papaderos epo belgrade 2.ppt · 2011. 3. 30. · title: microsoft powerpoint - papaderos epo...

IP development at university: the role of

TTOs

Regional conference on teaching intellectual property in higher education establishments

European Patent Office

Belgrade, 1-2 September 2010

Dr. Alexandros Papaderos

University IP Coordinator

� Technology Transfer in universities

Outline

Dr. Alexandros Papaderos 02/09/2010

Technology Transfer in universities

� Licensing of patents

� IPR and the collaboration with industry

§ 2 University Mission (excerpt)

� “… serve the maintenance and development of science and the arts through research, teaching, study and

training in a liberal, democratic and social state of law.”

“… prepare for a career which requires the use of scientific knowledge and scientific methods…”

Bavarian Higher Education Law


� “… prepare for a career which requires the use of scientific knowledge and scientific methods…”

� “… serve teaching and research and connect them to a predominantly science-related training.”

� “… promote the international, in particular the European, cooperation in higher education, and exchanges

between German and foreign universities. … take into account the special needs of foreign students.“

� “… act together with economic and professional practice and promote knowledge and technology transfer. “

� “… promote the acquisition of additional qualifications for the transition into working life in cooperation with

the economy.”

� “… promote the connection to their former students.”

� “… inform the public of their tasks.”

TUM Forte Office for Research and Innovation

Division 1:

Research Support/ Excellence Initiative

Dr. Markus Zanner

Division 2:

Technology Transfer


TUM-Research Data Base

Research Map

Industry Liaison Office

Stefan Fiegle

Excellence Initiative Group

Dr. Christiane Haupt


Head: Dr. Markus Zanner

Finances: Melanie Hüttinger

Assistant: Nicole Jerouschek

02/09/2010

Young Researchers Office

Olivia Schmid

International Cluster Projects

EU

Kathrin Staffler

Jenny Pick

National Cluster Projects

GRF/FMER

Dr. Cornelia Gotterbarm

Research Map

Dr. Alexandra Brunner

Stefan Fiegle

Centre for Knowledge Interchange

NN

Patent and Licencing Office


Anita Widmann

Dr. Katharina Aulinger-Fuchs

Sandra SchottenhammlProject Management TUM-KAUST

Sabine Albers

Dr. Christiane Haupt

Dr. Christian Ostermeier

Erika Schropp (Emeriti of Excellence)

Equity Management


in close collaboration with:

� Legal Office

� unternehmerTUM (Entrepreneurship Centre)

� gate (Business Incubator)

in close collaboration with:

� Legal Office

� unternehmerTUM (Entrepreneurship Centre)

� gate (Business Incubator)

Technology Transfer at TUM has many forms...

Examples

Networking

� conference

attendance

Docs, Post-docs

and sabbaticals

� doctoral and

postdoctoral

theses

Sponsored Research

or Joint Research

�contract research

� co-operations

Commercia-

lization of

research

results

� Patent

licensing or

sale

Alliances

� strategic alliances


Examples

� conference

presentations

theses

� consultancy

sale

� start-up or

spin-of

companies

Benefits� latest

trends

� contacts

� exchange of

experiences

� access to

external expertise

and equipment

� financial

benefits

�creation of

centres of scientific

excellence

� establishment of

long-termed

relationships

The Patent and Licensing Office of TUM

services for all TUM members who intend to apply for a patent:

� personal consulting for inventors

general information on Intellectual Property Rights and


� general information on Intellectual Property Rights and

on the German Employees’ Inventions Act

� identification of patentable research results

� assistance with preparing and submitting Reports of Invention

� in some cases: transfer of tasks relating to the exploitation of inventions to third

parties

manning level: 4 Patent Managers (biologist, engineer, phycisist/electrical engineer,

chemist), 0.5 assistant

� Patents

� Industrial designs

� Trademarks

� Utility models

� Copyright

Standard types of IPR *


� Copyright

� Trade secrets

� New plant varieties

� Computer programs (including, without limitation, microcode, subroutines, and operating

systems)

� Unpatented materials (including biological materials like cell lines, organisms, plasmids,

transgenic animals, materials useful for research or for commercial purposes, for which

patent applications are not filed)

* where the term IPR is used in this speech, it refers to the types described above

Commercial exploitation of IPR at TUM

� licensing of IPR to companies (IPR remains at the university)

� sale and assignment of IPR to companies (IPR is assigned to the


company)

� provision of IPR to university spin-off or start-up companies in form of:

� exclusive licensing (IPR remains with the university)

� sale and assignment of IPR (IPR is assigned to the company)

� sale or exclusive licensing of IPR � university obtains in return equity


Outline





Life cycle of an invention

Revenue sharing:

Inventor

Institute

University


Release to

inventors

Patent AttorneyExternal

expertise (?)

Distinction between creator and owner: creator is always an individual!

BUT: IPR can be created under varying circumstances:

� university funded research (“ground financing”)

Ownership of the IPR


� publicly funded research (regional, national, international)

� industry funded contract research

� co-founded industry-PRI collaboration

� undergraduate/Diploma

� doctoral thesis

� visiting scientists

� etc....

� reasons for patenting a university invention: commercialization (95 %), strategic

considerations (5 %)

� when you want to patent an invention, it is all about its economic potential: will the

user of the patent have a benefit from using it?

� it doesn’t count if your invention is excellent science or how much time and money

To patent or not to patent?


� it doesn’t count if your invention is excellent science or how much time and money

you have already invested

� to figure out the economic value is the most difficult part in the evaluation of

inventions

� the most important reason for a Technology Management Office to reject and

release invention is that the expected revenues will not cover the patent protection

costs

� university inventions: prognosis is very difficult because they are often immature

� patent strategy is individual for every invention

� in most cases: national patent application – after filing: one year to think about an

international application

search report from the (national) patent office: first indications for the granting of

Which patent and licensing strategy?


� search report from the (national) patent office: first indications for the granting of

the patent

� in the PCT-application: new research results or developments

� new results can be very helpful during the commercialization process

� after publication of the patent application (18 months after filing) competitors will

learn about your invention and its technical aspects

� new ideas need a certain market penetration to cover at least the patent costs

� which markets (national, regional international) should be considered for

commercialization? in which markets is licensing realistic?

an innovation should cover the invested costs: research and development costs,

Going abroad ?Patent costs and essential markets


� an innovation should cover the invested costs: research and development costs,

patent costs and marketing costs

� is your primary cost calculation still correct? If not, you will might have to reduce

the number of your international patent applications

� if you have already a licensee, maybe it is useful to discuss with him the patenting

strategy


Outline





Needs of academia

� cover full costs of research work

� security to allow recruitment of staff (post-docs etc.)

� evidence for future assessment, audit, etc.

...more important:


...more important:

� exact definition and legal commitment of the work (including meetings, reports),

price, duration

� ownership, control, use of intellectual property rights

� publications

� warranties, liability, insurance, governing law

� no hidden “nasties”: clear wording

Needs of industry

� reasonable efforts and costs for the conclusion of collaboration agreements

� compliance with the acknowledged rules of technology and science


� compliance with the acknowledged rules of technology and science

� professional and proper execution of the work

� results are free from rights of third parties (“freedom to operate”)

� confidential handling of information/data from industry

� exclusivity for the use of the results

Who should own the IPR?

Academia Industry


� university should act as applicant

� commercialization of research results is desirable

� focus of Universities should be on research and education

� IPR should be handled like the other results

� inventions are an „add on“ to the results and therefore not satisfied by the project remuneration

� transfer of ALL IPR is satisfied by the project remuneration

different set ups are possible, BUT:

� university should not apply for patents at the expense of the industry partner

� regulations for IP should correlate with the project remuneration

Who should own the IPR? (cont.)


possible answers:

� lump sum for transfer

� license fee when use

� take over of the inventor’s remuneration through the industry partner

ANTICALINS® technology:

� ANTICALINS® are engineered ligand-binding proteins with

antibody-like functions

� therapeutic use in a variety of diseases, particularly in cancer and

Case study:

the Anticalins technology


� therapeutic use in a variety of diseases, particularly in cancer and

cardiovascular diseases

� technology invented in a large part at the TUM and developed at

PIERIS Proteolab AG

�PIERIS was founded in January 2001 – after being awarded the first

prize in the Munich Business Plan Contest 2000

� laboratories and offices are located at Freising-Weihenstephan,

well situated in the neighbourhood of the TUM life science campus

see also:

www.pieris.biz

“In July 2003, Pieris formed a strategic alliance with the Technische Universität

München in order to broaden the company's technology base and secure further

developments in the basic understanding of lipocalins and Anticalins®.

Case study:



Any patent rights arising are assigned to Pieris and the company has the

exclusive right to in-license future inventions in the area of lipocalins and

Anticalins®.“

Press Release on the web site of Pieris AG, www.pieris.biz

Relevant Modules of the Collaboration and Licence Agreement

� Preambel

The Parties conduct jointly research in order to acquire fundamental knowledge in the field of

Case study:



The Parties conduct jointly research in order to acquire fundamental knowledge in the field of

Anticalins and Lipocalins

� Subject-matter of the agreement

... joint research with the aim to optimize and make the Anticalin-Technology applicable in

therapy, prevention, diagnostics as well as research tools

... for the purpose of this research, the Parties will conduct joint research projects, which are

elaborated in the Annex and will be tailored depending on the progress of the according project

� Intellectual Property Rights

(a) Company Inventions: are exclusively made by employees of the company

Case study:



(a) Company Inventions: are exclusively made by employees of the company

(b) Joint Inventions: are made by employees of the company as well by employees of

the University

(c) University Inventions: are exclusively made by employees of the University

� Licensing Fees

XL-proteinA new (ad)venture starts at TUM


� don’t start your project without a contract - prioritise contract negotiations

� don’t rely (only) on personal relationships


Lessons (to be) learned

02/09/2010

don’t rely (only) on personal relationships

� clarify IPR ownership prior to any activities (definition, documentation and

protection of background rights)

� document the research project (laboratory notebooks)

� involve always (and at the earliest) your TTO and/or your legal department of your

organization

TUM Office for Research and Innovation

Patent and Licensing Office

Thank you for your attention!


Patent and Licensing Office


Phone: +49.89.289.22611

Fax: +49.89.289.28381

E-Mail [email protected]

papaderos epo belgrade 2.ppt · 2011. 3. 30. · title: microsoft powerpoint - papaderos epo...

Documents