ip policies and issues in italian universities
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“ IP M a n a g emen t @ Universities ” Istanbul, May 1 6 to 1 8 , 201 2 • A lbert L ong H all, B OGAZICI U NIVERSITY. IP POLICIES AND ISSUES IN ITALIAN UNIVERSITIES. ALBERT LONG HALL Thursday, May 17, 2012. Mr. Alberto Camusso - Attorney-at-Law / Partner - PowerPoint PPT PresentationTRANSCRIPT
IP POLICIES AND ISSUES IN ITALIAN UNIVERSITIES
ALBERT LONG HALLThursday, May 17, 2012
Mr. Alberto Camusso - Attorney-at-Law / PartnerJacobacci & Associati, Turin, Italy
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
IP Polices and Issues in Italian UniversitiesMr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
SummaryAn Overview 1.Legal and regulatory framework
2.University spin-offs
3.Patenting practices and licensing issues
4.A look ahead & conclusions
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 UniversitiesMr. 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)
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
IP Polices and Issues in Italian UniversitiesMr. 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
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
IP Polices and Issues in Italian UniversitiesMr. 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
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
IP Polices and Issues in Italian UniversitiesMr. 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
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
IP Polices and Issues in Italian UniversitiesMr. 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)
2. University spin-offs
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
IP Polices and Issues in Italian UniversitiesMr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy
Entity established for the industrial/economic exploitationof 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
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
IP Polices and Issues in Italian UniversitiesMr. 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*
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
IP Polices and Issues in Italian UniversitiesMr. 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
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 UniversitiesMr. 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
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
IP Polices and Issues in Italian UniversitiesMr. 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
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 UniversitiesMr. 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
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
IP Polices and Issues in Italian UniversitiesMr. 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
Thank youAlberto Camusso
PartnerJacobacci & Associati
[email protected] www.jacobacci-law.com
Corso Emilia, 810152 Torino - ITALY
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
IP Polices and Issues in Italian UniversitiesMr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy