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University Industry Partnership Guriqbal Singh Jaiya University Industry Partnership Guriqbal Singh Jaiya

Necessity of a Holistic Approach Sustainable R&D funding Long term R&D strategies Professional R&D Necessity of a Holistic Approach Sustainable R&D funding Long term R&D strategies Professional R&D management Proactive communication efforts Technology transfer strategies Regional development in general Market development Tax, immigration and property rights laws Good governance

National / International Competition: International competitiveness is key for every R&D system. Cooperation: International National / International Competition: International competitiveness is key for every R&D system. Cooperation: International cooperation strengthens R&D-systems. Moreover, it creates foreign R&D demand where domestic R&D demand is lacking. Brain drain can be reduced. National needs and possibilities: Restructuring R&D systems will have to follow national needs and possibilities, but with the perspective of international competitiveness. Focusing on quality instead of quantity will be essential. Setting priorities means admitting posteriorities.

No “Stop and Go Policies” in R&D Long term: Developing R&D systems is a No “Stop and Go Policies” in R&D Long term: Developing R&D systems is a long term task. The political system therefore has to offer long term stability with regard to strategies and public funding. “Stop and go policies” won’t work. Beyond political agendas: R&D strategies should not be affected by political changes in governments. There has to be an understanding of R&D needs that goes beyond electoral agendas of political parties. Not only words! Strategies only become relevant when they are linked to objective based funding.

Regional Strategies to R&D Regional approaches: Regional approaches to R&D and to technology transfer Regional Strategies to R&D Regional approaches: Regional approaches to R&D and to technology transfer are decisive since every region and each economic sector are facing specific challenges and opportunities. The advantage of proximity is essential. Regional Development: Fostering regional R&D means fostering regional development in general and regional authorities with regional revenues. Joint efforts: Successful R&D and technology transfer strategies have to be developed as joint efforts of authorities, universities and the economic sector. Thus, also building up mutual trust.

Looking for Effective R&D Funding Competition and accountability: Competitive fun-ding is crucial to foster Looking for Effective R&D Funding Competition and accountability: Competitive fun-ding is crucial to foster scientific excellence. Funding of institutions should also be objective based. And: Objectives should be output targets. R&D management: Universities and research institutes need professional management capacities in order to successfully allocate R&D funds. Absorption capacities: R&D funding has to take regional aspects into consideration. Not every region has the same capacity to successfully absorb R&D investments.

University Teaching is Key What’s most important: Graduates are the most important output of University Teaching is Key What’s most important: Graduates are the most important output of universities and thus, their most important contribution to technology transfer. Therefore, university teaching is key – also for the econo-mic development of a country and its regions. Best faculty: If university teaching is key – hiring the best faculty is even more important. Entrepreneurship: Start-ups initiated by university graduates are more important for the economic tissue of a region than spin-offs of a university. Therefore, fostering entrepreneurship has to be part of standard curricula.

Including Technology Transfer in R&D Explicit and comprehensive: Universities and research institutes should develop Including Technology Transfer in R&D Explicit and comprehensive: Universities and research institutes should develop explicit technology transfer strategies. Moreover, technology transfer has to be part of an overall R&D management. Basic and applied science: One of the best ways to be successful in technology transfer is to link basic and applied science. Technology transfer is a give and take! Integrating business partners and their specific needs already in the design of research projects facilitates the transfer of innovation.

Demand Driven – Innovation Driven! More than improvements: Demand driven R&D mostly improves existing Demand Driven – Innovation Driven! More than improvements: Demand driven R&D mostly improves existing technologies or processes. Innovation driven technology transfer has to be enhanced as well in order to achieve real innovation. Seed money: Public money will be needed to support innovation driven technology transfer and proof of concept projects. Matching responsibilities: Industrial partners should contribute financially. Matching funds are the most successful way to foster innovation driven technology transfer.

Specific Challenge: Addressing SME Sustainable economic development: SME are key for a sustainable economic Specific Challenge: Addressing SME Sustainable economic development: SME are key for a sustainable economic tissue of a region. Special attention therefore, has to be given to integrating SME in R&D networks. Special care: SME usually don’t have the resources to tackle more than their daily business. Moreover, they don’t have ties to the scientific community. Knowing their specific needs and offering concrete services therefore is decisive for successfully addressing SME.

Technology Transfer: Some Best Practices Regular, institutionalized contacts of universities and industrial partners can Technology Transfer: Some Best Practices Regular, institutionalized contacts of universities and industrial partners can build up mutual understanding. Specific clubs of regional companies as “group of friends of the university” seem to be promising. Joint projects of research institutes and industrial partners Internships in the industry as part of standard university curricula Industrial partners lecturing at the universities Sabbaticals of university professors in the industry

Culture of Science Building up a culture of science: A “culture of science” is Culture of Science Building up a culture of science: A “culture of science” is decisive for a sustainable public R&D funding – and beyond. Bridging the gap: Professional “interpreters” are needed bridging the gap between science and a broader public. Proactive R&D communication: Communication strategies have to address politicians, staffers, the economic sector and the public in specific ways.

Why We Want to Improve? We need knowledge and innovation based societies not only Why We Want to Improve? We need knowledge and innovation based societies not only to assure economic growth in global markets, but also to cope with the global challenges of today.

Top 100 research universities 2005 data from Shanghai Jiao Tong University Institute of Higher Top 100 research universities 2005 data from Shanghai Jiao Tong University Institute of Higher Education Others: Israel, Finland, Denmark, Austria, Norway, Russia, Italy each 1.

The Super-League in 2005 from Shanghai Jiao Tong University data 1 HARVARD USA 11 The Super-League in 2005 from Shanghai Jiao Tong University data 1 HARVARD USA 11 Yale USA 2 Cambridge UK 12 Cornell USA 3 Stanford USA 13 UC San Diego USA 4 UC Berkeley USA 14 UC Los Angeles USA 5 MIT USA 15 Pennsylvania USA 6 Caltech USA 16 Wisconsin-Madison USA 7 Columbia USA 17 Washington (Seattle) USA 8 Princeton USA 18 UC San Francisco USA 9 Chicago USA 19 Johns Hopkins USA 10 Oxford UK 20 Tokyo Japan

Types of academia-industry/business collaboration (survey based on 25 universities and research institutions) Consultations 17% Types of academia-industry/business collaboration (survey based on 25 universities and research institutions) Consultations 17% Training, seminars, conferences 13% Organization of student, doctoral, etc. research practices 11% Assisting the management of business processes 8% Studies of the effectiveness of technologies/ products/services 7% Creation of new technologies 6%

Results attained by academia-industry/business collaboration Gaining new experience 20, 9% Making contacts with foreign Results attained by academia-industry/business collaboration Gaining new experience 20, 9% Making contacts with foreign organizations with similar activities 16, 1% Development of new research fields 15, 7% Initiating of new university subjects, post-graduate qualifications and courses 13, 4% Getting more information about the innovation needs of companies 12, 7% Getting actual economic information 11, 8% Receiving of additional funding 9, 3%

The Mission of a University Education, research and public service Source of discoveries, new The Mission of a University Education, research and public service Source of discoveries, new knowledge and basic research (upstream research) Provide skilled and educated manpower to meet the developmental needs of the country.

The Mission of a University… Many universities, however, are accused of Being in ivory The Mission of a University… Many universities, however, are accused of Being in ivory towers, removed from the needs of the community pursuing knowledge of little relevance to the developmental needs of the country producing a workforce ill equipped to meet the challenges of industry and in general contributing very little to the practical development needs of a country

University Research Investigator initiated – Discovery driven University sets priorities for future research New University Research Investigator initiated – Discovery driven University sets priorities for future research New faculty are hired based on these priorities New faculty investigators seek research support Faculty act like entrepreneurs within the university seeking research support form government and private sources

Network of Agreements Sponsored research Federal Foundations Corporate Material transfer agreements Consulting agreements Collaborators Network of Agreements Sponsored research Federal Foundations Corporate Material transfer agreements Consulting agreements Collaborators who may be joint inventors

Stakeholders in the University Faculty Deans and Department Heads Research Legal Finance University Relations Stakeholders in the University Faculty Deans and Department Heads Research Legal Finance University Relations Alumni Affairs and Development

Influences on Technology Transfer Philosophy of the University Entrepreneurial vs. Risk averse Expectations Proximity/Access Influences on Technology Transfer Philosophy of the University Entrepreneurial vs. Risk averse Expectations Proximity/Access to venture capital Access to management Local business community Local assistance programs State economic development programs

Business Development in a University Do lots of deals, make lots of money Respect Business Development in a University Do lots of deals, make lots of money Respect academic values Insure obligations to sponsors of research Compliance with gov’t regulations Stay within budget Maintain relationships Avoid controversy

Roles of the Technology Transfer Office Disclosure evaluation and patent decisions Management of patent Roles of the Technology Transfer Office Disclosure evaluation and patent decisions Management of patent prosecution Technology marketing Licensing Management of existing licenses Material transfer agreements

A « UNIVERSAL » CHALLENGE q. A gap between Research and Economy § Limited A « UNIVERSAL » CHALLENGE q. A gap between Research and Economy § Limited impact of R&D on competitiveness § Limited cooperation between RDI and SMEs q. A challenge all over the world § Most countries support R&D § Gvts. expect to get R. O. I. from their R&D spending A UNIVERSAL CHALLENGE ALL OVER THE WORLD

A « DOUBLE » CHALLENGE q. Res. Scientists are not motivated to work with A « DOUBLE » CHALLENGE q. Res. Scientists are not motivated to work with SMEs q. SMEs are not motivated to work with « academic » scientists STRONG INCENTIVES ARE NEEDED

Push or Pull ? Push or Pull ?

Push or Pull ? Market Pull Technology Push q From the Lab to the Push or Pull ? Market Pull Technology Push q From the Lab to the market q Idea of a scientist q Limiting step : selling the idea (and the project) to industry TOP DOWN (Technology absorption) q q From market needs to the lab AND Back to market Need identified by industry Limiting step : § Identifying the customer § Identifying the need BOTTOM UP

Push or Pull ? q. Technology Push Give more « fancy » results but Push or Pull ? q. Technology Push Give more « fancy » results but it will take more time and it is very risky q. Market pull (Technology absorption) Give less « exotic » results but much more frequent + a higher success rate

Push or Pull ? SUCCESS RATE : q. Technology push : Low (a few Push or Pull ? SUCCESS RATE : q. Technology push : Low (a few %) q. Market Pull High (50%, with some experience) Market pull offers a potential usually underestimated

A Challenge !! ! q. RDIs think almost exclusively…. « TECHNOLOGY PUSH » q. A Challenge !! ! q. RDIs think almost exclusively…. « TECHNOLOGY PUSH » q. S. E. T. S(*) are more interested by « MARKET PULL » (*)S. E. T. S. : Traditional Sectors Small Entreprises

A 3 Partners cooperation q. Technological Institutes (RDIs) § Provide the appropriate technology services A 3 Partners cooperation q. Technological Institutes (RDIs) § Provide the appropriate technology services q. SMEs § Identify the market needs § Manage innovative projects q. The Government (Ministries, agencies. . ) § Stimulate the process to boost the economy § Provide incentives (for Scientists and for Industry) § Provide assistance § Often provide some funding

Targeting SMEs The main issue is to : q. Identify potentially interested SMEs AND Targeting SMEs The main issue is to : q. Identify potentially interested SMEs AND q « Sell » them technology services

Targeting SMEs. . . q Conferences, seminars… q Commercial fairs q Brokerage events q Targeting SMEs. . . q Conferences, seminars… q Commercial fairs q Brokerage events q Existing networks § Regional networks (Chambers of commerce) § National networks (Innovation agencies) § European networks § E. U. « networking » activity (ERA-NET) q V. C. forums q Private consultants q Data Banks ? q ……

Targeting SMEs. . . Communicating with SMEs The most efficient way to communicate is Targeting SMEs. . . Communicating with SMEs The most efficient way to communicate is not to present what an RDI can do BUT : To ask the manager of an SME who has had a successful partnership with an RDI to testify in front of other SME managers

The « next » step… Building up mutual respect q. It takes some time The « next » step… Building up mutual respect q. It takes some time q. Personal contacts q. Usually the first cooperation are « modest » q. At that stage Gvt. support is needed

SMEs –RDI cooperation Numerous way to cooperate q. R&D contracts q. Consulting q. Technology SMEs –RDI cooperation Numerous way to cooperate q. R&D contracts q. Consulting q. Technology « diagnostic » q…… q. Licensing

The role of Governments: Public-Private Partnerships The role of Governments: Public-Private Partnerships

Governmental programs q. Many programs to support SMEs: § National § Regional § International Governmental programs q. Many programs to support SMEs: § National § Regional § International q. One common goal : to bring assistance to SMEs to improve their competitiveness

Governmental programs q. To strengthen SMEs competitiveness Assistance for: § Identifying partners § Preparing Governmental programs q. To strengthen SMEs competitiveness Assistance for: § Identifying partners § Preparing a Business Plan § IPR and legal matters q. To provide some public funding Financial support for project preparation § Matching grants § Soft loans §

A few National Programs q United States : SBA q Europe : § Finland A few National Programs q United States : SBA q Europe : § Finland : TEKES § France : Oséo-Innovation § The Netherlands : Senter § Spain : CDTI + Numerous Regional programs § Ex. Flanders

International Programs q World Bank projects on Tech. Development § Far East (India, Korea…) International Programs q World Bank projects on Tech. Development § Far East (India, Korea…) § Latin America (Mexico…) § Eastern and Central Europe (Croatia, Ukraine…) q European Union Framework Program § Research for the benefit of SMEs q Other European programs § Eureka initiative § Intergovernmental (Mkt. Oriented, nationally funded) § European Space Agency § Technology Transfer program

E. U. programs for SMEs q Research for SMEs (former CRAFT) Coordination of SMEs E. U. programs for SMEs q Research for SMEs (former CRAFT) Coordination of SMEs RTD co-operation § ERA-NET § Eurostar q SMEs participation to RTD projects + q Various supporting actions § Network of National Contact Points § Coordination and support actions

The role of Governments To create a favourable environment § Fiscal laws § Patent The role of Governments To create a favourable environment § Fiscal laws § Patent laws § Encourage mobility § R&D funding allocation

The role of Governments q. To provide infrastructures § Incubators § Technology parks q. The role of Governments q. To provide infrastructures § Incubators § Technology parks q. To provide assistance § Financial § Legal § Economical

The role of Governments Incentives, Incentives…. q. Incentives for SMEs q. Incentives for Scientists The role of Governments Incentives, Incentives…. q. Incentives for SMEs q. Incentives for Scientists

The role of Governments q. A stable legal framework over a long time q. The role of Governments q. A stable legal framework over a long time q. A rigorous monitoring process § To follow progress § To learn (from failures)

Methods to Transfer Technology Training of students Publication of research results Exchange of research Methods to Transfer Technology Training of students Publication of research results Exchange of research materials Collaborative research projects Consortia Faculty consulting Technology licensing Start ups

Technology Transfer Commercialize research results funded primarily by the federal government for the public Technology Transfer Commercialize research results funded primarily by the federal government for the public good Recruit, reward, and retain faculty and students Induce collaborations with industry Promote economic growth Generate income to promote and support teaching and research

Roles of the Technology Transfer Office Disclosure evaluation and patent decisions Management of patent Roles of the Technology Transfer Office Disclosure evaluation and patent decisions Management of patent prosecution Technology marketing Licensing Management of existing licenses Material transfer agreements

Criteria for Start Ups Business plan Expectation that company can accomplish goals Faculty and Criteria for Start Ups Business plan Expectation that company can accomplish goals Faculty and staff involved have cleared conflict review No equity only deals Equity represents fair value for technology licensed

Stakeholders in the University Faculty Deans and Department Heads Research Legal Finance University Relations Stakeholders in the University Faculty Deans and Department Heads Research Legal Finance University Relations Alumni Affairs and Development

University Research Investigator initiated – Discovery driven University sets priorities for future research New University Research Investigator initiated – Discovery driven University sets priorities for future research New faculty are hired based on these priorities New faculty investigators seek research support Faculty act like entrepreneurs within the university seeking research support form government and private sources

Network of Agreements Sponsored research Federal Foundations Corporate Material transfer agreements Consulting agreements Collaborators Network of Agreements Sponsored research Federal Foundations Corporate Material transfer agreements Consulting agreements Collaborators who may be joint inventors

Influences on Technology Transfer Philosophy of the University Entrepreneurial vs. Risk averse Expectations Proximity/Access Influences on Technology Transfer Philosophy of the University Entrepreneurial vs. Risk averse Expectations Proximity/Access to venture capital Access to management Local business community Local assistance programs State economic development programs

Business Development in a University Do lots of deals, make lots of money Respect Business Development in a University Do lots of deals, make lots of money Respect academic values Insure obligations to sponsors of research Compliance with gov’t regulations Stay within budget Maintain relationships Avoid controversy

Changing Role of Universities key players in the Knowledge Economy. They produce the raw Changing Role of Universities key players in the Knowledge Economy. They produce the raw material for the knowledge economy Universities are expensive institutions for any country, what ever be the level of development (investment) There is a certain expectation now that countries cannot afford to let this very important resource go unmanaged. That there must be a return on investment and that knowledge generated in universities must be fashioned to meet the needs of the country after development by others (down stream research), in many products beneficial to the community.

The Challenge of Universities Unable to retain qualified people Inadequate state funding, no means The Challenge of Universities Unable to retain qualified people Inadequate state funding, no means of creating funding sources Inadequate infrastructure and facilities Gap between the outcome of university research and the stage which firms can assimilate it

University Industry Cooperation Benefits to University Industry is the conduit through which the results University Industry Cooperation Benefits to University Industry is the conduit through which the results of university research can be transferred, disclosed and disseminated to the public for the public benefit It will bring in badly needed funds allowing the university to fulfill its fundamental mandate. Supplement the income of staff to retain talented staff Provide early exposure to universities of the inner workings of industry

Concern – will universities be able to fulfill its fundamental mandate Universities have evolved Concern – will universities be able to fulfill its fundamental mandate Universities have evolved from “public trusts to something akin to venture capital firms” - Fortune Research should be curiosity driven not market driven Open culture of sharing and publication now clouded in secrecy and driven by profit Loss of control private interests may undermine the objectivity of research by causing bias, suppression of results, and even fraud

Benefits to industry Industry is not usually in the business of basic research whereas Benefits to industry Industry is not usually in the business of basic research whereas that is the function of university Source of new technologies Expert support at lower cost

Concerns… University inventions are sometimes considered too early stage (arcane!, impractical) and a lot Concerns… University inventions are sometimes considered too early stage (arcane!, impractical) and a lot of innovation may be required to make it ready for market Universities tend to publish early What follow up support could be expected from the inventor further development Universities’ mind set is academic and not entrepreneurial Universities are less inclined to work with small firms who cannot provide the same legal and financial security as a larger firm.

Corporates Strategy Retentionist Strategies vary Applied Research Impact Direct use of IP in each Corporates Strategy Retentionist Strategies vary Applied Research Impact Direct use of IP in each field to maximise income; limit or control competition; create entry barriers for others; develop brand awareness; enter new areas; motivate staff Universities/Colleges Sale and licensing options “Ivory Tower” Donation Generate income; cultivate new markets; get rid of non-core/incidental inventions/processes; develop new products; control costs Lesser emphasis on commercial imperatives; greater commitment to open dissemination of knowledge; emphasis on social mission etc. Eastman Chemical donation to to North Carolina universities Basic Research

Revenue Mission Policies Need To Be Flexible Not Fixed? One Mission or Many Missions? Revenue Mission Policies Need To Be Flexible Not Fixed? One Mission or Many Missions? Intellectual Capital Intellectual Property Assets Management Value Collegiality Outreach within and between sectors IPRs H&FE IPRs and Asset Management Will Be A Compromise? Internal and External Relationships; IPRs Tangible Intangible Patents; Trade Marks; Copyright; Designs; Confidential Information Many Missions In A Single Institution? Mission Revenue

 The Cultural Dilemma Knowledge for Knowledge’s Sake UNIVERSITY INDUSTRY Management of Knowledge for The Cultural Dilemma Knowledge for Knowledge’s Sake UNIVERSITY INDUSTRY Management of Knowledge for Profit Teaching Research Service Commercialization of New and Useful Technologies Economic Development Academic Freedom Open Discourse Profits Product R&D Confidentiality Limited Public Disclosure

Blending the University Research and Entrepreneurial Cultures Academics Industry research priorities set by investigator Blending the University Research and Entrepreneurial Cultures Academics Industry research priorities set by investigator research priorities set by management grant-seeking profit-seeking publications proprietary serendipity control transfer at early stage add value before transferring

Factors that Influence University. Industry Collaborations Technological advances in science-based and technology-intensive industries Computer Factors that Influence University. Industry Collaborations Technological advances in science-based and technology-intensive industries Computer software Advanced materials Biotechnology Increased international competitiveness Slowing of public and private support for industrial R&D

Factors that Influence University. Industry Collaborations Encouragement of research collaborations Federal research programs to Factors that Influence University. Industry Collaborations Encouragement of research collaborations Federal research programs to promote national competitiveness through technology development State programs to promote technology development

Changing Roles “University-industry technology transfer can be a stimulant, precursor or complement to building Changing Roles “University-industry technology transfer can be a stimulant, precursor or complement to building a high skills, high wage, state economy. ” Increase in interdisciplinary research Emphasis on commercialization Encourage university-industry collaborations

Issues in University-Industry Relationships Ownership of intellectual property Confidentiality Publication Indirect costs of research Issues in University-Industry Relationships Ownership of intellectual property Confidentiality Publication Indirect costs of research Exchange of research materials

Concerns about University-Industry Relationships Universities will abandon their core missions Potential change of university Concerns about University-Industry Relationships Universities will abandon their core missions Potential change of university research focus –less basic, more applied University research funding tied to job creation

Conflicts of Interest Conflicts of Commitment Concerns about the loss of objectivity Investigator conflicts Conflicts of Interest Conflicts of Commitment Concerns about the loss of objectivity Investigator conflicts of interest Collection and analysis of data Sharing results and materials Institutional conflicts Equity management Patient protection in clinical trials

Useful Web Sites Association of University Technology Managers –www. autm. net Council on Governmental Useful Web Sites Association of University Technology Managers –www. autm. net Council on Governmental Relations – www. cogr. edu Association of American Universities – www. aau. edu

Types of Cooperation Direct funding of research through gifts and grants Exchange programs and Types of Cooperation Direct funding of research through gifts and grants Exchange programs and internships Consulting by faculty Commercialization of inventions, innovations and research findings

Discovery to entrepreneurship Source UC Davis Discovery to entrepreneurship Source UC Davis

Inventions: Process Invention Complete Invention Disclosure Form (web) and provide all data on Invention Inventions: Process Invention Complete Invention Disclosure Form (web) and provide all data on Invention CSRL Notification of Patent Filing to Inventors Free to Publish (or make other public Disclosure) Inventors to complete Declaration and Assignment Documents Critical Evaluation of Invention (2 – 4 weeks) Depends on Extent Of data (CSRL) Convey Decision To Principal Investigator Yes, Patent Filing Outside Attorneys File. Collaborative – CSRL, Inventors, Attorney (1 -3 months) No Patent Filing Free to Publish

Inventions: Evaluation of Inventions (Case Manager) Preliminary Screening for Appropriate Filing Content Evaluation of Inventions: Evaluation of Inventions (Case Manager) Preliminary Screening for Appropriate Filing Content Evaluation of the Product and its Market Evaluation of Science Strength/ Evaluation of Institutional Issues Evaluation of Patent Position Additional Considerations

Invention: Process (continued) YEAR 1 YEAR 2 Y 0 YEAR 3 Y 4 PROSECUTION Invention: Process (continued) YEAR 1 YEAR 2 Y 0 YEAR 3 Y 4 PROSECUTION Back and forth with the Patent Office PATENT FILING Identify Licensee • Start-up? • VC? Negotiate License Option ISSUANCE Manage Licensee Relationship

Finding a partner company: Marketing and licensing Identify companies that may have an interest Finding a partner company: Marketing and licensing Identify companies that may have an interest in the invention Related product market analysis and reports Inventor knowledge and experience Contact companies Non-confidential disclosures Disclosure of confidential information under a Confidentiality Agreement Negotiate license Exclusive or non-exclusive Royalties, up-front payments, milestones etc. Due diligence provisions

Distribution of License Revenue Expenses incurred in IP protection or creation are deducted prior Distribution of License Revenue Expenses incurred in IP protection or creation are deducted prior to distribution of License Income Inventor(s) (25%): Divided equally among all coinventors MGH (25%) Inventor’s Laboratory (25%) Inventor’s Department (25%)

From invention to issued patent (annual numbers) Scoring tool/ Screen 3, 000 lead researchers From invention to issued patent (annual numbers) Scoring tool/ Screen 3, 000 lead researchers (PIs) with $1 billion in annual expenditures 350 to 400 invention disclosures submitted annually to RVL Patent Office Decision 175 to 200 patent applications 80 to 100 patents issued 50% 75 to 125 licenses* *License amounts vary widely and some technologies have more than one licensee

Goal of a University IP Policy Not conflict with the primary goals of an Goal of a University IP Policy Not conflict with the primary goals of an university (teaching and research) Balance the interests of all stake holders The university employs the researcher, provides the facilities and its name The researchers expends his time, energy and skills The govt uses its scarce resources to support universities and expects the knowledge produced to promote national development Sponsors want to own the results of sponsored research

Elements of an IP Policy - 1. Ownership Inventions and innovations arising from activities Elements of an IP Policy - 1. Ownership Inventions and innovations arising from activities using university resources and facilities are owned by the university

The ownership of inventions and innovations that arise from activities using government grants depends The ownership of inventions and innovations that arise from activities using government grants depends on the law of the country US - Bayh Dole Act. Japan

Bayh-Dole Act of 1980, USA Prior to the Bayh-Dole Act public funded research belonged Bayh-Dole Act of 1980, USA Prior to the Bayh-Dole Act public funded research belonged to the public. 50% of all research in the US was government funded but very little was put to use. No private ownership no investment. Under the Act, inventions made by universities that have received federal funding may be owned by the university. The inventor must disclose the invention to the university and to the government with a statement that the invention was made with government support. The government retains a non-exclusive, non-transferable, irrevocable, paid up, world wide license The government can require the inventor to grant reasonable licenses to third parties under certain circumstance (march in rights)

Bayh-Dole Act Important Provisions Universities may elect title to inventions Universities are expected to Bayh-Dole Act Important Provisions Universities may elect title to inventions Universities are expected to protect IP Government retains non-exclusive license Government retains march-in-rights Uniform guidelines for granting licenses Universities must report on activities

Since Bayh-Dole came into force, nearly 5, 000 companies have been spun out of Since Bayh-Dole came into force, nearly 5, 000 companies have been spun out of American campuses, over 40, 000 licence agreements have been concluded between academic institutions and outside parties. Companies with their roots in the US university system now contribute an estimated US$40 billion a year to the country’s economy. The Bayh-Dole is credited for the creation of around 1500 biotech companies, employing more than 180, 000 people generating upwards of US$40 billion in revenue For example the California Institute of Technology (CALTECH) received in one year some 10 m $ in licensing revenue, filed 416 patent applications, received 142 patents, started 14 new companies.

A wide range of new products have stemmed from university -based research Kansas State A wide range of new products have stemmed from university -based research Kansas State University developed nanomaterials that can neutralise a wide range of contaminants and chemical warfare agents. The technology is licensed to Nano. Scale Materials Inc of Manhattan, Kansas. University of North Carolina invented a software program that incorporates a 3 D microscope, which allows students to experience microscopy in the classroomand from home. The technology is licensed to Science Learning Resources Inc, of Carboro, North Carolina. Researchers at Boston University, developed an optical device known as the Numerical Aperture Increasing Lens (NAIL) to produce high-resolution images of wafer circuitry. Edge. Tech of Marlborough, Massachusetts, has taken a licence to a sonar technology developed at Florida Atlantic Univeristy that can be used to locate buried underwater mines. Purdue University developed a miniature mass spectrometer now licensed to Griffin Analytical Technologies Inc, of West Lafayette, Indiana. This portable device can be used to identify chemical warfare agents, explosives and toxic industrial chemicals. University of Texas scientists developed wired enzyme technology, which allows diabetes patients to measure blood glucose with a much smaller sample than required by existing methods. Allergan Inc, of Irvine, California, is selling a new drug, Restasis, which is based on technology licensed from the University of Georgia. Restasis, an immunosuppressant, decreases tear duct inflammation and is used to treat dry eye. The Bayh-Dole Battle by Victoria Slind-Flor, Intellectual Asset Management December/January 2006

Sponsored research Inventions arising from research sponsored other than by the government would be Sponsored research Inventions arising from research sponsored other than by the government would be governed by the terms of the agreement which would normally have been approved by the university Usually the sponsor would expect to own the results of the research (but powerful universities like UCLA own the IP even in such cases).

The Onco-mouse On April 12 1988, the U. S patent office granted Harvard a The Onco-mouse On April 12 1988, the U. S patent office granted Harvard a Patent rights over the Oncomouse, a transgenic mouse designed to have a predisposition to cancer Dupont had provided some $6 million US funding for the research that resulted in the Onco mouse and under the terms of that funding were granted an exclusive license giving Du. Pont the right to “make and have made, to use and have used, to sell and have sold, the Oncomouse, and to fully exploit the patent rights”.

Limits on informal exchange of mice - Du. Pont would not allow scientists to Limits on informal exchange of mice - Du. Pont would not allow scientists to follow their traditional practices of sharing mice or breeding extensively from the mice. Contractual control of scientific disclosure - Du. Pont imposed forms of contractual control on scientists, most notably a requirement that they fulfill annual disclosure requirements; this was not a strict prohibition on publishing but a requirement that scientists using an Oncomouse would provide an annual research report on their published findings. Reach through rights on future discoveries made with an Oncomouse - Du. Pont required that scientists give them rights to future inventions made using oncomice. These so-called reach-through rights give the licensor of a patented technology a share in any proceeds from a product even though the original technology is not incorporated into the end product. These rights are not an integral part of patent law but instead emerge as part of a negotiation over the terms of conditions of a contract to make use of a technology – they are part of the price of use. While common in the contracts between biotechnology and pharmaceutical firms, this was the first time a company had sought to impose such a provision on academic scientists.

By late 1999, after four years of negotiations, Du. Pont and the NIH signed By late 1999, after four years of negotiations, Du. Pont and the NIH signed a Memorandum of Understanding under which academic scientists (when funded by the NIH) could use oncomice without cost, providing they were not using them for any commercial purpose, including research sponsored by a commercial firm.

Inventor If the university does not proceed to patent an invention the inventor may Inventor If the university does not proceed to patent an invention the inventor may request that the right to patent be transferred to him. The University may retain a non exclusive right to use the IP for educational and research purposes and perhaps a right to a percentage of the revenue If the invention was made without “significant” use of the university’s resources the inventor could claim ownership

Elements of an IP Policy 2. Management Create a department/office such as a Technology Elements of an IP Policy 2. Management Create a department/office such as a Technology Licensing Office to be in charge of managing the university’s IP assets Responsible for the protection and commercial development of inventions and creations

Responsibilities of a TTO/TLO Processing and safeguarding relevant IP agreements; Determination of patentability, managing Responsibilities of a TTO/TLO Processing and safeguarding relevant IP agreements; Determination of patentability, managing invention disclosures, undertaking patent search and completing applications for patents; Evaluating the commercial potential of an invention; Obtaining appropriate patent protection; Locating suitable commercial development partners; Negotiating and managing licenses.

Invention Disclosure A disclosure is the first signal to the university that an invention Invention Disclosure A disclosure is the first signal to the university that an invention has been made. It is typically used to give a formal description of an invention that is confidentially made by the inventor to his or her employer. It provides information about the inventor or inventors, what was invented, the circumstances leading to the invention and facts concerning subsequent activities. It provides the basis for determining patentability and the technical information for drafting a patent application.

All researchers are obliged to report to the University TLO all potential patents through All researchers are obliged to report to the University TLO all potential patents through the disclosure document. Premature public disclosure may affect novelty and disqualify it from patentability An invention disclosure is treated with confidentiality by the TLO Submitting a disclosure is the first formal step towards obtaining proper intellectual property protection through the university.

Identify commercially valuable inventions Protect them (assess their patentability, prepare and make the patent Identify commercially valuable inventions Protect them (assess their patentability, prepare and make the patent application) Reward employees who create such inventions Commercialize (Locate commercial partners and negotiate licensing agreements)

Elements of an IP Policy - 3. Income Distribution Gross income - license fees, Elements of an IP Policy - 3. Income Distribution Gross income - license fees, royalties, milestone payments etc Net income - gross income less university expenses for filing patents, negotiating license agreements etc. . Distribution of revenue - generally the inventors share and that of the university as total net revenue Many universities grant an average of 35% income to the inventor.

Start-up/Spin -Off Commercialization of research can also take place (other than through licensing to Start-up/Spin -Off Commercialization of research can also take place (other than through licensing to another company) through the route of a spin off company that will commercialize the invention a spin off company is one that is established by members of university staff to exploit IP that belongs to the university For example the university will transfer the relevant IP free of royalty to the spin off and will seek a majority shareholding in the company. Incubators have been useful in assisting the development of spin offs

Incubators Business incubators are designed to help start-up firms. They usually provide: flexible space Incubators Business incubators are designed to help start-up firms. They usually provide: flexible space and leases, many times at very low rates fee-based business support services, such as telephone answering, bookkeeping, secretarial, fax and copy machine access, libraries and meeting rooms group rates for health, life and other insurance plans business and technical assistance either on site or through a community referral system assistance in obtaining funding networking with other entrepreneurs The primary goal of a business incubator is to produce successful businesses that are able to operate independently and financially viable.

Companies that spawned from Stanford Altera Atheros Communications BEA Systems Charles Schwab & Company Companies that spawned from Stanford Altera Atheros Communications BEA Systems Charles Schwab & Company Cisco Systems Cypress Semiconductor DNAX Research Institute Dolby Laboratories e. Bay E*Trade Electronic Arts Gap Google Hewlett-Packard Company IDEO Intuit Kiva Linked In Logitech Mathworks Mc. Caw Cellular Communications MIPS Technologies Nanosolar, Inc. Netflix Nike NVIDIA Octel Communication Odwalla Orbitz Rambus Rational Software Silicon Graphics Sun Microsystems Sun Power Corp. Taiwan Semiconductor Tandem Computers Tensilica Tesla Motors Trilogy Varian Associates VMware Whole Earth Catalog Windham Hill Records Yahoo! Zillow

Stanford University – Some of the inventions licensed Digital sound synthesis: John Chowning developed Stanford University – Some of the inventions licensed Digital sound synthesis: John Chowning developed FM sound synthesis for digitally generating sounds in the late 1960 s, leading to the music synthesizer. Disease management: The Stanford Patient Education Research Center develops programs for people with chronic health problems, including arthritis and HIV/AIDS. The program has been licensed to more than 500 organizations in 17 countries and 40 states. DSL: In the 1980 s, John Cioffi and his students realized that traditional phone lines could be used for high-speed data transmission, resulting in patents used in asymmetric digital subscriber lines. E-mail security: Identity-based encryption, developed by Dan Boneh and Matt Franklin, offers an efficient way to encrypt and protect e-mail. Functional antibodies to treat disease: In the 1980 s, Leonard Herzenberg, Vernon Oi and Sherie Morrison discovered how to mass produce antibodies— molecules that detect foreign substances—and target them for destruction by the body’s immune system. Genome sequencing: Two tools assist in the sequencing of DNA: CHEF electrophoresis, invented in 1987 by Ron Davis, Gilbert Chu and Douglas Vollrath; and Genscan software, developed by Christopher Burge. Google: The world’s most popular search engine got its start at Stanford when Sergey Brin and Larry Page developed the page-rank algorithm while they were computer science graduate students. Personalized medicine: The gene chip, based on spotted microarray technology developed in the 1990 s by Pat Brown and Dari Shalon, allows doctors to create genetic profiles of patients and their diseases. Recombinant drug production: Recombinant DNA technology, developed in 1973 by Stanley Cohen and Herbert Boyer, laid the groundwork for modern genetic engineering by allowing scientists to combine pieces of DNA from different organisms.

Questions to consider Is the mission of universities being compromised by commercial interests Should Questions to consider Is the mission of universities being compromised by commercial interests Should research results funded by tax payer money be privately appropriated

If commercialization of publicly funded research is appropriate Ensure clarity on ownership of research If commercialization of publicly funded research is appropriate Ensure clarity on ownership of research results Allow each university and PRO to develop their own internal policy along the above lines within the broader national goals Governments could inject humanitarian/public service licensing policies into such national goals

Trends… Major private research labs are down sizing while smaller start ups are increasing Trends… Major private research labs are down sizing while smaller start ups are increasing their research activities Companies are funding more basic and applied research in universities. Less corporate funding for the sake of public good but tied directly to corporate goals. More funding Less independence Rise in “real world” research