1. 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 Management @ Universities” Istanbul, May 16 to 18, 2012 Albert Long Hall, BOGAZICI UNIVERSITY

2. IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy “IP Management @ 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

3. 1.Legal and regulatory framework The University system “IP Management @ 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)

4. “IP Management @ 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

5. “IP Management @ 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

6. “IP Management @ 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

7. “IP Management @ 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)

8. 2.University spin-offs “IP Management @ 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

9. “IP Management @ 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*

10. “IP Management @ 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

11. 3.Patenting practices and licensing “IP Management @ 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

12. “IP Management @ 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

13. 4.A look ahead & conclusions “IP Management @ 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? - 274 applications filed in 2010 (around 13,000 IT/4,000 EP/2,600 PCT applications) - 320 patents granted in 2010 - 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

14. “IP Management @ 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

15. Thank you Alberto Camusso Partner Jacobacci & Associati acamusso@jacobacci-law.com www.jacobacci-law.com Corso Emilia, 8 10152 Torino - ITALY “IP Management @ 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