1. © Hagit Messer-Yaron, 2011 Prof. Hagit Messer-Yaron messer@eng.tau.ac.il Novi Sad, Oct. 12, 2011

2. © Hagit Messer-Yaron, 2011 Technology Transfer in Countries in Transition: Policy and Recommendations 1. Introduction, background and implementation 1.1 What is Technology Transfer and who benefits from it? 1.2 Metamorphosis of an invention – from scientific research to a product. 2. Best Practice Examples: Technology Transfer in Israel 2.1 National and institutional policy 2.2. Bridging the "Development Gap" – providing proof of principle 2.3 Technology entrepreneurship in a research university 3. In the Public Interest: Guidelines for Commercializing University Technology in Countries in Transition 3.1 Case study on technology transfer in countries in transition 3.2 Guidelines and recommendations

3. © Hagit Messer-Yaron, 2011 Industry vs. university industry university knowledge money Researchers (people!), Faculties, Administration, etc. Entrepreneurs VCs Productions Marketing Management Stocks holders etc. TT

4. © Hagit Messer-Yaron, 2011 The Death Valley Academia Science "Valley Death" Products Industry

5. © Hagit Messer-Yaron, 2011 Bridging over the “Death Valley” Structured relations between universities and industries: R&D agreements Licensing deals New venture formation/Spin-offs Other: Individual entrepreneurship

6. © Hagit Messer-Yaron, 2011 The technology transfer process Revenues IDF Discovery & Innovation Evaluation Patenting & Marketing Strategy R&D agreement Or Licensing deal OrSpin-off Follow Up on Contract Academic Basic and Applied Research publications To inventors Individual entrepreneurship To Industry 3 2 1

7. © Hagit Messer-Yaron, 2011 Academia Science "Valley Death" Products Industry R&D agreements Research and development agreements

8. © Hagit Messer-Yaron, 2011 Example: ’s 4X technology SanDisk's Press Release: Milpitas, Calif., Oct. 13, 2009 - SanDisk Corporation (NASDAQ: SNDK), the global leader in flash memory cards, today announced it has begun production shipments of flash memory cards based on the company's advanced X4 flash memory technology. This innovative new technology holds four bits of data in each memory cell, twice as many as the cells in conventional multi-level cell (MLC) NAND (2-bits-per-cell) memory chips.SanDisk Tel Aviv University (TAU) had provided a significant contribution to the X4 advanced error correcting and digital signal processing technology, which was licensed exclusively to SanDisk by Ramot at Tel Aviv University Ltd., TAU's technology transfer company. "X4 took five years of development at SanDisk, and the finished product is a testament to the hard work and collaboration of the parties involved," said Dr. Ze'ev Weinfeld, Ramot's CEO. "Once we created the basic approach, SanDisk brought this to fruition by developing its advanced X4 controller and matching it with its advanced 43nm, 64Gb X4 memory thus making full X4 product implementation possible. This highlights the benefit commercial companies may gain from cooperation with TAU, building on our pool of talent and expertise.“ http://www.sandisk.com/about-sandisk/press-room/press-releases/2009/2009-10-13-sandisk-ships-world%E2%80%99s-first-flash- memory-cards-with-64-gigabit-x4-(4-bits-per-cell)-nand-flash-technology

9. © Hagit Messer-Yaron, 2011 Licensing deals Academia Science "Valley Death" Products Industry Licensing deals

10. © Hagit Messer-Yaron, 2011 Example: Merz Pharmaceuticals and Tel Aviv University Become Partners in Novel Drug Technology Development for Treatment of Alzheimer's Example: Merz Pharmaceuticals and Tel Aviv University Become Partners in Novel Drug Technology Development for Treatment of Alzheimer's “ Tel Aviv, Israel/Frankfurt am Main, Germany – July 10, 2007. – A novel drug technology to treat Alzheimer's disease developed by Prof. Ehud Gazit and his team of researchers at the George S. Wise Faculty of Life Sciences at Tel Aviv University (TAU), Israel, was licensed to Merz Pharmaceuticals GmbH by Ramot at Tel Aviv University Ltd., the University’s technology transfer company. The worldwide exclusive license deal includes an upfront fee and milestone payments as well as royalties on future sales.”

11. © Hagit Messer-Yaron, 2011 Academia Science "Valley Death" Products Industry Spin offs New venture formation / Spin-offs

12. © Hagit Messer-Yaron, 2011Example:

13. Individual entrepreneurship Is there a room for Individual entrepreneurship of university professors, outside the structural technology transfer process? Is there a need for Individual entrepreneurship of university professors, outside the structural technology transfer process? Can it be done?

14. © Hagit Messer-Yaron, 2011 Individual entrepreneurship Why YES The researcher feels responsible and is more motivated More efficient knowledge transfer to the industry. Why NO Public to Private Public to Private Potential conflict of interest May be inefficient in the longer term => Doable, but calls for coherent policy and clear rules of operation

15. © Hagit Messer-Yaron, 2011 Issues to be considered Ownership of IP: service inventions? If YES – set up an agreement between all parties to reflect freedom of operation vs. obligation. If no – consider the statues of future IP. Conflict of interests, conflict of commitment: Set up clear rules regarding the use of university resources, researcher own time resources; involvements of students.

16. © Hagit Messer-Yaron, 2011 Example #1: Weizmann Inst. Rules of IP: anything IS a service invention

17. © Hagit Messer-Yaron, 2011 Weizmann’s pipeline: 50-70Patent applications/year. 20-30Licensing agreements/year. 2-5Spin-off companies/year. Team of 17 employees with an annual budget of € 2.3M. More than € 1M are spend on patent filing and prosecution. Successful Technology Transfer

18. © Hagit Messer-Yaron, 2011 Selected Weizmann Success Stories QuantomiX TM | QX Capsule QuantomiX TM | QX Capsule Copaxone ® | Teva Copaxone ® | Teva Rebif ® | Merck Serono Rebif ® | Merck Serono Encryption Algorithm | NDS Encryption Algorithm | NDS GeneCards TM | XenneX GeneCards TM | XenneX NanoLub TM | Nanomaterials NanoLub TM | Nanomaterials Dunaliella | Nikken Sohonsha Dunaliella | Nikken Sohonsha Erbitux TM | ImClone Erbitux TM | ImClone Total sale of Weizmann based products €6 Bilion/year

19. © Hagit Messer-Yaron, 2011 With THE BEST Science MONDAY, JULY 4, 2011 Weizmann rated best academic workplace outside US The 150,000-square-meter leafy, landscaped campus of the Weizmann Institute of Science in Rehovot has again been named in The Scientist magazine’s annual survey as the “best place to work in academia” outside the US.

20. © Hagit Messer-Yaron, 2011 Example #2 – TAU’s policy regarding Individual Entrepreneurship As in the Weizmann inst., the default is that a researcher’s invention is a service (university) invention. A claim that the invention is not DUE to his/her “service” and it is NOT a university invention is studied and an invention can be defined (by the university) as a non-service invention * => The researcher has a complete freedom of operation (subject to NO COI/COC) With a service invention, there are cases where the University decides that it is not interested in commercialize the invention, and the IP is assigned to him/her with an obligation to share with the university 20% of his/her income. * => The researcher has a complete freedom of operation (subject to NO COI/COC)

21. © Hagit Messer-Yaron, 2011 Dealing with Future IP Once freedom of operation (FOO) were given to an individual researcher, based on existing IP, the main challenge is dealing with future IP created by the researcher. The policy should leave FOO together with the rights of the university w.r.to its IP. In TAU, a specific regime where FOO is guaranteed has been formally defined, with on obligation for full disclosure to the University, and sharing revenues from activities outside this regime.

22. © Hagit Messer-Yaron, 2011

23. Legal Infrastructure Policy Implementation Personnel What is needed for successful TT?