IP development at university: the role of
TTOs
Regional conference on teaching intellectual property in higher education establishments
European Patent Office
Belgrade, 1-2 September 2010
Dr. Alexandros Papaderos
University IP Coordinator
� Technology Transfer in universities
Outline
Dr. Alexandros Papaderos 02/09/2010
Technology Transfer in universities
� Licensing of patents
� IPR and the collaboration with industry
§ 2 University Mission (excerpt)
� “… serve the maintenance and development of science and the arts through research, teaching, study and
training in a liberal, democratic and social state of law.”
“… prepare for a career which requires the use of scientific knowledge and scientific methods…”
Bavarian Higher Education Law
Dr. Alexandros Papaderos 02/09/2010
� “… prepare for a career which requires the use of scientific knowledge and scientific methods…”
� “… serve teaching and research and connect them to a predominantly science-related training.”
� “… promote the international, in particular the European, cooperation in higher education, and exchanges
between German and foreign universities. … take into account the special needs of foreign students.“
� “… act together with economic and professional practice and promote knowledge and technology transfer. “
� “… promote the acquisition of additional qualifications for the transition into working life in cooperation with
the economy.”
� “… promote the connection to their former students.”
� “… inform the public of their tasks.”
TUM Forte Office for Research and Innovation
Division 1:
Research Support/ Excellence Initiative
Dr. Markus Zanner
Division 2:
Technology Transfer
Dr. Alexandros Papaderos
TUM-Research Data Base
Research Map
Industry Liaison Office
Stefan Fiegle
Excellence Initiative Group
Dr. Christiane Haupt
Dr. Alexandros Papaderos
Head: Dr. Markus Zanner
Finances: Melanie Hüttinger
Assistant: Nicole Jerouschek
02/09/2010
Young Researchers Office
Olivia Schmid
International Cluster Projects
EU
Kathrin Staffler
Jenny Pick
National Cluster Projects
GRF/FMER
Dr. Cornelia Gotterbarm
Research Map
Dr. Alexandra Brunner
Stefan Fiegle
Centre for Knowledge Interchange
NN
Patent and Licencing Office
Dr. Alexandros Papaderos
Anita Widmann
Dr. Katharina Aulinger-Fuchs
Sandra SchottenhammlProject Management TUM-KAUST
Sabine Albers
Dr. Christiane Haupt
Dr. Christian Ostermeier
Erika Schropp (Emeriti of Excellence)
Equity Management
Dr. Alexandros Papaderos
in close collaboration with:
� Legal Office
� unternehmerTUM (Entrepreneurship Centre)
� gate (Business Incubator)
in close collaboration with:
� Legal Office
� unternehmerTUM (Entrepreneurship Centre)
� gate (Business Incubator)
Technology Transfer at TUM has many forms...
Examples
Networking
� conference
attendance
Docs, Post-docs
and sabbaticals
� doctoral and
postdoctoral
theses
Sponsored Research
or Joint Research
�contract research
� co-operations
Commercia-
lization of
research
results
� Patent
licensing or
sale
Alliances
� strategic alliances
Dr. Alexandros Papaderos 02/09/2010
Examples
� conference
presentations
theses
� consultancy
sale
� start-up or
spin-of
companies
Benefits� latest
trends
� contacts
� exchange of
experiences
� access to
external expertise
and equipment
� financial
benefits
�creation of
centres of scientific
excellence
� establishment of
long-termed
relationships
The Patent and Licensing Office of TUM
services for all TUM members who intend to apply for a patent:
� personal consulting for inventors
general information on Intellectual Property Rights and
Dr. Alexandros Papaderos 02/09/2010
� general information on Intellectual Property Rights and
on the German Employees’ Inventions Act
� identification of patentable research results
� assistance with preparing and submitting Reports of Invention
� in some cases: transfer of tasks relating to the exploitation of inventions to third
parties
manning level: 4 Patent Managers (biologist, engineer, phycisist/electrical engineer,
chemist), 0.5 assistant
� Patents
� Industrial designs
� Trademarks
� Utility models
� Copyright
Standard types of IPR *
Dr. Alexandros Papaderos 02/09/2010
� Copyright
� Trade secrets
� New plant varieties
� Computer programs (including, without limitation, microcode, subroutines, and operating
systems)
� Unpatented materials (including biological materials like cell lines, organisms, plasmids,
transgenic animals, materials useful for research or for commercial purposes, for which
patent applications are not filed)
* where the term IPR is used in this speech, it refers to the types described above
Commercial exploitation of IPR at TUM
� licensing of IPR to companies (IPR remains at the university)
� sale and assignment of IPR to companies (IPR is assigned to the
Dr. Alexandros Papaderos 02/09/2010
company)
� provision of IPR to university spin-off or start-up companies in form of:
� exclusive licensing (IPR remains with the university)
� sale and assignment of IPR (IPR is assigned to the company)
� sale or exclusive licensing of IPR � university obtains in return equity
� Technology Transfer in universities
Outline
Dr. Alexandros Papaderos 02/09/2010
Technology Transfer in universities
� Licensing of patents
� IPR and the collaboration with industry
Life cycle of an invention
Revenue sharing:
Inventor
Institute
University
Dr. Alexandros Papaderos 02/09/2010
Release to
inventors
Patent AttorneyExternal
expertise (?)
Distinction between creator and owner: creator is always an individual!
BUT: IPR can be created under varying circumstances:
� university funded research (“ground financing”)
Ownership of the IPR
Dr. Alexandros Papaderos 02/09/2010
� publicly funded research (regional, national, international)
� industry funded contract research
� co-founded industry-PRI collaboration
� undergraduate/Diploma
� doctoral thesis
� visiting scientists
� etc....
� reasons for patenting a university invention: commercialization (95 %), strategic
considerations (5 %)
� when you want to patent an invention, it is all about its economic potential: will the
user of the patent have a benefit from using it?
� it doesn’t count if your invention is excellent science or how much time and money
To patent or not to patent?
Dr. Alexandros Papaderos 02/09/2010
� it doesn’t count if your invention is excellent science or how much time and money
you have already invested
� to figure out the economic value is the most difficult part in the evaluation of
inventions
� the most important reason for a Technology Management Office to reject and
release invention is that the expected revenues will not cover the patent protection
costs
� university inventions: prognosis is very difficult because they are often immature
� patent strategy is individual for every invention
� in most cases: national patent application – after filing: one year to think about an
international application
search report from the (national) patent office: first indications for the granting of
Which patent and licensing strategy?
Dr. Alexandros Papaderos 02/09/2010
� search report from the (national) patent office: first indications for the granting of
the patent
� in the PCT-application: new research results or developments
� new results can be very helpful during the commercialization process
� after publication of the patent application (18 months after filing) competitors will
learn about your invention and its technical aspects
� new ideas need a certain market penetration to cover at least the patent costs
� which markets (national, regional international) should be considered for
commercialization? in which markets is licensing realistic?
an innovation should cover the invested costs: research and development costs,
Going abroad ?Patent costs and essential markets
Dr. Alexandros Papaderos 02/09/2010
� an innovation should cover the invested costs: research and development costs,
patent costs and marketing costs
� is your primary cost calculation still correct? If not, you will might have to reduce
the number of your international patent applications
� if you have already a licensee, maybe it is useful to discuss with him the patenting
strategy
� Technology Transfer in universities
Outline
Dr. Alexandros Papaderos 02/09/2010
Technology Transfer in universities
� Licensing of patents
� IPR and the collaboration with industry
Needs of academia
� cover full costs of research work
� security to allow recruitment of staff (post-docs etc.)
� evidence for future assessment, audit, etc.
...more important:
Dr. Alexandros Papaderos 02/09/2010
...more important:
� exact definition and legal commitment of the work (including meetings, reports),
price, duration
� ownership, control, use of intellectual property rights
� publications
� warranties, liability, insurance, governing law
� no hidden “nasties”: clear wording
Needs of industry
� reasonable efforts and costs for the conclusion of collaboration agreements
� compliance with the acknowledged rules of technology and science
Dr. Alexandros Papaderos 02/09/2010
� compliance with the acknowledged rules of technology and science
� professional and proper execution of the work
� results are free from rights of third parties (“freedom to operate”)
� confidential handling of information/data from industry
� exclusivity for the use of the results
Who should own the IPR?
Academia Industry
Dr. Alexandros Papaderos 02/09/2010
� university should act as applicant
� commercialization of research results is desirable
� focus of Universities should be on research and education
� IPR should be handled like the other results
� inventions are an „add on“ to the results and therefore not satisfied by the project remuneration
� transfer of ALL IPR is satisfied by the project remuneration
different set ups are possible, BUT:
� university should not apply for patents at the expense of the industry partner
� regulations for IP should correlate with the project remuneration
Who should own the IPR? (cont.)
Dr. Alexandros Papaderos 02/09/2010
possible answers:
� lump sum for transfer
� license fee when use
� take over of the inventor’s remuneration through the industry partner
ANTICALINS® technology:
� ANTICALINS® are engineered ligand-binding proteins with
antibody-like functions
� therapeutic use in a variety of diseases, particularly in cancer and
Case study:
the Anticalins technology
Dr. Alexandros Papaderos 02/09/2010
� therapeutic use in a variety of diseases, particularly in cancer and
cardiovascular diseases
� technology invented in a large part at the TUM and developed at
PIERIS Proteolab AG
�PIERIS was founded in January 2001 – after being awarded the first
prize in the Munich Business Plan Contest 2000
� laboratories and offices are located at Freising-Weihenstephan,
well situated in the neighbourhood of the TUM life science campus
see also:
www.pieris.biz
“In July 2003, Pieris formed a strategic alliance with the Technische Universität
München in order to broaden the company's technology base and secure further
developments in the basic understanding of lipocalins and Anticalins®.
Case study:
the Anticalins technology
Dr. Alexandros Papaderos 02/09/2010
Any patent rights arising are assigned to Pieris and the company has the
exclusive right to in-license future inventions in the area of lipocalins and
Anticalins®.“
Press Release on the web site of Pieris AG, www.pieris.biz
Relevant Modules of the Collaboration and Licence Agreement
� Preambel
The Parties conduct jointly research in order to acquire fundamental knowledge in the field of
Case study:
the Anticalins technology
Dr. Alexandros Papaderos 02/09/2010
The Parties conduct jointly research in order to acquire fundamental knowledge in the field of
Anticalins and Lipocalins
� Subject-matter of the agreement
... joint research with the aim to optimize and make the Anticalin-Technology applicable in
therapy, prevention, diagnostics as well as research tools
... for the purpose of this research, the Parties will conduct joint research projects, which are
elaborated in the Annex and will be tailored depending on the progress of the according project
� Intellectual Property Rights
(a) Company Inventions: are exclusively made by employees of the company
Case study:
the Anticalins technology
Dr. Alexandros Papaderos 02/09/2010
(a) Company Inventions: are exclusively made by employees of the company
(b) Joint Inventions: are made by employees of the company as well by employees of
the University
(c) University Inventions: are exclusively made by employees of the University
� Licensing Fees
XL-proteinA new (ad)venture starts at TUM
Dr. Alexandros Papaderos 02/09/2010
� don’t start your project without a contract - prioritise contract negotiations
� don’t rely (only) on personal relationships
Dr. Alexandros Papaderos
Lessons (to be) learned
02/09/2010
don’t rely (only) on personal relationships
� clarify IPR ownership prior to any activities (definition, documentation and
protection of background rights)
� document the research project (laboratory notebooks)
� involve always (and at the earliest) your TTO and/or your legal department of your
organization
TUM Office for Research and Innovation
Patent and Licensing Office
Thank you for your attention!
Dr. Alexandros Papaderos 02/09/2010
Patent and Licensing Office
Dr. Alexandros Papaderos
Phone: +49.89.289.22611
Fax: +49.89.289.28381
E-Mail [email protected]