Post on 30-Nov-2014
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Marcel D. MongeonIntellectual Property Coach
IPR Awareness Seminar – The Need for Technology Transfer
Expertise
Outline Defining Technology Transfer How TT Occurs in North America Financial expectations and Reality The need for national frameworks Policies and practices Setting up TTOs Q&A and discussions
What is Technology Transfer?
My preferred definition:› Any means used to have research results
and academic knowledge put into practical use
The need for a ‘user’ or ‘customer’ Some confusion between input
measures and outcomes› Patent filings› Revenue
Marcel’s Laws
Patents ≠ SuccessCustomers = Success
Patents = Bait
How TT Occurs in North AmericaSource: Berneman, Start UP Business Development, AUTM Annual Meeting 2008 ED9
But, What is Missing? Types of Technology Transfer:
› Licensing of IP› Collaborative Research› Sponsored Research› Use of Equipment and Facilities› Training of HQP
Which is most important? Least?
Financial Expectations and Reality
-10.00
0.00
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90.00
100.00
McMaster University FY97 to FY06, Net Revenues/Disclosure over Disclosures, Max revenue=100
So, Why Do We Do It?
National Frameworks United States: Bayh-Dole Act Canadian and various European
Countries South African IPR Law Question:
› Does Kenya need a national framework?› Will only be successful if funding for
infrastructure
Creating and Implementing New Policies
What should an institutional policy touch on?
How to decide these issues? How to implement?
Topics for an IP Policy IP that is included Who is covered Ownership of IP Disclosures Dispute resolution Protection of certain
communities/Conflicts Responsibility for Management Splitting the money
What IP is Included Traditional division between Copyrights
and Patents Ignoring of Trade-marks Good arguments to be made now that
all IP should be brought into a policy Who decides when IP will be
commercialized? (Researcher, funder, administration?)
Who is Covered Researchers Students Staff members How about visitors? Members of the local community
allowed to use facilities? How to reconcile issues over
collaborating partners?
Ownership of IP Clear statement that IP is owned by X
[Inventors; Funding Organization; Institution?]› Choice should be based on: who is best
capable of doing the work?
Obligations to sign patent documents› Need for institutional and individual signatures
Consider ‘relief valve’ that lets researchers get ownership back
Alternate IP Situations Open source? Academic publications Open innovation
Contracted Research Most important special case
› transfer of ownership only when paid “full economic costs”
› Meaning of FEC Publication limits Other issues related to working with
industry
Requirement to Disclose Can’t manage what you don’t know Initial information gathering Gather information relevant
to initial valuation Need to balance information
required and complexity to complete
Use of Disclosures Initiates management Can be used to pass information to:
› Internal stakeholders (academic management)
› External stakeholders When is something truly a disclosure?
Dispute Resolution Who is an Inventor?
› Patent attorneys can answer to a point
Useful to have some type of internal committee to arbitrate disputes
Can also help with revenue splits
Protection of Certain Communities
Inherent conflicts between supervisors and students
How to protect students? Conflict between granting agency and
host institutions Use of an intermediate
authority Conflicts between
inventors and institutions
Splitting the Money They say: “It’s not the money, it’s the
principle” They mean: “It’s the money!” How to determine? Institutional portion generally at least
50% after ‘costs’ What do costs mean? Include overhead, time etc? or just
patents and outside personnel?
How to Fund Technology Transfer
Does TT get a portion of revenues automatically?
What other functions will they be given
How to fund over ‘dry spells’?
Implementing a Policy Communication plan Also needs to see almost immediate
services being available Practices (next section) are a critical
piece of the puzzle
Practices: The Basic Steps Education of researchers and
management The 4 steps:
› Identify› Protect› Improve› Move out:
Licence; Spin-off; Additional sponsored research
Educate Management and Employees
Ensure basic understanding of trademarks, copyrights, patents, and trade secrets
Train scientists/inventors in record keeping, patent application filing process
Likely to be first lesson on IP Challenges with researchers doing it
wrong› Especially patent searching
Important Related Educational Step
Lab Notebooks TTO providing a guide to
lab notebooks:› http://www.parteqinnovatio
ns.com/pdfdoc/ LabNotes_Poster_000.pdf
› Also makes a good advertisement for office
Publish or Perish Academic publication imperative
› Runs contrary to patent rules Need to patent before publishing Create paradigm:
› Patent, Publish and Profit
The Rewards of Using IP Protection
Societal good› Will research results get adopted without
protection?› How to benefit local and
international populations?
Recognition› Career advancement for
researchers
Money› Further research money› Personal rewards
Important Practices and Policies
Who owns and manages resulting IP? IP from research agreements Disclosures Initial valuation Managing commercialization process End-points:
› Licence; Spin-off; or Additional Research After end-point administration
IP Protection Patent – most applicable Copyright Trademark Trade Secret
› Most likely inapplicable in academic environment
Implement Proper IP Protection
Patent Protection› Conduct cost/benefit analysis› Determine Patentability› Choose right patent agent/attorney› Choose countries to file applications (U.S.,
PCT applications, Foreign countries)› Manage expense-attorney’s fees,
government fees› Manage patent family› Pay maintenance fees
Develop Standardized Agreements
Protection of Confidentiality› Non-disclosure agreements (NDAs)› Employment agreements
Protection of Technology› Licenses› Technology transfer agreements› Material Transfer Agreements
Research Agreements with Industry
SCIENCE
IP LAW
BUSINESS & INDUSTRYEXPERIENCE
Staffing: Skills Required
Whom Do We Hire? Education:
› MSc or PhD AND
› MBA or LLB/JD Training:
› AUTM or LES course› Some additional providers (TTT)
Q: Need for regular course in East Africa?
Ongoing Training Patent law changes
› Patent Agents on TTO staff? Improvements in office practice AUTM Annual Meeting is useful LES provides good contacts Regional activity
› SARIMA› COMESA
Size and Research Income Direct correlation between TT personnel
and research income ~ 2,000 FTE for $50 B
› $25 Million Research per TT FTE Compare your own research size
› 2004 HERD Data for Thailand $150 M Challenge for smaller countries:
› How to obtain ‘critical mass’ of TT expertise› Solution in S Africa: Central facility
The Generations of TTOs 1G:
› Lots of patent applications› Not many licensees› Financial hardship
2G:› Much more analysis before deciding to file› Applications are highly targeted› Start-up Company creation attempted
3G:› Science portfolios explored with patent back-up› Creation of industry-directed research groups› Use of IP for ‘public good’
Marcel D. Mongeon+1 (905) 481 0133
UK: +44 (0) 1905 70 1818marcel@mongeonconsulting.com
QU
ES
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NS?
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