the structure of an ip institutional policy “ten questions method” sofia, bulgaria november 25...
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The structure of an IP Institutional Policy “Ten Questions Method”
Sofia, Bulgaria
November 25 and 26, 2015
Concept of an IP Policy
Institutional Intellectual Property Policy = A document that sets the framework for the way that an institution intends to deal with the ownership and management of its Intellectual Property.
Major policy document. Needs to contain statements about:1. ownership of IP, including inventions and teaching materials
2. publication objective
3. role and participation of students in research
4. commercialization objective
5. sharing of commercialization revenue with inventors,
The major IP policy document of the institution, upon which other protocol documents/guidelines/policies rely upon for their effectiveness.
Concept of Institutional IP Policy
Institutional IP Policy needs to:1. meet the needs of the traditional scientist
2. meet the needs of the entrepreneurial scientist
3. foster a commercialization culture amongst scientists
Concept of Institutional IP Policy (IPU)
IP Policy
Ownership of IP
Conflicts of interest
Commercialization options
Share of Revenue
Procedures & Timelines
Technology Transfer
Units
Identifying responsibiliti
es
No one model that fits all
Each institution has to develop its own policy.
The “Ten Key Questions” are identified as essential issues, to be regulated in any IPU in order for universities and R&D institutions to effectively manage their IP and technology.
The “Ten Questions”
The list of 10 questions can be used as a checklist in developing your own IPU
The Ten Questions
Ten Questions1. Who owns the IP generated in the framework of university or research
institution’s activities and resources?
2. What rights does the government have on IP generated at universities and R&D institutions?
3. What IP management procedures will be followed by the university or R&D institution?
4. Is private funding for defined research projects permitted?
5. Who manages IP and technology transfer in universities and R&D institutions?
6. What choices do universities and R&D institutions have for commercializing their research results?
7. How to afford the cost of protection and maintenance of IP?
8. How are revenues from research commercialization shared among faculty, university, government and other stakeholders?
9. How are conflicts of interest and commitment handled?
10. How should universities and R&D institutions encourage and motivate scientists/researchers?
The issue of IP ownership needs to be clear from the beginning of any project – in particular in the context of collaboration agreements, consultancy, work for hire, some sponsor agreements etc.
Different ownership models : institutional ownership vs. professor privilege
Institutional Ownership Systems:
- Pre-emption rights: the first owner is the employed inventor but the institution is entitled to claim the invention;
- Automatic Ownership of Employer: the first owner is automatically the employer;
Special situations:
- Non-Employed Students: free inventors or treated as employees if conditions are fillfuled
- Visiting professors
- Government
- Private funding
Question 1: Who owns the IP generated in the framework of university or research institution’s activities and
resources?
Country University Inventor/ Faculty State
Australia X
Austria X
Belgium X
Brazil X
Canada X
Cuba X X
Denmark X
Finland X* X
France X
Germany X
Ghana X
Italy X
Japan X
Jordan X
Kenya X
Mexico X
Netherlands X
Norway X
South Korea X
Sweden X
United Kingdom x
Table 1. Ownership of academic inventions
Question 1: Who owns the IP generated in the framework of university or research institution’s activities and
resources?
Why is the issue of the Government’s rights important in developing an IPU?
What are the requirements of the Government with respect to IP generated under Government-funded research?
How should IPUs accommodate specific regulations associated with Government rights e.g. manufacturing in-country, preference for national companies, compulsory licensing, ownership reverting to the Government, etc.?
Question 2: What rights does the government have on IP generated at universities and R&D institutions?
Where ownership of the IP is assigned to universities and research institutions, there are normally no provisions in the IPU to compensate Government directly in terms of royalty sharing.
Indirect benefit: sales of license products generates new revenues that will increase tax income
IPU may include provisions allowing the Government or its agencies royalty-free use of important IP that was created under Government funding
Where the Government takes over the rights of an invention, the assistance of the inventor(s) may still be required to ensure successful commercialization. The Government agency handling exploitation of the IP should thus share any benefits from successful commercialization with the inventors to encourage their assistance and further involvement.
Question 2: What rights does the government have on IP generated at universities and R&D institutions?
What are the bottlenecks facing universities and R&D institutions in technology transfer and commercialization of R&D results?
What are the IP management procedures?
Question 3: What IP management procedures will be followed by the university or R&D institution?
Transparent procedure is one of the main elements in creating confidence and credibility among stakeholders.
Procedure – usually 4 steps – disclosure, evaluation, proposal for decision and final decision.
Who is responsible for each step and who is taking the final decision?
Timelines.
IP ownership options.
$
PROPOSAL
EVALUATION
DISCLOSURE
Question 3: What IP management procedures will be followed by the university or R&D institution?
Is private funding of research permitted?
Under which conditions?
IP rights
Impacts (inter alia):• IP ownership• Sharing of revenue
Generally, the research agreement will grant ownership of the research results to the private sponsor.
Question 4 : Is private funding for defined research projects permitted?
Who is responsible for the management of IPR? The University/PRO Management? Technology Transfer Office? External body?
Is there a TTO, an outsourced company, government entity, IP Hub, the national IP Office, who:
negotiates licenses with outside parties, reviews employee contracts, manages invention disclosure procedures, reviews sponsored research proposals, manages royalty sharing establishes and manages spin-off companies
What are the professional skills required for effective IP and technology management?
Question 5: Who manages IP and technology transfer in universities and R&D institutions?
The services of the TTO will be conditioned by the complexity of the mandate and the role that the TTO will be given by the leadership of the university;
TTO should have a fundamental role in the process of translating the results of academic research into a form which can be used by industry and commerce;
Needs clear mandate to operate inside and outside of university (creation of start up company);
In managing partnerships – essential to have clear and transparent rules on IP ownership!
The role and mandate of the Technology Transfer Office (TTO):
Question 5: Who manages IP and technology transfer in universities and R&D institutions?
Different possible scenarios:Depending on ownership model: commercialization by inventor or by university/PRO
Most frequent modes of commercialization:Start-up (by individual inventor or university, possible spin-off of university commercializing firm)License to an established firm (important and costly matching process to find market partners)Sale of IP
Probability of successful commercialization strongly depends on the mode chosen.
Factors to take into account:- National legislation (start-up formation, ownership)- Commercial environment- Characteristics of a given invention, development stage
Question 6 : What choices do universities and R&D institutions have for commercializing their research results?
What are the costs involved in IP protection, exploitation and technology management in universities and R&D institutions?What strategies can the university or R&D institution apply to patent filing to minimize costs?What costs can be borne by other parties (e.g. registration, attorney’s fees, maintenance, etc.)?What are the strategies for IP protection and maintenance?
Running a successful TTO has much more in common with running a business than a government department or teaching students. The TTO
manager has to think in terms of costs and revenue, with the goal of transferring the institution’s technology to society for public benefit, and
creating net income in the process.
Question 7 : How to afford the cost of protection and maintenance of IP?
External Funding
- Government Funds and Grants
- Industry Partner
- Venture Capitalist
A percentage of benefit sharing
University
- Innovation Fund
- TTO Budget
Question 7 : How to afford the cost of protection and maintenance of IP?
In the absence of a specific regulation the most frequent rule is 30% - 30% - 30% (university, faculty, inventor).
Important to define the base for revenue sharing, and when different bases are applicable:
Gross Revenue
Profit
Total Net License Revenue
Question 8 : How are revenues from research commercialization shared among faculty, university,
government and other stakeholders?
Example: City University of London Policy
Question 8 : How are revenues from research commercialization shared among faculty, university,
government and other stakeholders?
Private researcher Industry
Question 9 : How are conflicts of interest and commitment handled?
Do researchers have a right to private consultancy with industry partners?
To what extent – How many hours per week? Amount of money?
Directly or through TTO?
Revenue sharing with University?
IP Rights – Does university have rights on IP developed in the framework of consultancy contract of professor?
How can a culture be cultivated which values and encourages technology transfer?
What are the benefits and how can they be shared?
Incentive policies
Rewards
Moral
Financial
Education
Support for Research
Other – be creative, it is important part of customization of your policy!
Question 10 : How should universities and R&D institutions encourage and motivate scientists/researchers?
ConclusionsDevelop your own model of Institutional IP Policy !
Involve in the process all stakeholders (researchers, students, local firms) – it has to be their policy as well.
Language and content should be “user friendly” and understandable also for those who are not lawyers.
Communicate the text, make it publically available.
It may be helpful to have models (templates) of the main technology transfer agreements – with the understanding that it should be used as a base – each situation has its own specificity.
Monitor implementation, evaluate and improve.
It is a dynamic process! The IPU is a living document, adjusting over time to the needs of a given institution to ensure a best fit.
