University – Industry relationshipUniversity – Industry relationship

Gianluca Valentini

Deputy Rector for IP & spin-off

Politecnico di Milano

Milano, training workshop

Unchain Project

Milano – July 12th 2010Milano – July 12th 2010

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Summary

The Technology Transfer models

How University and Industry contribute to the innovation

The Technology Transfer strategy and organization @Polimi

The importance of University – Industry research agrements for the social development

Final remarks

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RESEARCH(results, inventions, innovation)

Research contractsIndustry funding

Public funding

rese

arc

hin

no

vatio

nd

eve

lop

me

nt

Industry IP

Publications

In the “open science” model:

1. Broad circulation of ideas through conferences and publications as the most important KT channel

2. Universities not involved in entrepreneurial initiatives

3. Results of research funded by industry belong completely to industry

4. Concern about changes which might contribute to “close” the system

The “open science” model

Source: Pietrabissa (2008)

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SELECTION

PROTECTION

PROTECTIONCOLLABORATION WITH INDUSTRY

Company INCUBATION

LicencesRoyalties

New productsNew technologies

Spin-offsStart-ups

Seed capital

rice

rca

inn

ova

zio

ne

svilu

pp

o

Research contractsIndustry funding Public funding

PublicationsRESEARCH(results, inventions, innovation)

EU research projects

A more comprehensive modelre

sea

rch

inn

ova

tion

dev

elo

pm

en

t

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Universities are progressively fostering the valorization of their research results, through the IP management carried out by dedicated offices

Most of pre-competitive research activities are carried out within university-industry networks. Therefore, IP management is becoming highly complex.

The Market of Technologies is growing at international level. New business models between university and industry are constantly introduced.

Some of the more experienced universities are challenging their current model for KT (e.g. maximize license fees vs. maximize research revenues)

Rather than a choice between Open Scienceand “Triple Helix”, we suggest to integrate

open science into a more comprehensive model

Trends in Technology or Knowledge Transfer

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What is Technology Transfer in a University?

high education

scientific research

ProfessionistsScientistsManagersEntrepreneurs

Knowledge

Innovation

Benefits:

social

economic

cultural

...

1

2

Knowledge Transfer

Technology Transfer

or

ProfessionistsScientistsManagersEntrepreneurs

Knowledge

Innovation

Benefits:

social

economic

cultural

...

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Industries, enterprises, ... • third companies• start up• spin off• other (joint projects)...

industrial skills(technology, market,...)

Managing models

New knowledge production

New knowledge application

KT

1KT done by

external agents

Research centers • Universities• PROs• Scientific parks• other (projects) ...

scientific skills(knowledge, vision,...)

Service companies skills ?(mixed)

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New knowledge production

New knowledge application

KT

1KT done by

external agents

New knowledge production

New knowledge application

KT

4KT for

demanding knowledge

New knowledge production

New knowledge application

KT

3KT for offering

knowledge

New knowledge application

New knowledge production

KT

2integrated KT

(company with a research center, PRO with spin off)

New knowledge production

New knowledge application

KT

1KT done by

external agents

New knowledge production

New knowledge application

KT

4KT for

demanding knowledge

New knowledge production

New knowledge application

KT

3KT for offering

knowledge

New knowledge application

New knowledge production

KT

2integrated KT

(company with a research center, PRO with spin off)

Managing models

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A model

• invention• right

• know how PATENT

1 € 10 €

innovation industrial productneed

INDUSTRY

develop.

UNIVERSITY

research

UNIVERSITY INDUSTRY

1 € 10 €

• invention• right

• know how PATENT

develop.research innovation industrial productneed

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Industry

(Research) (Market)

industryentry

universityexit

University SPIN OFFRESEARCH CONTR.

The gap

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Education

& Research

U I

University and Industry do different things for different purposes but they are not competitors

More concretely: the vision

Development

& Production

KT Profit

TOOL

GOAL

Source: Pietrabissa (2008)

they can collaborate

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Solution ProductNeed

U I

The Bricks of the Innovation Line

Source: Pietrabissa (2008)

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gap

U I

The Castle of the Innovation Line

Source: Pietrabissa (2008)

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Need Product

U I

The Castle of the Innovation Line

Source: Pietrabissa (2008)

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The Roles of the Actors of the “model”

should generate research-based inventions

should develop and industrialize new products

should generate the rules and direct the actors

should invest in research-based ventures

Source: Pietrabissa (2008)

It is possible to generate an effective and efficient TT process only if all the actors are pushed to work together,

playing their roles and taking their responsibilities

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SolutionNeed Product

The Castle of Innovation

Source: Pietrabissa (2008)

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Technology Transfer model

Transfer by publications

Transfer by contracting Transfer by cooperating (joint labs)

Transfer through infrastructures (test facilities)

Transfer by training

Transfer by head (Phd, spillover)

Transfer by licensing

Transfer by spinning off

Handled by TTO

Driven by Research Dept.

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Tools for University – Industry relationships

Research agreements between University and Industriesare win-win tools to foster innovation and social development … but …

The differences between players must be undestoodrespected and valorised

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Industry

Mission

Organization:

Targets and rules are shared all over the company

Hierarchical decision processes

University and Industry are different players with their own mission and structure

High Education

Scientific Research

Technology Transfer

Profits

Production of goods and services

• University and Industry have complementary objectives and scopes Conflicts of interest can be easily managed

• There exist wide diffences in the culture and language Relationships are sometimes difficult and uneffective

University

Mission

Organization:

University grants high autonomy to Departments, research groups and single researchers

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The main reasons for signing University-Industry research agreements

Simplification of the administrative processes Researches do not care of administrative and legal issuses

(the just need to do good science !)

The lag time for the signature of specific reasearch contracts is strongly reduced General conditions are approved in advance, only scientific and

financial issues need to be negotiated

The ownership of results and IP right are pre-defined according to agreed policies The University and the Industry feel more confident Researchers must pay great attention to their obligations

“Innovative approach” for the University-Industry relationship The University Central Administration (not single researchers)

negotiates with the Company Headquarters to establish long-term wide-scope research agreements

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The specific terms for Intellectual Property mgt.

The terms referring to the ownership of research Results and Intellectual Property Rights are amongst the most important ones

The ownership and the terms of use for Know-how and IPR are predefined

Know how Industry

Patents [Industry University]

We strongly suggest that co-assignment in patent applications is warranted to the University in order to defend the Researchers and University reputation

After patent filing, University must grant the freedom of operation to the industry by perpetual license agreements

Publication rights must be granted to the University

Reasonable confidentiality conditions must be negotiated

The IPR provisions apply for 6-12 months after the expiration of the contract

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What does University wants?• Moral reputation for its research activity

co-assignment in patents !

• Reasonable money awards to reward its Researchers

• The possibility to continue the research in the same field after the expiration of the contract

• The free of charge use of the results for teaching and research

• The possibility to publish part of the results in scientific journals

• Long-term relationship with the Industry instead of sporadic collaborations

What does Company wants?• The complete ownership of the know-

how generated within the contract

• The unlimited freedom of operation for industrial and commercial purposes

• The co-ownership of IPR (patents)

• The complete control of patent filing and international extensions

• The right to pursuit the legal defense in case of patent infringement

• Confidentiality about all trade secrets

• Delay in public disclosure of scientific results to allow patent filing

Negotiation of University-Industry IPR agreement

Is there a real conflict of interest between University and Industry for what concerns IPR ?

... much less than people believes !

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Typical provisions of IPR agreement

The property of all non patentable results goes exclusively to the Industry that can exploit them without any limitation

In case of patentable inventions the following procedure applies:

Researchers must disclose the invention to the industrial partner as soon as possible and should collaborate to define novelty and claims

The Industry must confirm the interest for the invention and decides wheter to file a patent application or keep a trade secret

The Company should take care of:

• patent text and claims

• payment ofall taxes and expenses

• payment of a reasonable award to the University

Co-ownership is granted to the University

University grants the Industry the complete freedom of operation

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Confidentiality committments

University undertakes proper actions to prevent confidentiality breaks by its Researchers

University keep the rights to use (for free) the results of the research for educational and scientific purposes

Researchers must submit to the Industry the paper drafts before publication in order to achieve the approval

The Industry should not deny the authorization without motivations

Confidentiality on trade secrets should last for a time long enough to prevent any damage to the industry (usually 5-10 years)

The University Name and Logo should be used only in scientific and technical publications

The Industry should refrain to use the University logo in advertising unless specifically authorized

University should provide the proper credit to the funding Company in public disclosure of the scientific results

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Final Remarks

Universities should play a responsible role in the development of the society through technology transfer and cooperation with industries

Relationship between University and Industry should be properly managed

Intellectual Property Rights are key issues for the relationship between Universities and private Companies