Technology Transfer between Public Research and Industry – Laws, Models and Policy Options Thomas Gering
Transcript
1. Technology Transfer between Public Research and Industry
Laws, Models and Policy Options Thomas Gering
2. Technology Transfer between Public Research and Industry
Laws, Models and Policy Options
The views and opinions expressed in this presentation are those
of the author and they do not represent the position of the
European Joint Research Center or the European Community at
large
3. Intellectual Asset Management in the Public Research
Enterprise
Maximizing Public Good (social return) or maximizing financial
(private) return
Internationally, the leaders in tech transfer have managed to
create revenues of up to 5 % of their research expenditure
> There are in fact social returns that should be weighed in
the overall analysis
4. Intellectual asset management by PROs Technology Pool Coop.
R&D mature companies Licensing Start-Up Companies Link to
Venture Capital Non-excl. Who owns what? Quasi-excl. Field of Use
Exclusive Joint Venture Equity
5. Which way should Public Research Organisations PROs (incl.
universities) go ?
Historically, little co-operative R&D in the US
More focus on licensing and start-ups (beginning in about the
mid 1980s); an effect of Bayh-Dole
In Europe much more interest in project based co-operation with
the private sector > one example is the European Framework
Research Programmes
However, limited IP and licensing infrastructure at European
PROs
In recent years, both sides are trying to adopt some of the
features of the other model
6. Which way should Public Research Organisations PROs (incl.
universities) go ?
Historically, little co-operative R&D in the US
Throughout most of the 1960s and 1970s, the business community
was the source of 3% of total research performed in
universities.
By the mid 1980s this had risen to 6 % and in the 1990s to 7
%
Source : Wendy H. Schacht, CRS Report for Congress; R&D
Partnerships and IP, Implications for US Policy, December 2000
7. Which way should Public Research Organisations PROs (incl.
universities) go ?
The preferred mechanism of German industrial support for
academic research is a research contract with clearly defined
deliverables. In the US, most industrial funding of academic
R&D takes the form of grants, more open-ended arrangements
without specifically defined research deliverables...
Source : Technology Transfer Systems in the United States and
Germany, Lessons and Perspectives, German American Academic Council
Foundation, National Academy of Sciences 1997
8. Which way should Public Research Organisations PROs (incl.
universities) go ?
.the panel judges university-industry research interaction in
Germany to be more heavily oriented toward short-term, incremental
problem solving than university-industry linkages in the United
States.
Source : Technology Transfer Systems in the United States and
Germany, Lessons and Perspectives, German American Academic Council
Foundation, National Academy of Sciences 1997
9. Which way should Public Research Organisations PROs (incl.
universities) go ?
Some European Research Universities now receive up to 40
percent of their research budgets from private sources on a project
contract basis
Example: RWTH Aachen
Total budget (excl. hospital): 367 Mio
Research Budget: 142,5 Mio
Source : RWTH Drittmittelreport 2003
10. Which way should Public Research Organisations PROs (incl.
universities) go ?
This particular university currently lists as assignee (or
co-assignee) on 42 patents
3 DE000019850026A1 [DE] Verfahren und Vorrichtung zur
Herstellung texturierter Garne aus ...
4 DE000019813887A1 [DE] Verfahren und Vorrichtung zur
Herstellung von Nhnhten
5 DE000019750523A1 [DE] Verfahren zur Herstellung verrippter
Bauteile nach der Gasinjektionstechnik ...
6 DE000019715630C2 [DE] Vorrichtung und Verfahren zur
Bestimmung rheologischer Werkstoffdaten
Source : DEPATISnet, German Patent Office
11. Which way should Public Research Organisations PROs (incl.
universities) go ?
Chirurgische Haltevorrichtung
ApplicantPA Aesculap AG & Co. KG, 78532 Tuttlingen, DE ;
RWTH Aachen, 52062 Aachen, DE
InventorIN
Application dateAD 26.08.2003
Application numberAN 20313514
Country of applicationAC DE
Publication datePUB 15.01.2004
Priority dataPRC
IPC main classICM A61B 19/00
IPC subclassICS F16M 11/12 ; F16M 11/14
IPC additional information on descriptionICA A61B 1/00 ; A61B
17/16
Source : DEPATISnet, German Patent Office
12. Intellectual asset management Which focus at RWTH?
Technology Pool Coop. R&D mature companies Licensing Start-Up
Companies Link to Venture Capital Non-excl. Who owns what?
Quasi-excl. Field of Use Exclusive Joint Venture Equity
13. Which way should Public Research Organisations PROs (incl.
universities) go ?
RWTH chose Collaborative Research almost as its only path to
commercialisation
RWTH is claiming involvement in over 200 start-up companies
since 1995 but they never held equity or any IP that was important
to these start-ups > no IP, no licenses
Source : RWTH Drittmittelreport 2003
14. Which way should Public Research Organisations PROs (incl.
universities) go ? Some Data on the US
Research budget of 200-400 Mio $
Columbia University (407.4 Mio $ sponsored research)
191 US patents filed in FY 2002
55 new licenses/options in FY 2002
155.6 Mio $ gross license income
60 US patents issued
8 start-up companies formed
Source : AUTM Licensing Survey 2002
15. Which way should Public Research Organisations PROs (incl.
universities) go ? Some Data on the US
University of Florida (369.25 Mio $ sponsored research
207 US patents filed in FY 2002
59 new licenses / options executed
31.6 Mio $ gross license income
62 US patents issued that year
5 start-up companies formed
Source : AUTM Licensing Survey 2002
16. Which way should Public Research Organisations PROs (incl.
universities) go ? Some aggregate US Data
Gross license income received: 1.337 billion $
10,866 licenses yielding income
Invention disclosures received: 15,573
Total US applications filed: 12,929
New US applications filed: 7,741
US Patents issued: 3,673
Start-up companies formed since 1980: 4,320; still operational:
2,741
Source : AUTM Licensing Survey 2002
17. Intellectual Property Licensing by PROs in Germany
Fraunhofer, and to a lesser extent Helmholtz and the
universities, focus heavily on collaborative R&D
IP positions regularly compromised as a consequence
Only Max-Planck (Garching Innovation GmbH) and Fraunhofer
Patent Center achieved maturity (major revenues, involvement in
litigation, management of big portfolios) in IP licensing
With the abolishment of the Professors privilege in 2002, 18
regional IP licensing companies were founded with federal
sponsorship
These companies each work with a number of universities in the
regions
These programmes have remained marginal so far
Both industry as well as some public research organisations are
trying to undermine these activities by the universities
18. Patent applications of German PROs Source: Turning Science
into Business, OECD, 2003
19. Which way should Public Research Organisations PROs (incl.
universities) go ?
No University licensing data available in Germany
Reason: Up to 2002, licensing was mainly done by the individual
inventors because of the Professors privilege
However, our 1996 study for the Federal Ministry of Science
showed that 60 % of the inventions were assigned to industry
partners in most cases without or with minimal compensation
Source: Becher, Gering, Lang, Schmoch: Patentwesen an Hochschulen,
BMBF 1996
20. Which way should Public Research Organisations PROs (incl.
universities) go ? - UK
Commercialisation activities in the university sector have
substantially increased in the last five years
Many universities only created technology transfer offices in
the late 1990s
Staff numbers are still rising by almost 25 % per annum
Internationally, the UK lags behind the US in its expertise in
technology transfer, although the UK is ahead of much of the rest
of Europe
Lack of clarity over IP in research collaborations
A minimum of annual investment in research needed in order to
justify a technology transfer office; only 25 % of UK universities
seem to have such critical mass, yet 80% are now running their own
offices
> Still struggling with restructuring after BTG disappeared
as the sole solution in 1985
Source: The Lambert Review of Business-University Interaction,
Dezember 2003
21. Which way should Public Research Organisations PROs (incl.
universities) go ? Other notable models
Chalmers University in Gothenburg, Sweden
Privatized the whole university; now operates as an AB
Technology transfer is a huge operation being responsible for
all contract research, an incubator, a technology park, etc.
But Sweden lived under a Professors privilege system which is
still very much defining the mindset
Private IP exploitation company in the incubator
University of Twente, the Netherlands
Probably the European University concentrating most on spin-off
creation very early on (1980s)
But again, IAM on behalf of the University is not at center
stage in this effort
22. Which way should Public Research Organisations PROs (incl.
universities) go ? Legal basis - USA
Doing away with 26 different regulations used by public US
research funding bodies
For the first time, a uniform policy was implemented that
provided the contractor with the opportunity to elect to retain
title to inventions
23. Which way should Public Research Organisations PROs (incl.
universities) go ? Legal basis - USA
to replace the existing melange of 26 different agency policies
on vesting of patent rights in government funded research.with a
single, uniform national policy designed to cut down on bureaucracy
and encourage private industry to utilize government funded
inventions through the commitment of the risk capital necessary to
develop such inventions to the point of commercial
application.
Source: House Committee on the Judiciary, 1980
24. Which way should Public Research Organisations PROs (incl.
universities) go ? Legal basis - USA
If contractor retains title, obligation to exploit arises;
reporting requirements
Although there was university patenting before Bayh-Dole
(IPAs), patenting and certainly licensing rose by about 20 times in
the last 20 years
Government has march-in rights and can require a non-exclusive
license for its own purposes
Just giving ownership to industry contractors does not
necessarily stimulate use in the markets
25. Which way should Public Research Organisations PROs (incl.
universities) go ? Legal Basis
In the EU, concern that different national laws re the
ownership and exploitation of IP from PROs, especially at
universities, may create barriers to international collaborative
research
Austria, Denmark, Germany and Norway have recently introduced
new legislation to grant universities title to IP resulting from
publicly funded research
In Finland proposals to the same effect
In Japan and Korea, recent reforms in funding regulations to
this effect
These policy trends echo the landmark US Bayh-Dole Act of
1980
Source : OECD, Turning Science into Business, 2003
26. Which way should Public Research Organisations PROs (incl.
universities) go ? Legal Basis internationally
Either there is employer-employee law defining ownership
(Germany, Austria)
Or there is just common law/case law/individual agreements
(US)
Or there is some regulation in patent law defining rights of
the employee (UK, France)
And then there are research sponsorship agreements (do not
affect employer-employee relation but define ownership and
exploitation framework in projects funded with certain - public
funds)
On the European level (research framework programmes) such
sponsorship agreements can become extremely complex as these are
generally consortium deals involving numerous partners
27. Todays Technology Environment Key Factors
28. The Starting Point: Defining Innovation
Invention v. innovation
Sustaining v. disruptive innovation (aka incremental v.
radical)
29. Characteristics of Disruptive Technology
Less profitable in the early years
May need long periods of time before market introduction
(health care)
Need mass market acceptance to achieve full value
Cheaper, smaller, simpler, more convenient
30. The Knowledge Economy
Protected knowledge now at the core of company valuation
Intangibles are now driving market cap
Asset Management maintains the lead for up to two decades
sometimes even longer
No diminishing returns
31. The Knowledge Economy
In certain industries, patents significantly raise the costs
incurred by non patent-holders wishing to use the idea or invent
around a patent an estimated 40 % in the pharma sector, 30 % for
major new chemicals, and are thus viewed as important.
However, in other industries, patents have much smaller impact
on the cost associated with the imitation (e.g. in the 7 15 % range
for electronics) and are considered less successful in protecting
investment.
Source: Mansfield, Imitation costs and Patents, in The
Economics of Technical Change, 1981
32. Technological Change Technology Push versus Market Pull
Entrepreneur Emerging Customer Segments Unsatisfied Existing Needs
New Customer Needs New Methods of Manufacture & Distribution
Technological Change Higher Productivity & Economic Growth
33. Technology Push: Looking for a Problem
34. Intellectual asset management Technology Push versus Market
Pull Technology Pool Coop. R&D mature companies Licensing
Start-Up Companies Link to Venture Capital Non-excl. Who owns what?
Quasi-excl. Field of Use Exclusive Joint Venture Equity
35. Speech Recognition what are the real customer needs? Or as
Ozzy said: Radio ON!!
36. Primary Disruptive Technologies for Next Decade
Gene Therapy
Nanotechnology
Wireless
Other ??
37. Why are Disruptive Technologies Important?
38. Importance of radical innovation
Because it was in disruptive technologies that productivity
growth was highest over the last 4 decades
ICT
Biotech
Most of this productivity growth achieved by new players, not
by existing companies
PROs well suited to drive radical innovation
39. The Technology Transfer Process at PROs
40. How to position a PRO in the market
What is the customer base?
Are the customers prepared, able and willing to do R&D
collaborations?
Does this apply to all technology sectors the PRO
represents?
Or do you have to use a custom approach in different
technological fields?
41. Intellectual asset management by PROs Technology Pool Coop.
R&D mature companies Licensing Start-Up Companies Link to
Venture Capital Non-excl. Who owns what? Quasi-excl. Field of Use
Exclusive Joint Venture Equity
42. Local, Regional Customer base
Mainly SMEs ? High Tech ?
Multinationals ?
Incentives available ? Government co-financing ?
Taxes ?
43. Local, Regional Customer base
What do you do if there is no such thing ?
Multinationals ?
Engage in company formation and business development ?
But that changes the requirements completely !
44. Requirements
What is it? Tech commercialization is a parallel process of
radical and incremental innovation, the determination of technical
and business feasibility, the creation of intellectual assets, and
the development of a plan to enter the market.
Why do it? To build sustainable companies
45. Requirements
You will only be able to attract investors if your Intellectual
Asset Management (IAM) approach is effective
IP in general, trade secrets and confidential know-how are the
building blocks for such an IAM programme
That makes the national legal system re ownership and
exploitation of PRO results so important > If you cannot manage
your assets effectively for the sake of the investor you will have
no business !
46. Conclusions
Technology Transfer, IP management and licensing by PROs has to
be seen in the broader perspective of how the individual, national
research and innovation system is structured
More collaborative research and research funding by industry
will make it more difficult to maintain freedom to operate
If freedom to operate exists for PROs, mature programmes
require significant lead time and professionalism
OECD 2003 (Turning Science into Business): On average, PROs
engaged in Intellectual Asset Management need more than seven years
to break even
US-Policy considerations: Jobs created (more than 300000), 3
billion in taxes generated (1 billion royalties), source:AUTM