Transcript Commercialization Processes Yumiko Hamano Project Coordinator WIPO University Initiative Innovation and Technology Transfer Section, WIPO Skopje, April 1 – 3, 2009

Commercialization
Processes
Yumiko Hamano
Project Coordinator
WIPO University Initiative
Innovation and Technology Transfer Section, WIPO
Skopje, April 1 – 3, 2009
Outline
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Technology Transfer
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IP Policy and IP
management Key Issues
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Commercialization
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Collaboration Agreements
© 2009 Yumiko Hamano
Growing Technology Transfer
Activities from University
Example: US in 2006
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$ 45 billion R&D expenditures
4,963 new licenses
12,600 current valid licenses from Universities to
Companies
697 new products introduced into the market
4,350 new products in last 8 years
550 new start-ups
5,724 new spinouts since 1980
© 2009 Yumiko Hamano
Source: AUTM
Change in Legal Framework
US - Bayh Dole Act (1980)
The Bayh-Dole Act allows the transfer of exclusive control over inventions generated from
government funded researches to universities
Abolition of the Professor’s privilege
Germany: 2001 Reform of Employee Law
Austria: 2002
Denmark: 2002 Act on Inventions at Public Research Institutions
University Law
Japan:
1995 Basic Law of Science and Technology
1998 Law promoting tech. transfer from universities
1999 Japanese version of Bayh Dole Act
2000 Law facilitating univ.-industry collaboration
2004 Change in legal status of public universities (semi-autonomous institutions)
© 2009 Yumiko Hamano
Globalization of R&D
Increased partnerships beyond national frontiers:
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Nokia + University of Cambridge (Nanoelectronics)
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Microsoft + Inria: French computer science institution
(IT)
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Hewlet-Parckard = IT Laboratory in San Petersburg
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Creation of European Institute of Technology
(a research network without a localized headquarter)
by the European Commission: €3.2b 2008 - 2013
© 2009 Yumiko Hamano
Technology Transfer
…..the process of transferring scientific research
results, technical expertise or know-how
developed by an individual, enterprise, university
or organization to another individual, enterprise,
university or organization.
…..Effective technology transfer results in
commercialization of a new product or service….
© 2009 Yumiko Hamano
IP Management
Infrastructure
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Capacity Building
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IP training
Protection of IPR
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Identification of IP
Invention disclosure
Patent application procedures
Patent Information search
Legal matters
Administration of legal issues
Exploitation of IPR
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© 2009 Yumiko Hamano
Establishment of an IP Office
IP Guidelines/Policies
R&D planning/strategy
Research funding
Marketing of new technology
Licensing and monitoring
deals
Commercialization
Incubation
IP Management in
Universities
Technology Management
Legal aspects
© 2009 Yumiko Hamano
Business
IP Management in Universities
Technology Management
• Research strategy
• Research planning
• Research contracts
• Patent Information Search
• Technology evaluation
(marketability/ Patentability)
• Invention disclosures
• Technology transfer process
© 2009 Yumiko Hamano
IP Management in Universities
IP and legal aspects
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© 2009 Yumiko Hamano
IP information dissemination
IP training
IP awareness/ capacity building
IP guidelines/ policies
Research contracts
Record keeping and management
Patent application procedures
Legal matters
Licensing agreement
Management of active patents/
licenses
IP Management in Universities
Business
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© 2009 Yumiko Hamano
Research funds management
University-Industry collaboration
Patent application monitoring
Marketing
Evaluation of commercialization
potential
Technology valuation
Licensing negotiation
incubation
Start up/ Spin-off company
Research investment
Institutional IP Policy
IP Policy:
Principles of actions adopted by an
organization or an individual – often legal
implication
© 2009 Yumiko Hamano
Importance of IP Policy
IP Policy provides:
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Clear rules and guidelines for research operations
The legal framework for commercialization
Guidance for IP and technology management procedures
Clear policy on ownership criteria and benefit sharing
Consistency of approach (in a systematic manner)
Transparency in decision making process
Objectivity in measurement
and fosters:
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Transfer of technology generated in the university
Innovation and creativity in the university
(Local) economic growth
© 2009 Yumiko Hamano
Key issues
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Ownership
Benefit Sharing
Government’s rights
Collaboration between Univ.-Industry
Choices of Commercialization
IP Management Unit in Univ.
IP Management Procedures
IP and costs
Conflict of Interest
Incentive
© 2009 Yumiko Hamano
Technology Transfer
Stakeholders
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University
Professors
Researchers
Students
Faculty of research unit
Guest researchers
TTO/ TMO
Governments
Partner Industries
Partner universities
Public
© 2009 Yumiko Hamano
Image source: Google
Ownership
Who owns IP generated by publicly funded research?
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Generally national law defines who owns IP
(inventions) arising from work conducted for an
employer
In some cases, national laws specifically address
ownership of inventions arising from publicly
sponsored research
Sometimes IP ownership covered in different laws
© 2009 Yumiko Hamano
Ownership 2
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Government
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University
(e.g., Germany, Austria, Japan, China,
South Korea, UK, France, US,
Denmark )
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Inventor/ Faculty
(e.g., Finland, Italy, Norway, Sweden)
© 2009 Yumiko Hamano
<Ownership ≠ the rights to commercialize>
Benefit Sharing
How are the revenues from research commercialization
shared among faculty, university, government funder and
other stakeholders?
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The distribution proportions differ by institution
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Inventor
University
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© 2009 Yumiko Hamano
Inventor/ Faculty: 25% - 50%
University 50% - 75%
(in many cases, the university provides part of its portion to
the TTO (or the administrative unit) and the laboratories of the
creator 1/3: 1/3: 1/3 – institution portion often used for funding
research )
Commercialization
What types of commercialization of research
results should the university support and
encourage?
 Donation,
licensing and sales of IP
 Start-up and Spin-off
© 2009 Yumiko Hamano
Commercialization
<Donation>
Based on the idea of publicly founded
research belongs to the Public.
Potential problems:
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© 2009 Yumiko Hamano
IP may be exploited by a third party outside the
country
Commercialization may involve use of existing IP
(Who pays the costs for the use of the IP?)
Company may not invest (no exclusivity)
No incentive to commercialize
Licensing Agreements
The owner of IP permits another party to
make, have made, use, sell, copy, display,
distribute, modify, etc.
© 2009 Yumiko Hamano
Commercialization
<Licensing>
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A route of commercialization where an IP rights holder gives
another entity the authority to exploit to make, have made, use,
sell, copy, display, distribute, modify, etc.) the IP - in return, the
licensee will pay royalties
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The most popular and sustainable way of commercializing IPR
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Managed through written legally bound agreements
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Agreements stipulate details of extent of rights of exploitation
(key terms: subject matter, scope, exclusive or non-exclusive,
fields of use, territory coverage, amount of royalties, periods of
royalties, length of exploitation etc.)
© 2009 Yumiko Hamano
License Agreements (2)
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An IP license may be for an invention arising
from publicly funded research.
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Or it may follow a research agreement or
collaboration. After the IP is developed, the
university may then grant a license to the funder.
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IP generated by the university are often licensed
to a “spin off” company from the university.
© 2009 Yumiko Hamano
License Agreements (3)
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Example:
Cohen Boyer patent on
recombinant DNA, invented at Stanford
University and University of California, was
licensed non-exclusively over a period of
17 years to many licensees resulting in
hundreds of millions of dollars US in
royalties. Ownership remained in the
universities throughout the life of the
patent.
© 2009 Yumiko Hamano
Start-up and Spin-off
Spin-off
Start-up
Created by
University
Outside Univ.
Technologies
Owned by
University
Licensed by
University
Financed by
University
Outside funder
Managed by
University staff
Outside Univ.
© 2009 Yumiko Hamano
Commercialization
<Start-up and Spin-off>
Example: US in 2006
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550 new companies were created based on new
technologies generated by 195 US universities
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Over 80% were based in the university’s home state
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Over 600 (15% of total US licensing ) licensed to these
companies
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50% of all licensing agreements to SMEs
Source: AUTM
© 2009 Yumiko Hamano
Major Challenges to
commercialize R&D results
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Lack of IP management infrastructure
Lack of strategic research planning
Gap between basic research and market needs
Lack of funds for IP protection
Lack of IP knowledge
Lack of expertise to manage TT and
commercialization process
Lack of entrepreneurial skills
Lack of support (Government, University senior
managers) and incentive
Conflict of interest (University vs. Industry)
© 2009 Yumiko Hamano
Privately Funded Research
Is private funding for defined research project
permitted?
Privately funded research is where the resources are supplied by
private enterprises or organizations:
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Contract research:
Research which is conceived and funded by industries to provide a solution to a
specific problem
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Sponsored research:
Where a university conceives a research project and prepare a proposal for funding
and where the funding agency is not directly a beneficiary of the research results
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Collaborative research:
Research collaboration between a public university and private research unit of an
enterprise or private organization
© 2009 Yumiko Hamano
Privately Funded Research and
IP (2)
To encourage privately funded research, university should have an
institutional IP policy that provides clear provisions on:
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Approval procedures for privately sponsored research
proposals
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Ownership of IP generated from privately sponsored projects
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Licensing rules and procedures of IP generated from privately
sponsored projects
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Confidentiality issues of privately sponsored projects
© 2009 Yumiko Hamano
Different Types of Research
Collaboration contracts
Research collaborations are
managed by legal agreements
such as:
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Contract research agreement
Collaborative research agreement
Material transfer agreement
Confidentiality agreement
Participation agreement
License agreement
© 2009 Yumiko Hamano
Common Types of Agreements
Intellectual Property Licenses
 Development Collaboration Agreements
 Research Services Agreements
 Consulting/know how Agreements
 Material Transfer Agreements
 Confidentiality Agreements (NDA)
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© 2009 Yumiko Hamano
Collaboration Agreement or
Joint Research Agreement
Two or more parties, each having
special skills and assets, cooperate to
develop and possibly commercialize a
new technology.
© 2009 Yumiko Hamano
Development Collaboration
Agreement (2)
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Assets include “background technology” and
new technology/IP to be developed which
defined in a Specification.
Often parties are commercial entities, but may
include public universities and research
institutions.
Development obligations and deadlines are well
defined in a Statement of Work.
The parties define ownership of the newly
developed IP in the contract.
Payments may be in installments geared to
milestones.
© 2009 Yumiko Hamano
Research Services Agreements
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Contract research
Service agreement
 One party establishes goals and pays, the other
party conducts research toward the goals
 Results may be owned by paying party
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 Inventions
and patents assigned to paying party
 Copyright work made for hire
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Not commonly performed by public institution
© 2009 Yumiko Hamano
Research Agreements
Funded research
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Usually applied to researches conducted by public institution,
like university
Party agrees to support research at institution
Support can be money, equipment
Institution generally owns results of research
May have shared ownership
Paying party usually receives exclusive license or option for right
to exclusive license
May be limited to field of use of interest to party
Institution is free to license to others in other fields
© 2009 Yumiko Hamano
Confidentiality Agreement/ NonDisclosure Agreement (NDA)
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A legal contract through which the parties agree
not to disclose information covered in the
agreement.
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A confidentiality agreement creates a
confidential relationship between the parties to
protect any type of information.
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Commonly signed in the process of research
collaboration or licensing agreement.
© 2009 Yumiko Hamano
Material Transfer Agreement (MTA)
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A contract that governs the transfer of tangible research materials between
two organizations, when the recipient intends to use it for his or her own
research purposes.
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The MTA defines the rights of the provider and the recipient with respect to
the materials and any derivatives.
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Biological materials, such as reagents, cell lines, plasmids, and vectors, are
the most frequently transferred materials.
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MTAs may also be used for other types of materials, such as chemical
compounds and even some types of software.
Source: University of California
© 2009 Yumiko Hamano
Successful Collaborations
Identify IP licenses and IP issues in
different types of agreements
 Identify and define who will own the
background IP? Who will own new IP?
who will do the work? by when?
 Be aware of the difference between
research services agreements and IP
licenses.
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© 2009 Yumiko Hamano
Cost of Protection and
Maintenance of IP
How to afford the cost of protection and maintenance
of IP?
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Inventor compensation
Legal fees associated with patent prosecution
(filing fee, search fee, examination fee, attorney’s
fees, translation, patent grant fee etc.)
Patent annuity/ maintenance fees
Legal/ business fees associated with patent
licensing
Legal fees associated with patent enforcement
© 2009 Yumiko Hamano
Conflict of Interest
How are conflicts of interest and commitment handled?
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Mandate of universities vs. those of industries
Social Concern
Institutional Concern
Individual concern
© 2009 Yumiko Hamano
Conflict of Interest 2
Why is management of conflict of interests important?
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Loss of public trust
Increasing government concerns
Potential legal liability
© 2009 Yumiko Hamano
Incentive Scheme
How should universities and R&D institutions encourage and motivate
scientists/ researchers?
Training on IP knowledge
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Involvement of scientists/ researchers in the process
management
of IP and technology
Financial compensation
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Fixed percentage of royalties
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lump sum
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Inventor’s award
Personal program
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Promotion scheme
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Framed certificate of inventors
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Dinner with dean/ the senior management of university thanking inventor/
research team
© 2009 Yumiko Hamano
Thank you for your attention.
[email protected]
Image source: Google
WIPO web site:
www.wipo.int
WIPO University Initiative web site:
www.wipo.int/uipc/en
Image source: Google