Download - University – Industry relationship
University – Industry relationshipUniversity – Industry relationship
Gianluca Valentini
Deputy Rector for IP & spin-off
Politecnico di Milano
Milano, training workshop
Unchain Project
Milano – July 12th 2010Milano – July 12th 2010
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Summary
The Technology Transfer models
How University and Industry contribute to the innovation
The Technology Transfer strategy and organization @Polimi
The importance of University – Industry research agrements for the social development
Final remarks
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RESEARCH(results, inventions, innovation)
Research contractsIndustry funding
Public funding
rese
arc
hin
no
vatio
nd
eve
lop
me
nt
Industry IP
Publications
In the “open science” model:
1. Broad circulation of ideas through conferences and publications as the most important KT channel
2. Universities not involved in entrepreneurial initiatives
3. Results of research funded by industry belong completely to industry
4. Concern about changes which might contribute to “close” the system
The “open science” model
Source: Pietrabissa (2008)
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SELECTION
PROTECTION
PROTECTIONCOLLABORATION WITH INDUSTRY
Company INCUBATION
LicencesRoyalties
New productsNew technologies
Spin-offsStart-ups
Seed capital
rice
rca
inn
ova
zio
ne
svilu
pp
o
Research contractsIndustry funding Public funding
PublicationsRESEARCH(results, inventions, innovation)
EU research projects
A more comprehensive modelre
sea
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inn
ova
tion
dev
elo
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en
t
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Universities are progressively fostering the valorization of their research results, through the IP management carried out by dedicated offices
Most of pre-competitive research activities are carried out within university-industry networks. Therefore, IP management is becoming highly complex.
The Market of Technologies is growing at international level. New business models between university and industry are constantly introduced.
Some of the more experienced universities are challenging their current model for KT (e.g. maximize license fees vs. maximize research revenues)
Rather than a choice between Open Scienceand “Triple Helix”, we suggest to integrate
open science into a more comprehensive model
Trends in Technology or Knowledge Transfer
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What is Technology Transfer in a University?
high education
scientific research
ProfessionistsScientistsManagersEntrepreneurs
Knowledge
Innovation
Benefits:
social
economic
cultural
...
1
2
Knowledge Transfer
Technology Transfer
or
ProfessionistsScientistsManagersEntrepreneurs
Knowledge
Innovation
Benefits:
social
economic
cultural
...
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Industries, enterprises, ... • third companies• start up• spin off• other (joint projects)...
industrial skills(technology, market,...)
Managing models
New knowledge production
New knowledge application
KT
1KT done by
external agents
Research centers • Universities• PROs• Scientific parks• other (projects) ...
scientific skills(knowledge, vision,...)
Service companies skills ?(mixed)
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New knowledge production
New knowledge application
KT
1KT done by
external agents
New knowledge production
New knowledge application
KT
4KT for
demanding knowledge
New knowledge production
New knowledge application
KT
3KT for offering
knowledge
New knowledge application
New knowledge production
KT
2integrated KT
(company with a research center, PRO with spin off)
New knowledge production
New knowledge application
KT
1KT done by
external agents
New knowledge production
New knowledge application
KT
4KT for
demanding knowledge
New knowledge production
New knowledge application
KT
3KT for offering
knowledge
New knowledge application
New knowledge production
KT
2integrated KT
(company with a research center, PRO with spin off)
Managing models
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A model
• invention• right
• know how PATENT
1 € 10 €
innovation industrial productneed
INDUSTRY
develop.
UNIVERSITY
research
UNIVERSITY INDUSTRY
1 € 10 €
• invention• right
• know how PATENT
develop.research innovation industrial productneed
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Industry
(Research) (Market)
industryentry
universityexit
University SPIN OFFRESEARCH CONTR.
The gap
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Education
& Research
U I
University and Industry do different things for different purposes but they are not competitors
More concretely: the vision
Development
& Production
KT Profit
TOOL
GOAL
Source: Pietrabissa (2008)
they can collaborate
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The Roles of the Actors of the “model”
should generate research-based inventions
should develop and industrialize new products
should generate the rules and direct the actors
should invest in research-based ventures
Source: Pietrabissa (2008)
It is possible to generate an effective and efficient TT process only if all the actors are pushed to work together,
playing their roles and taking their responsibilities
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Technology Transfer model
Transfer by publications
Transfer by contracting Transfer by cooperating (joint labs)
Transfer through infrastructures (test facilities)
Transfer by training
Transfer by head (Phd, spillover)
Transfer by licensing
Transfer by spinning off
Handled by TTO
Driven by Research Dept.
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Tools for University – Industry relationships
Research agreements between University and Industriesare win-win tools to foster innovation and social development … but …
The differences between players must be undestoodrespected and valorised
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Industry
Mission
Organization:
Targets and rules are shared all over the company
Hierarchical decision processes
University and Industry are different players with their own mission and structure
High Education
Scientific Research
Technology Transfer
Profits
Production of goods and services
• University and Industry have complementary objectives and scopes Conflicts of interest can be easily managed
• There exist wide diffences in the culture and language Relationships are sometimes difficult and uneffective
University
Mission
Organization:
University grants high autonomy to Departments, research groups and single researchers
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The main reasons for signing University-Industry research agreements
Simplification of the administrative processes Researches do not care of administrative and legal issuses
(the just need to do good science !)
The lag time for the signature of specific reasearch contracts is strongly reduced General conditions are approved in advance, only scientific and
financial issues need to be negotiated
The ownership of results and IP right are pre-defined according to agreed policies The University and the Industry feel more confident Researchers must pay great attention to their obligations
“Innovative approach” for the University-Industry relationship The University Central Administration (not single researchers)
negotiates with the Company Headquarters to establish long-term wide-scope research agreements
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The specific terms for Intellectual Property mgt.
The terms referring to the ownership of research Results and Intellectual Property Rights are amongst the most important ones
The ownership and the terms of use for Know-how and IPR are predefined
Know how Industry
Patents [Industry University]
We strongly suggest that co-assignment in patent applications is warranted to the University in order to defend the Researchers and University reputation
After patent filing, University must grant the freedom of operation to the industry by perpetual license agreements
Publication rights must be granted to the University
Reasonable confidentiality conditions must be negotiated
The IPR provisions apply for 6-12 months after the expiration of the contract
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What does University wants?• Moral reputation for its research activity
co-assignment in patents !
• Reasonable money awards to reward its Researchers
• The possibility to continue the research in the same field after the expiration of the contract
• The free of charge use of the results for teaching and research
• The possibility to publish part of the results in scientific journals
• Long-term relationship with the Industry instead of sporadic collaborations
What does Company wants?• The complete ownership of the know-
how generated within the contract
• The unlimited freedom of operation for industrial and commercial purposes
• The co-ownership of IPR (patents)
• The complete control of patent filing and international extensions
• The right to pursuit the legal defense in case of patent infringement
• Confidentiality about all trade secrets
• Delay in public disclosure of scientific results to allow patent filing
Negotiation of University-Industry IPR agreement
Is there a real conflict of interest between University and Industry for what concerns IPR ?
... much less than people believes !
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Typical provisions of IPR agreement
The property of all non patentable results goes exclusively to the Industry that can exploit them without any limitation
In case of patentable inventions the following procedure applies:
Researchers must disclose the invention to the industrial partner as soon as possible and should collaborate to define novelty and claims
The Industry must confirm the interest for the invention and decides wheter to file a patent application or keep a trade secret
The Company should take care of:
• patent text and claims
• payment ofall taxes and expenses
• payment of a reasonable award to the University
Co-ownership is granted to the University
University grants the Industry the complete freedom of operation
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Confidentiality committments
University undertakes proper actions to prevent confidentiality breaks by its Researchers
University keep the rights to use (for free) the results of the research for educational and scientific purposes
Researchers must submit to the Industry the paper drafts before publication in order to achieve the approval
The Industry should not deny the authorization without motivations
Confidentiality on trade secrets should last for a time long enough to prevent any damage to the industry (usually 5-10 years)
The University Name and Logo should be used only in scientific and technical publications
The Industry should refrain to use the University logo in advertising unless specifically authorized
University should provide the proper credit to the funding Company in public disclosure of the scientific results
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Final Remarks
Universities should play a responsible role in the development of the society through technology transfer and cooperation with industries
Relationship between University and Industry should be properly managed
Intellectual Property Rights are key issues for the relationship between Universities and private Companies