university industry partnership guriqbal singh jaiya
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University Industry Partnership
Guriqbal Singh Jaiya
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 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 quan-tity will be essential. Setting priorities means admitting posteriorities.
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 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 scientific excellence. Funding of institutions should also be objective based. And: Objectives should be output targets.
R&D management: Universities and research insti-tutes 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 KeyWhat’s most important: Graduates are the most important output of universities and thus, their most important contribution to technology transfer. There-fore, 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 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 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 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 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 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 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 Education
USA 53
UK 11
Germany 5
Japan 5
Canada 4
France 4
Sweden 4
Switzerland 3
Netherlands 2
Australia 2
others 7
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 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%
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 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 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 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 ResearchUniversity Research
Investigator initiated – Discovery drivenInvestigator initiated – Discovery driven
University sets priorities for future researchNew faculty are hired based on these prioritiesNew faculty investigators seek research supportFaculty act like entrepreneurs within the university seeking research support form government and private sources
Network of AgreementsNetwork of Agreements
Sponsored research
Federal
Foundations
Corporate
Material transfer agreements
Consulting agreements
Collaborators who may be joint inventors
Stakeholders in the UniversityStakeholders in the University
Faculty
Deans and Department Heads
Research
Legal
Finance
University Relations
Alumni Affairs and Development
Influences on Technology TransferInfluences 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 UniversityBusiness Development in a University
Do lots of deals, make lots of moneyRespect academic valuesInsure obligations to sponsors of researchCompliance with gov’t regulationsStay within budgetMaintain relationshipsAvoid controversy
Roles of the Roles of the Technology Transfer OfficeTechnology Transfer Office
Disclosure evaluation and patent decisions
Management of patent prosecution
Technology marketing
Licensing
Management of existing licenses
Material transfer agreements
A « UNIVERSAL » CHALLENGE
A gap between Research and Economy
Limited impact of R&D on competitiveness
Limited cooperation between RDI and SMEs
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
Res. Scientists are not motivated to work with SMEs
SMEs are not motivated to work with « academic » scientists
STRONG INCENTIVES ARE NEEDED
Push or Pull ?
Push or Pull ?
Technology Push
From the Lab to the market
Idea of a scientist
Limiting step : selling the idea (and the project) to industry
TOP DOWN
Market Pull(Technology absorption)
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 ?
Technology Push
Give more « fancy » results but it will take more time and it is very risky
Market pull (Technology absorption)
Give less « exotic » results but
much more frequent + a higher success rate
Push or Pull ?
SUCCESS RATE :
Technology push :Low (a few %)
Market PullHigh (50%, with some experience)
Market pull offers a potential usually underestimated
A Challenge !!! RDIs think almost exclusively….
« TECHNOLOGY PUSH »
S.E.T.S(*) are more interested by « MARKET PULL »
(*)S.E.T.S. : Traditional Sectors Small Entreprises
A 3 Partners cooperation
Technological Institutes (RDIs) Provide the appropriate technology services
SMEs Identify the market needs Manage innovative projects
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 :
Identify potentially interested SMEs
AND
« Sell » them technology services
Targeting SMEs... Conferences, seminars… Commercial fairs Brokerage events Existing networks
Regional networks (Chambers of commerce)
National networks (Innovation agencies) European networks E.U. « networking » activity (ERA-NET)
V.C. forums Private consultants Data Banks ? ……
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 other SME managers
The « next » step…Building up mutual respect
It takes some time
Personal contacts
Usually the first cooperation are
« modest »
At that stage Gvt. support is needed
SMEs –RDI cooperation
Numerous way to cooperate
R&D contractsConsultingTechnology « diagnostic »……Licensing
The role of Governments:Public-Private Partnerships
Governmental programs
Many programs to support SMEs: National Regional International
One common goal : to bring assistance to SMEs to improve their competitiveness
Governmental programsTo strengthen SMEs competitiveness
Assistance for: Identifying partners Preparing a Business Plan IPR and legal matters
To provide some public funding Financial support for project
preparation Matching grants Soft loans
A few National Programs
United States : SBAEurope :
Finland : TEKES France : Oséo-Innovation The Netherlands : Senter Spain : CDTI
+ Numerous Regional programs Ex. Flanders
International Programs
World Bank projects on Tech. Development Far East (India, Korea…) Latin America (Mexico…) Eastern and Central Europe (Croatia, Ukraine…)
European Union Framework Program Research for the benefit of SMEs
Other European programs Eureka initiative
Intergovernmental (Mkt. Oriented, nationally funded) European Space Agency
Technology Transfer program
E.U. programs for SMEs
Research for SMEs (former CRAFT)
Coordination of SMEs RTD co-operation ERA-NET Eurostar
SMEs participation to RTD projects
+Various supporting actions
Network of National Contact Points Coordination and support actions
The role of Governments
To create a favourable environment
Fiscal laws
Patent laws
Encourage mobility
R&D funding allocation
The role of Governments
To provide infrastructures Incubators Technology parks
To provide assistance Financial Legal Economical
The role of Governments
Incentives, Incentives Incentives….
Incentives for SMEs
Incentives for Scientists
The role of Governments
A stable legal framework over a long time
A rigorous monitoring process To follow progress To learn (from failures)
Methods to Transfer Technology 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 TransferTechnology Transfer
Commercialize research results funded primarily by the federal government for the public goodRecruit, reward, and retain faculty and studentsInduce collaborations with industryPromote economic growthGenerate income to promote and support teaching and research
Roles of the Technology Transfer Roles of the Technology Transfer OfficeOffice
Disclosure evaluation and patent decisions
Management of patent prosecution
Technology marketing
Licensing
Management of existing licenses
Material transfer agreements
Criteria for Start UpsCriteria for Start Ups
Business planExpectation that company can accomplish goalsFaculty and staff involved have cleared conflict reviewNo equity only dealsEquity represents fair value for technology licensed
Stakeholders in the UniversityStakeholders in the University
Faculty
Deans and Department Heads
Research
Legal
Finance
University Relations
Alumni Affairs and Development
University ResearchUniversity Research
Investigator initiated – Discovery drivenInvestigator initiated – Discovery driven
University sets priorities for future researchNew faculty are hired based on these prioritiesNew faculty investigators seek research supportFaculty act like entrepreneurs within the university seeking research support form government and private sources
Network of AgreementsNetwork of Agreements
Sponsored research
Federal
Foundations
Corporate
Material transfer agreements
Consulting agreements
Collaborators who may be joint inventors
Influences on Technology TransferInfluences 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 UniversityBusiness 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
Universities key players in the Knowledge Economy. They produce the raw material for the knowledge economyUniversities 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 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 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 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 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 of innovation may be required to make it ready for marketUniversities tend to publish earlyWhat follow up support could be expected from the inventor for further developmentUniversities’ mind set is academic and not entrepreneurialUniversities are less inclined to work with small firms who cannot provide the same legal and financial security as a larger firm.
StrategyStrategy ImpactImpact
RetentionistDirect 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
Sale and licensing options
Generate income; cultivate new markets; get ridof non-core/incidental inventions/processes; develop new products; control costs
“Ivory Tower” Lesser emphasis on commercial imperatives;greater commitment to open dissemination ofknowledge; emphasis on social mission etc.
Donation
CorporatesCorporates
Universities/CollegesUniversities/Colleges
Basic ResearchBasic ResearchBasic ResearchBasic Research
Applied ResearchApplied ResearchApplied ResearchApplied ResearchStrategies vary Strategies vary
Eastman Chemical donation to to North Carolinauniversities
AssetsAssets
ManagementManagement
ValueValue
IPRsIPRs
H&FEH&FE
Intellectual CapitalIntellectual CapitalIntellectual PropertyIntellectual PropertyIntellectual CapitalIntellectual Capital
Intellectual PropertyIntellectual Property
Internal and ExternalInternal and ExternalRelationships; IPRsRelationships; IPRs
Internal and ExternalInternal and ExternalRelationships; IPRsRelationships; IPRs
TangibleTangibleIntangibleIntangibleTangibleTangible
IntangibleIntangible
Patents; Trade Marks;Patents; Trade Marks;Copyright; Designs; Copyright; Designs;
Confidential InformationConfidential Information
Patents; Trade Marks;Patents; Trade Marks;Copyright; Designs; Copyright; Designs;
Confidential InformationConfidential Information
CollegialityCollegialityOutreachOutreach
within andwithin andbetween sectorsbetween sectors
CollegialityCollegialityOutreachOutreach
within andwithin andbetween sectorsbetween sectors
Mission RevenueMission Revenue
Revenue MissionRevenue Mission
One Mission orOne Mission orMany Missions?Many Missions?
Many MissionsMany MissionsIn A SingleIn A SingleInstitution?Institution?
IPRs and Asset IPRs and Asset Management Will Management Will
Be A Compromise?Be A Compromise?
Policies Need ToPolicies Need ToBe Flexible NotBe Flexible Not
Fixed?Fixed?
The Cultural DilemmaThe Cultural Dilemma
UNIVERSITY INDUSTRY
Commercializationof New and Useful
Technologies
Teaching
Research
Service
EconomicDevelopment
Profits
Product R&D
Knowledge for Knowledge’s Sake
Academic FreedomOpen Discourse
Management ofKnowledge for Profit
ConfidentialityLimited Public Disclosure
Blending the University Research and Entrepreneurial Cultures
Academicsresearch priorities set by investigator
grant-seeking
publications
serendipity
transfer at early stage
Industryresearch priorities set by management
profit-seeking
proprietary
control
add value before transferring
Factors that Influence University-Factors that Influence University-Industry CollaborationsIndustry Collaborations
Technological advances in science-based and technology-intensive industries
Computer softwareAdvanced materialsBiotechnology
Increased international competitivenessSlowing of public and private support for industrial R&D
Factors that Influence University-Factors that Influence University-Industry CollaborationsIndustry Collaborations
Encouragement of research collaborations
Federal research programs to promote national competitiveness through technology development
State programs to promote technology development
Changing RolesChanging 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 Issues in University-Industry RelationshipsRelationships
Ownership of intellectual property
Confidentiality
Publication
Indirect costs of research
Exchange of research materials
Concerns about University-Industry Concerns about University-Industry RelationshipsRelationships
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 InterestConflicts of InterestConflicts of CommitmentConflicts 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 SitesUseful 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 internships
Consulting by faculty
Commercialization of inventions, innovations and research findings
Discovery to entrepreneurshipSource UC Davis
Invention
Inventions: Process
Complete Invention
Disclosure Form (web)
and provide all
data on Invention
Evaluation of Invention
(2 – 4 weeks)
Depends on Extent
Of data (CSRL)
Convey Decision
To Principal
Investigator
No Patent Filing
Free to Publish
Yes, Patent Filing
Outside Attorneys File.
Collaborative –
CSRL, Inventors, Attorney
(1-3 months)
CSRL Notification of
Patent Filing to
Inventors
Free to Publish
(or make other public
Disclosure)
Inventors to complete
Declaration and
Assignment Documents
Critical
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)
ISSUANCE
Identify Licensee
Y4
YEAR 1
Y0
YEAR 2 YEAR 3
Negotiate License Option
Manage Licensee Relationship
PATENTFILING
PROSECUTIONBack and forth with the Patent Office
• Start-up?• VC?
Finding a partner company: Marketing and licensing
Identify companies that may have an interest in the invention
Related product market analysis and reportsInventor knowledge and experience
Contact companiesNon-confidential disclosuresDisclosure of confidential information under a Confidentiality Agreement
Negotiate licenseExclusive or non-exclusiveRoyalties, up-front payments, milestones etc.Due diligence provisions
Distribution of License Revenue
Inventor(s) (25%):
Divided equally among all co-
inventors
Inventor’s Laboratory(25%)
Inventor’s Department (25%)
MGH(25%)
Expenses incurred in IP protection or creation are
deducted prior to distribution of
License Income
From invention to issued patent (annual numbers)
350 to 400inventiondisclosures submitted annuallyto RVL
175 to 200 patent applications
80 to 100 patents issued
Scoring tool/
Screen Patent Office
Decision
50%
50% *License amounts vary widely and some technologies have more than one licensee
75 to 125 licenses*
3,000 lead researchers (PIs) with $1 billion in annualexpenditures
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 using university resources and facilities are owned by the university
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, USAPrior 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 licenseThe 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 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 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 revenueFor example the California Institute of Technology (CALTECH) received in one year some 10m $ 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 University developed nanomaterials that can neutralise a wide range of contaminants and chemical warfare agents. The technology is licensed to NanoScale Materials Inc of Manhattan, Kansas.University of North Carolina invented a software program that incorporates a 3D 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.EdgeTech 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 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 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 DuPont 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 - DuPont would not allow scientists to follow their traditional practices of sharing mice or breeding extensively from the mice. Contractual control of scientific disclosure - DuPont 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 - DuPont 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, DuPont 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 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 Policy2. 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 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 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 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 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, 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 -OffCommercialization 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 inventiona 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
IncubatorsBusiness 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 Cisco Systems Cypress Semiconductor DNAX Research Institute Dolby Laboratories eBay E*Trade Electronic Arts Gap Google Hewlett-Packard Company IDEO Intuit Kiva Linked In Logitech Mathworks McCaw 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 FM sound synthesis for digitally generating sounds in the late 1960s, 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 1980s, 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 1980s, 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 1990s 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 research results funded by tax payer money be privately appropriated
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 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