Role of IP Benefiting from University-Industry Partnerships: Incubators and IP

Casey K. Chan

National University of Singapore IP Academy of Singapore

New Paradigm

labor intensive high end manufacture value added manufacturing value creation

Investment Driven vs Innovation DrivenInvestment Driven vs Innovation Driven

New Job Create

15 million new jobs in the US from 95 to 2000

90%<50 employers

1

10

100

1000

10000

1 10 100 1000 10000 100000 1000000

Total Number of Employees

Nu

mb

er

of

Ph

Ds

…..

100%

10%

25%

50%

Longboard 3.30%

Google 20.0%

Red Hat 7.57%

Transmeta 12.50%

Genentech 6.66%-9.99%

GE 0.83%-0.92%

JPL Labs 32.00%

Atheros 25.20%

Digital Fountain 10.59%

Geek Index (Wired Aug 2001)

Partnership Only the scientific and

technologically driven innovation can power the economy to be globally competitive.

Close collaborative partnerships in scientific research is critical to sustain this innovation.

Corporations

Increase shareholder value Servicing customers Financial bottom line

University

Education Research Service

? entrepreneurship

Paradigm Shift Can potentially create new problems

No longer straight forward partnership Ownership of and access to IP Conflict of interest Once-clear lines are now blurred

Academic Independence

Bias observation and conclusion Confidentiality Publication right

What is acceptable delay Right of review vs right to censure and

edit

Conflict of Interest

Equity ownership vs royalty Clinical trials

Paid consultant Benefit Founder

Use of product in which one has a royalty interest

Dr. Oliveri versus Apotex Inc

deferiprone in the treatment of iron overload in patients with thalassemia major

drug lost effectiveness with long-term use drug might worsen hepatic fibrosis revised consent form drug trails were being terminated by Apotex published result in NEJM threat of lawsuit for violating confidentiality

agreement

Management of Conflict of Interest

No exception school (MIT) Management school (others)

Is there a conflict? Can it be manage? How to manage?

Warranty & Indemnification Does not warrant fitness for use or

merchantability Technology is usually early stage and

requires much additional development University has no control over product

development Requires indemnification for product

liability

Reach through clauses

For improvements For research tools

Reach Through Clause for Improvement

University general does not agree to blanket improvement clause

Exception: improvement is dominated by base technology

Terms of employment for academic staff is different from that of industrial scientist

Research Tools

PCR Vectors Cre-Lox Recombinant Stem cells

Possible obligation from the use of research tools

No obligation No patenting First rights of refusal Royalty on derivative

Reach through clause for Research Tools

Pre-publication right Rights of derivative material and IP Typewriter analogy Protest from the scientific community

Tragedy of the Common

Great discoveries were available to all but no one benefited.

Bayh-Doyle – to promote the economic development of the products of federally funded research.

Has the pendulum swung too far?

Benefits Real-world issues and practical

methods of problem solving Enrich the professional experience Widen the horizon of our staff and

students beyond the academic frontier Enhancement of translational research Alternate source of research funding

Mutually beneficial relationship when carefully managed

Detail is in the agreement Work towards common goal Understand each others’ objectives Understand each others’ limitation Academics need professional help in

negotiation