau Technische Universität München Arcisstraße München Tel.: +49 / 89 / internet: © Dr. Alexandros Papaderos, Inventor Consultant, Technische Universität München Centre for Research Support and Technology Transfer - SFT

Centre for Research Support and Technology Transfer - SFT © Dr. Alexandros Papaderos, Inventor Consultant, Technische Universität München Thank you for your attention! Questions? Remotely Controlled Steerable Ball (US ) What is claimed is: 1. A remote controlled ball amusement device adapted to aerodynamic change trajectory in mid-flight as it is propelled through air...