Presentation on theme: "Managing the University IP Office"— Presentation transcript:
1 Managing the University IP Office Marta CatarinoTecMinhoUniversidade do MinhoNairobi, the 31st March 2009Regional Forum on the Role of Patents and the PCT in research in Developing Countries
2 AgendaDifferent IP/TT Office ModelsDefining a model for a Tech Transfer OfficeReaching the market through Entrepreneurship
3 The ChallengeKnowledge transfer is stimulating communication between two very different cultures.
4 The ChallengeThe Technology Transfer Office (IP Office, Knowledge Transfer Office) provides this much needed support.
5 How to manage TT?NewKnowledgegenerationApplicationTT- R&D centres- UniversitiesScientific know-how and competencies (knowledge, vision,...)Service providerCompetencies?(mixed…)Industrial know-how & competencies (technology, market,...)Industry companies start ups - spin-off - projects
6 TT by external providers Different TT models1TT by external providersNewKnowledgeApplication2Integrated TT (company with R&D centre, Univ. spin-off)generationTTNewKnowledgegenerationApplication3TT to “sell” knowledgeTTNewKnowledgegenerationApplication4TT to “buy” knowledgeTTNewKnowledgegenerationTTNewKnowledgeApplication
7 Functions of a TTOffice Different TTO modelsFunctions of a TTOfficeResearch information and financingManaging R&D informationContext analysis – legal and marketManaging industry relationsProject ManagementInvention disclosureIP Portfolio management and evaluationContract drafting and negotiationIdentifying best exploitation routeKnowledge Transfer ManagementPatent drafting and applicationNegotiating licensing termsDefining profit/equityCompanyFunctions
8 Models Different TTO models Model Emphasis Legal status Legal model OwnershipPoliciesGovernanceLegal department of UniversityAdministrative modelAdministrative processes, relationship with research base, contract researchDedicated dept. of UniversityBusiness modelManaging & commercialising IP, collaborative research, business development, spin-offs, seed capitalSubsidiary of UniversityOutsourcingBundling (gathering) IPIndependent company
9 AgendaDifferent IP/TT Office ModelsDefining a model for a Tech Transfer OfficeReaching the market through Entrepreneurship
10 Values, resources and objectives Defining a modelValues, resources and objectivesAudit and evaluate resources*Culture/contextRelative weight of University DepartmentsAreas of scientific excellencePrevious experience in TTResearcher attitude*tangible and non-tangible
11 Political, Environmental and Legal Context Defining a modelPolitical, Environmental and Legal ContextConsider:Available Financing structures, levels and opportunitiesGovernmental policies and strategiesLegal Context:IP ownership and regulationsRegulations for the exploitation of R&D resultsEconomic Environment:Labour marketType of Industry
12 Mission, Strategy & Objectives Defining a modelMission, Strategy & ObjectivesShould be:Compatible with the University missionClearly defined, clearly defended, clearly communicatedSufficiently explicit to provide directions for more detailed actions and proceduresSupported by all stakeholdersPeriodically reviewed
13 Internal Objectives Defining a model What are the TTOffice objectives? Generate research fundingEncourage innovation in faculty, researchers and studentsReward, retain & recruit faculty and studentsCreate employment opportunities in S&T areas for graduatesFacilitate the setting-up of spin-off companies
14 Aligning the Structures What does the University expect from TT?Who is responsible for which objectives?What level of responsibility?How are TT processes structured and supported?What processes exist to identify and evaluate IP?What processes are in place for its exploitation?Who decides on how it should be exploited?Using which criteria?How are these processes controlled?
15 Main operational difference Faculty serviceProfit generation- Raising awareness- Each disclosure raises the same interest- Researchers are key- Happy researchers- Focus on profit- Pressure to concentrate on potentially profitable disclosures- Professionalisation- Few very happy researchersA combination of both is possible (and desirable)
16 Main operational difference Examples of Faculty service:Organize meetings between researchers & industryRecognize and disseminate the impact of researchActive contribution to University seminars, courses, workshops.Publication of “how to” guides in industry relationsLegal support in managing industry fundingAllow enough freedom for researchers to get involved in industry relationsProfit generation- Focus on profit- Pressure to concentrate on potentially profitable disclosures- Professionalisation- Few very happy researchersA combination of both is possible (and desirable)
17 How to start? (the Research side) Know the rules of the game:internal context,external context,Mission, strategy and objectivesKnow what you have to offerKnow who the clients are and what are their needsIdentify (and involve) who can support: financing schemes, governmental support, development funding, industrial associations, chambers of commerce, banks…
18 Companies Who must be involved? Government National IP Office Service providers(IP Lawyers,consultants)University &ResearchinstitutionsCompaniesFinancinginstitutions(VC, banks)Incubators,S&T Parks
19 Companies Who must be involved? Government National IP Office Service providers(IP Lawyers,consultants)University &ResearchinstitutionsCompaniesFinancinginstitutions(VC, banks)Incubators,S&T Parks
21 Remarks on the regional level Importance of structuring partnerships at regional level (top-down approach), as adequate framework for bottom-up long-term partnershipsImportance of measuring outcomes of strategic partnerships in the regional context (cost-effectiveness)Design new partnerships or cooperation models inspired in the best practices available, but always addressing the specific regional situation (it is not possible to create “Silicon Valleys” everywhere!)
22 Back to research context… Screening &EvaluationIP Protection &ManagementMarketingBusiness Dev.Deal makingIs it feasible?Is there a market?Is the researcher committed?Do we own it?Is it patentable?Can IP be enforced?What can we make public?Is it too early?Is it feasible?Will it be too expensive?Does it have other applications?Do we have enough intormation?Do we need to reduce to practice?How to draft the application?How to present information?What tools to use for marketing?How should the clients be reached?What are the markets?What is our segment? How to target ir?Where and how to reach possible partners?Do we have a team?Is the business model sound?Have companies expressed interest?What countries/regions?Are NDAs in place with every contact?Do agreements secure IP?Licensing or spin-off?Exclusive or non-exclusive licenses?Does the business plan make sense?How to approach the client?What information is needed?How much is the IP worth?What is the vale proposition?How to negotiate?ResearchProof ofconceptIndustrialPrototypeBusinessmodelMarketWhat are the licensing terms?What is the impact in future research?
23 Intellectual Property Policy A clear (and reasonable) IP Policy is vital to the establishment of an effective Tech Transfer activity within the University.It allowsTo define ownership (University? Researchers? What about students?)To motivate researchers by providing incentivesTo clarify interinstitutional collaborationTo facilitate understanding by industry of the ways of University…
24 Invention disclosureIf the TTOffice is to manage the IP Portfolio, it must know what the University is doing.Is there a clear process for disclosing new inventions that might be patented?Is this information centralised?Meetings with Research Centre Directors?Visits to all researchers?Internal “call for papers”?
25 Invention disclosureThe disclosure has 2 objectives:Internal: Identify technologies/know-how from the University in order to know what can be transferred to industryExternal: comunicate to industry what the University has to offer – Technology Marketing
26 Invention disclosureInternal: Identify technologies/know-how from the University to transfer to industry – who is doing what? Is it new? Does it have advantages? Can it be applied and by whom? Can it be patented?External: communicate to industry what the University has to offer – who can be interested in this know-how? How can it be applied? What are the expected results? What is the roadmap to bring it to market?
27 Invention disclosureIf the previous questions can’t be answered (in some way), it’s not an invention disclosureThe less resources you have, the earlier in the research process you have to work onScientifically valuable and patentable results may not be commercially relevantLack of market kills the businessIndustrial validation by companies asap!Protect IP whenever possible!
28 Clearly defined IP Policy Some Best PracticesInvention pipelineIdentify most promising scientific areasThorough and timely Disclosure to enable IP protectionClearly defined IP PolicyWho owns the technology? Which rights?Investment in support to research and TTProfessional team and professional management of processesInternal delimitation of responsibilities
29 Best Practice Guides Best practice guides (in english) available in our website:
30 AgendaDifferent IP/TT Office ModelsDefining a model for a Tech Transfer OfficeReaching the market through Entrepreneurship
31 3 levels of Academic Entrepreneurship Entrepreneurship at UMinho3 levels of Academic EntrepreneurshipEntrepreneurship - a subject itselfTraining and supporting entrepreneurship - starting new businesses spin-offsThe entrepreneurial university - creation and maintenance of an enterprising culture
32 Entrepreneurship at UMinho Entrepreneurship activities are carried out following 3 axis:Raising AwarenessTraining and CoachingDirect support
33 Phases of spin-off creation Direct supportPhases of spin-off creationUniversity University/Project Project/Company CompanyResearchProof of principleFeasibilityProof of conceptMarket & TechnologyPreparationMarket & ProductVentureProduction & Business DevelopmentScouting Screening Support Participation and/or continued supportGo on / No goLicense /Spin-off
34 Awareness and motivation Direct supportEntrepreneurship isabout people:Awareness and motivationis essential!
36 Examples of Awareness Activities Society in generalSeminars and awareness sessionsIdeas competition (InventUMinho) for groups of students + teacher from Secondary Schools
37 Examples of Awareness Activities Graduate studentsSeminars and awareness sessionsProject Based Learning including evaluating market potential of technologies and pre-Business Plan to start companiesCampus companies
38 Graduate students and post-grads Training and CoachingGraduate students and post-gradsSeminars and awareness sessionsPhD curricula including Entrepreneurship topics + elaboration of a BP for the commercialisation of the results of the PhD programme
39 Graduate students and post-grads Training and CoachingGraduate students and post-gradsTechnology Commercialisation Programme:5 month course where teams of researchers + business students elaborate a plan for the commercialisation of R&D results(Friday afternoons + Saturday morning)
40 Spin-off creationEntrepreneurs must have a link to the University of Minho:teaching staff;researchers;under-graduation and post-graduationstudents;recent graduates;technical personnel.
43 An entrepreneurial University Establishing an entrepreneurial cultureRewarding entrepreneurshipGetting connected to the marketSupporting potential entrepreneursImplementing a dual approach towards knowledge valorisation
44 Focus on quantity: support all ideas The dual approachFocus on quality: mechanisms for identification of high potential ideas for customised supportFocus on quantity: support all ideasMARKET/COMPANYIDEA
45 Marta Catarino Thank you very much for your attention! Je vous remercie de votre patience!Marta CatarinoTECMINHOUniversidade do MinhoPortugal