How to establish a successful IP Policy for Universities and Research Institutes

1. How to establish a successfulIP Policy for Universitiesand Research Institutes Anton Habjanič, D.Sc. director of TechnoCenter at the UM ERF-FEMISE Expert Group Meeting (January 18, 2016, Cairo , Egypt)

2. What is Technology Transfer for Knowledge Triangle • Making Money ? • Academic Service? • Economic Development ? None of the above!!! To help achieve the University mission, which is... To create and disseminate knowledge! Source: ”What is the impact of a good TTO?’’, Karl Klingsheim, ASTP Annual Conference, Berlin 2012 ...it’s not (only) about the money ! €, Academic Service and Economic Development are measures of our activity, not our objectives!!!

3. Technology Transfer & Knowledge Exchange(Drivers of Innovations) Source: ”A Composite Indicator for Knowledge Transfer”, European Commission, October 2011

4. Ingredients of good Technology Transfer • High quality research (generator of good ideas) • Markets with companies able to commercialize inventions • Scientists and managers with entrepreneurial spirit • Investors willing to invest in new products, government willing to • support where investors do not invest (death valley) • Well connected and qualified Technology Transfer Professionals

5. Technology TransferCycles

6. IP Strategy & Policy • IP Strategy: • A plan designed to achieve IP management supporting the core missions of technology transfer. • IP Policy: • Principles of actions (set of provisions), often with direct legal implication regarding duties and rights of faculty and indirect implications for partners. Background! Commission Recommendation on the management of IP in knowledge transfer activities andCode of Practice for universities and other public research organisations Model Intellectual Property Policy for Universities and Research Institutions(WIPO) Intellectual Asset Management for Universities (UK IPOffice)

7. Importance of IP Policy IP policy is a must-have tool: provides clear and transparent rules on IPmanagement while involving the personal, institutional, national and internationalaspects of IP management in one regulatory document. • Advantages of a good IP Policy: • Creates guidance & consistency for IP and technology management procedures • Involvestransparency in decision making process • Safeguards the interests of all parties by stipulating deadlines • Facilitates professional IP management • Creates legal certainty for companies and other third parties • Supports commercialization activities • Stimulates more industrial support for research • Guarantees the fair distribution of the income among stakeholders • Encourages bringing research results to the public benefit • Enhances the promotion & reputation of the university and the researchers

8. 10 key Questionsfor Establishing a successful IP Policy

9. 10 key Questionsfor Establishing a successful IP Policy Question 1: Who owns IP generated by publicly funded research? Who is the first owner of IP (the employed inventor or the employer)? Does the “Professor‘s privilege” exist? Who can apply for ownership of IP? Who has the Pre-emption rights? Can university claim ownership of IP created in the course of students’ research activity? Source: WIPO

10. 10 key Questionsfor Establishing a successful IP Policy Question 2: Benefit sharing? How are revenues from research commercialization shared amonginventors, institute or department, university and government or funding agency?

11. 10 key Questionsfor Establishing a successful IP Policy Question 3: What rights does the government have on IP generated at universities and R&D institutions? For example, manufacture in the country, preference for national companies, regulatory compliance, royalty sharing, royalty-free license to the government, title back to the government if the institution doesn’t take title etc...

12. 10 key Questionsfor Establishing a successful IP Policy Question 4: Is private funding for defined research projects permitted? If so, under what conditions and approval process? Who owns the IP in such cases? If the university or R&D institution owns the IP, what kind of licenses (royalty free, royalty bearing, exclusive, non-exclusive etc.) would it be willing to grant?

13. 10 key Questionsfor Establishing a successful IP Policy Question 5: Options for commercialization? What choices do universities and R&D institutions have for commercializing their research results? Does the university or R&D institution want to encourage entrepreneurial activity or not?

14. 10 key Questionsfor Establishing a successful IP Policy Question 6: Who manages the IP & technology transfer? Is there a TTO, outsourced company, government entity, IP Hub or a 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…?

15. 10 key Questionsfor Establishing a successful IP Policy Question 7: What IP Management procedures will be followed? What are the bottlenecks in technology transfer and commercialization of R&D results? How should IP Assets be managed? What are the IP management procedures?How is the IP policy etc. communicated to stakeholders?

16. 10 key Questionsfor Establishing a successful IP Policy Question 8: How to afford the cost of protection and maintenance of IP? Does the university or R&D institution pay the expenses of protection and maintenance of IP? In the case of government or private sponsored research, who pays for these costs (e.g.registration, attorney’s fees, maintenance etc.)? Is there a limit to how much the university or R&D institution will spend and what kinds of inventions it will fund protection for?

17. 10 key Questionsfor Establishing a successful IP Policy Question 9: How are conflicts-of-interest and commitment handled or prevented? May a professor or researcher accept additional private income for projects that may require time away from the organisation? Does the organisation permit professors to consult on their own or take a leave of absence? Can the professor or student use facilities of the university or R&D institution for private research activities?

18. 10 key Questionsfor Establishing a successful IP Policy Question 10: How should scientists be encouraged and motivated? What kind of incentive schemes could foster not only research but also innovation activities? For example,staff training on IP knowledge, financial incentives orpersonal career development etc.

19. Recommendations on how Universities & Research Institutescan Enhance Innovation Enhancing entrepreneurship and boosting innovativeness at universities & research institutes requires a corresponding ecosystem (e.g. organized in accordance with the one stop shop principle) with TTO as its key component (entry point), and IP Policy that encourage and provide incentives to researchers. The IP Policy has to be adapted in a manner that the institution is able to identify emerging inventions efficiently, asses and manage disclosed inventions in a systematic way, and addresses grand challenges (IP Policy has to be flexible and adaptive, i.e. able to evolve in response to changing circumstances.) • Main challenges for enhancing innovation: • Harmonization of IP Policy with institutional and (inter-) national agreements, regulations and policy frameworks; • Providing funding aimed at bridging the gap between embryonic research results and demonstrations of PoC that would stimulate market exploitation (e.g. special funds can be established by leveraging proper (inter)national grants); • Available human resources & their ingrained mentality.

20. Contact data Thank you for your attention! www.tehnocenter.si Anton Habjanič, D.Sc.info@tehnocenter.si+386 2 2355 344TechnoCenter at the University of Maribor Krekova ulica 2 2000 Maribor Slovenia Direct link to the Rules:http://www.um.si/en/research/intellectual-property/Pages/default.aspx