University Industry Partnership
Guriqbal Singh Jaiya
Necessity of a Holistic Approach
 Sustainable R&D funding
 Long term R&D strategies 
 Professional R&D management 
 Proactive communication efforts 
 Technology transfer strategies 
 Regional development in general
 Market development 
 Tax, immigration and property rights laws 
Good governance 
National / International
Competition: International competitiveness is key for
every R&D system.
Cooperation: International cooperation strengthens
R&D-systems. Moreover, it creates foreign R&D
demand where domestic R&D demand is lacking. Brain
drain can be reduced.
National needs and possibilities: Restructuring R&D
systems will have to follow national needs and
possibilities, but with the perspective of international
competitiveness. Focusing on quality instead of quantity will be essential. Setting priorities means admitting
posteriorities.
No “Stop and Go Policies” in R&D
Long term: Developing R&D systems is a long term
task. The political system therefore has to offer long
term stability with regard to strategies and public
funding. “Stop and go policies” won’t work.
Beyond political agendas: R&D strategies should not
be affected by political changes in governments. There
has to be an understanding of R&D needs that goes
beyond electoral agendas of political parties.
Not only words! Strategies only become relevant
when they are linked to objective based funding.
Regional Strategies to R&D
Regional approaches: Regional approaches to
R&D and to technology transfer are decisive since every
region and each economic sector are facing specific
challenges and opportunities. The advantage of proximity
is essential.
Regional Development: Fostering regional R&D means
fostering regional development in general
and regional authorities with regional revenues.
Joint efforts: Successful R&D and technology transfer
strategies have to be developed as joint efforts of
authorities, universities and the economic sector. Thus,
also building up mutual trust.
Looking for Effective R&D Funding
Competition and accountability: Competitive funding is crucial to foster scientific excellence. Funding of
institutions should also be objective based. And:
Objectives should be output targets.
R&D management: Universities and research institutes need professional management capacities in
order to successfully allocate R&D funds.
Absorption capacities: R&D funding has to take
regional aspects into consideration. Not every region
has the same capacity to successfully absorb R&D
investments.
University Teaching is Key
What’s most important: Graduates are the most
important output of universities and thus, their most
important contribution to technology transfer. Therefore, university teaching is key – also for the econo-mic
development of a country and its regions.
Best faculty: If university teaching is key – hiring the
best faculty is even more important.
Entrepreneurship: Start-ups initiated by university
graduates are more important for the economic tissue
of a region than spin-offs of a university. Therefore,
fostering entrepreneurship has to be part of standard
curricula.
Including Technology Transfer in
R&D
Explicit and comprehensive: Universities and
research institutes should develop explicit technology
transfer strategies. Moreover, technology transfer has
to be part of an overall R&D management.
Basic and applied science: One of the best ways to
be successful in technology transfer is to link basic and
applied science.
Technology transfer is a give and take! Integrating
business partners and their specific needs already in
the design of research projects facilitates the transfer of
innovation.
Demand Driven – Innovation Driven!
More than improvements: Demand driven R&D
mostly improves existing technologies or processes.
Innovation driven technology transfer has to be
enhanced as well in order to achieve real innovation.
Seed money: Public money will be needed to support
innovation driven technology transfer and proof of
concept projects.
Matching responsibilities: Industrial partners should
contribute financially. Matching funds are the most
successful way to foster innovation driven technology
transfer.
Specific Challenge: Addressing SME
Sustainable economic development: SME
are key for a sustainable economic tissue of a
region. Special attention therefore, has to be
given to integrating SME in R&D networks.
Special care: SME usually don’t have the
resources to tackle more than their daily
business. Moreover, they don’t have ties to the
scientific community. Knowing their specific
needs and offering concrete services therefore
is decisive for successfully addressing SME.
Technology Transfer: Some Best
Practice
Regular, institutionalized contacts of universities and
industrial partners can build up mutual understanding.
Specific clubs of regional companies as “group of
friends of the university” seem to be promising.
Joint projects of research institutes and industrial
partners
Internships in the industry as part of standard university
curricula
Industrial partners lecturing at the universities
Sabbaticals of university professors in the industry
Culture of Science
Building up a culture of science: A “culture of
science” is decisive for a sustainable public
R&D funding – and beyond.
Bridging the gap: Professional “interpreters”
are needed bridging the gap between science
and a broader public.
Proactive R&D communication:
Communication strategies have to address
politicians, staffers, the economic sector and
the public in specific ways.
Why We Want to Improve?
We need knowledge and
innovation based societies not
only to assure economic
growth in global markets, but
also to cope with the global
challenges of today.
Top 100 research universities
2005 data from Shanghai Jiao Tong University Institute of Higher Education
others 7
Australia 2
Netherlands 2
Switzerland 3
Sweden 4
France 4
Canada 4
USA 53
Japan 5
Germany 5
UK 11
The Super-League in 2005
from Shanghai Jiao Tong University data
1 HARVARD USA
11 Yale USA
2 Cambridge UK
12 Cornell USA
3 Stanford USA
13 UC San Diego USA
4 UC Berkeley USA
14 UC Los Angeles USA
5 MIT USA
15 Pennsylvania USA
6 Caltech USA
16 Wisconsin-Madison USA
7 Columbia USA
17 Washington (Seattle) USA
8 Princeton USA
18 UC San Francisco USA
9 Chicago USA
19 Johns Hopkins USA
10 Oxford UK
20 Tokyo Japan
Types of academia-industry/business collaboration
(survey based on 25 universities and research institutions)
Consultations
17%
Training, seminars, conferences
13%
Organization of student, doctoral, etc. research practices
11%
Assisting the management of business processes
8%
Studies of the effectiveness of technologies/
products/services
7%
Creation of new technologies
6%
Results attained by academia-industry/business collaboration
Gaining new experience
20,9%
Making contacts with foreign organizations with similar
activities
16,1%
Development of new research fields
15,7%
Initiating of new university subjects, post-graduate
qualifications and courses
13,4%
Getting more information about the innovation needs of
companies
12,7%
Getting actual economic information
11,8%
Receiving of additional funding
9,3%
The Mission of a University
Education, research and public service
Source of discoveries, new knowledge
and basic research (upstream
research)
Provide skilled and educated
manpower to meet the developmental
needs of the country.
The Mission of a University…
Many universities, however, are accused of
Being in ivory towers, removed from the
needs of the community
pursuing knowledge of little relevance to the
developmental needs of the country
producing a workforce ill equipped to meet the
challenges of industry and
in general contributing very little to the
practical development needs of a country
University Research
Investigator initiated – Discovery driven
University sets priorities for future research
New faculty are hired based on these priorities
New faculty investigators seek research support
Faculty act like entrepreneurs within the
university seeking research support form
government and private sources
Network of Agreements
Sponsored research
Federal
Foundations
Corporate
Material transfer agreements
Consulting agreements
Collaborators who may be joint inventors
Stakeholders in the University
Faculty
Deans and Department Heads
Research
Legal
Finance
University Relations
Alumni Affairs and Development
Influences on Technology Transfer
Philosophy of the University
Entrepreneurial vs. Risk averse
Expectations
Proximity/Access to venture capital
Access to management
Local business community
Local assistance programs
State economic development programs
Business Development in a University
Do lots of deals, make lots of money
Respect academic values
Insure obligations to sponsors of
research
Compliance with gov’t regulations
Stay within budget
Maintain relationships
Avoid controversy
Roles of the
Technology Transfer Office
Disclosure evaluation and patent
decisions
Management of patent prosecution
Technology marketing
Licensing
Management of existing licenses
Material transfer agreements
Corporates
Strategy
Retentionist
Strategies vary
Applied Research
Impact
Direct use of IP in each field to maximise
income; limit or control competition; create
entry barriers for others; develop brand
awareness; enter new areas; motivate staff
Universities/Colleges
Sale and
licensing options
“Ivory Tower”
Donation
Generate income; cultivate new markets; get rid
of non-core/incidental inventions/processes;
develop new products; control costs
Lesser emphasis on commercial imperatives;
greater commitment to open dissemination of
knowledge; emphasis on social mission etc.
Eastman Chemical donation to to North Carolina
universities
Basic Research
Revenue
Mission
Policies Need To
Be Flexible Not
Fixed?
One Mission or
Many Missions?
Intellectual Capital
Intellectual Property
Internal and External
Relationships; IPRs
Assets
Management
Tangible
Intangible
Value
IPRs
Collegiality
Outreach
within and
between sectors
Patents; Trade Marks;
Copyright; Designs;
Confidential Information
H&FE
IPRs and Asset
Management Will
Be A Compromise?
Many Missions
In A Single
Institution?
Mission
Revenue
A « UNIVERSAL » CHALLENGE
A gap between Research and Economy
 Limited impact of R&D on competitiveness
 Limited cooperation between RDI and SMEs
A challenge all over the world
 Most countries support R&D
 Gvts. expect to get R.O.I. from their R&D
spending
A UNIVERSAL CHALLENGE ALL OVER THE WORLD
A « DOUBLE » CHALLENGE
Res. Scientists are not motivated to
work with SMEs
SMEs are not motivated to work with
« academic » scientists
STRONG INCENTIVES ARE NEEDED
Push or Pull ?
Push or Pull ?
Market Pull
Technology Push
(Technology absorption)
 From the Lab to the market
 Idea of a scientist
 Limiting step : selling the idea
(and the project) to industry
TOP DOWN




From market needs to the lab
AND Back to market
Need identified by industry
Limiting step :
 Identifying the customer
 Identifying the need
BOTTOM UP
Push or Pull ?
Technology Push
Give more « fancy » results but it will take more
time and it is very risky
Market pull (Technology absorption)
Give less « exotic » results but
much more frequent + a higher success
rate
Push or Pull ?
SUCCESS RATE :
Technology push :
Low (a few %)
Market Pull
High (50%, with some experience)
Market pull offers a potential
usually underestimated
!
A Challenge !!
RDIs think almost exclusively….
« TECHNOLOGY PUSH »
S.E.T.S(*) are more interested by
« MARKET PULL »
(*)S.E.T.S. : Traditional Sectors Small
Entreprises
A 3 Partners cooperation
Technological Institutes (RDIs)
 Provide the appropriate technology services
SMEs
 Identify the market needs
 Manage innovative projects
The Government (Ministries, agencies ..)
 Stimulate the process to boost the economy
 Provide incentives (for Scientists and for Industry)
 Provide assistance
 Often provide some funding
Targeting SMEs
The main issue is to :
Identify potentially interested SMEs
AND
« Sell » them technology services
Targeting SMEs...
 Conferences, seminars…
 Commercial fairs
 Brokerage events
 Existing networks
 Regional networks (Chambers of
commerce)
 National networks (Innovation agencies)
 European networks
 E.U. « networking » activity (ERA-NET)
 V.C. forums
 Private consultants
 Data Banks ?
 ……
Targeting SMEs...
Communicating with SMEs
The most efficient way to communicate is
not to present what an RDI can do
BUT :
To ask the manager of an SME who has had
a successful partnership with an RDI to
testify in front of other other SME managers
The « next » step…
Building up mutual respect
It takes some time
Personal contacts
Usually the first cooperation are
« modest »
At that stage Gvt. support is needed
SMEs –RDI cooperation
Numerous way to cooperate
R&D contracts
Consulting
Technology « diagnostic »
……
Licensing
The role of Governments:
Public-Private Partnerships
Governmental programs
Many programs to support SMEs:
 National
 Regional
 International
One common goal : to bring
assistance to SMEs to improve their
competitiveness
Governmental programs
To
strengthen SMEs competitiveness
Assistance for:
 Identifying partners
 Preparing a Business Plan
 IPR and legal matters
To
provide some public funding
 Financial support for project
preparation
 Matching grants
 Soft loans
A few National Programs
United States : SBA
Europe :
 Finland : TEKES
 France : Oséo-Innovation
 The Netherlands : Senter
 Spain : CDTI
+ Numerous Regional programs
 Ex. Flanders
International Programs
 World Bank projects on Tech. Development
 Far East (India, Korea…)
 Latin America (Mexico…)
 Eastern and Central Europe (Croatia, Ukraine…)
 European Union Framework Program
 Research for the benefit of SMEs
 Other European programs
 Eureka initiative

Intergovernmental (Mkt. Oriented, nationally funded)
 European Space Agency
 Technology Transfer program
E.U. programs for SMEs
Research for SMEs (former CRAFT)
Coordination of SMEs RTD co-operation
 ERA-NET
 Eurostar
SMEs participation to RTD projects
+
Various supporting actions
 Network of National Contact Points
 Coordination and support actions
The role of Governments
To create a favourable environment
 Fiscal laws
 Patent laws
 Encourage mobility
 R&D funding allocation
The role of Governments
To provide infrastructures
 Incubators
 Technology parks
To provide assistance
 Financial
 Legal
 Economical
The role of Governments
Incentives, Incentives
Incentives….
Incentives for SMEs
Incentives for Scientists
The role of Governments
A stable legal framework over a long
time
A rigorous monitoring process
 To follow progress
 To learn (from failures)
Methods to Transfer Technology
Training of students
Publication of research results
Exchange of research materials
Collaborative research projects
Consortia
Faculty consulting
Technology licensing
Start ups
Technology Transfer
Commercialize research results funded primarily by the
federal government for the public good
Recruit, reward, and retain faculty and students
Induce collaborations with industry
Promote economic growth
Generate income to promote and support teaching and
research
Roles of the Technology Transfer Office
Disclosure evaluation and patent decisions
Management of patent prosecution
Technology marketing
Licensing
Management of existing licenses
Material transfer agreements
Criteria for Start Ups
Business plan
Expectation that company can accomplish goals
Faculty and staff involved have cleared conflict review
No equity only deals
Equity represents fair value for technology licensed
Stakeholders in the University
Faculty
Deans and Department Heads
Research
Legal
Finance
University Relations
Alumni Affairs and Development
University Research
Investigator initiated – Discovery driven
University sets priorities for future research
New faculty are hired based on these priorities
New faculty investigators seek research support
Faculty act like entrepreneurs within the university seeking research
support form government and private sources
Network of Agreements
Sponsored research
Federal
Foundations
Corporate
Material transfer agreements
Consulting agreements
Collaborators who may be joint inventors
Influences on Technology Transfer
Philosophy of the University
Entrepreneurial vs. Risk averse
Expectations
Proximity/Access to venture capital
Access to management
Local business community
Local assistance programs
State economic development programs
Business Development in a University
Do lots of deals, make lots of money
Respect academic values
Insure obligations to sponsors of research
Compliance with gov’t regulations
Stay within budget
Maintain relationships
Avoid controversy
Changing Role of Universities
Universities key players in the Knowledge Economy.
They produce the raw material for the knowledge
economy
Universities are expensive institutions for any country,
what ever be the level of development (investment)
There is a certain expectation now that countries cannot
afford to let this very important resource go unmanaged.
That there must be a return on investment and that
knowledge generated in universities must be fashioned
to meet the needs of the country after development by
others (down stream research), in many products
beneficial to the community.
The Challenge of Universities
Unable to retain qualified people
Inadequate state funding, no means of creating funding
sources
Inadequate infrastructure and facilities
Gap between the outcome of university research and the
stage which firms can assimilate it
University Industry Cooperation Benefits to University
Industry is the conduit through which the results of
university research can be transferred, disclosed and
disseminated to the public for the public benefit
It will bring in badly needed funds allowing the university
to fulfill its fundamental mandate.
Supplement the income of staff to retain talented staff
Provide early exposure to universities of the inner
workings of industry
Concern – will universities be able to fulfill its
fundamental mandate
Universities have evolved from “public trusts to
something akin to venture capital firms” - Fortune
Research should be curiosity driven not market driven
Open culture of sharing and publication now clouded in
secrecy and driven by profit
Loss of control
private interests may undermine the objectivity of
research by causing bias, suppression of results, and
even fraud
Benefits to industry
Industry is not usually in the business of basic research
whereas that is the function of university
Source of new technologies
Expert support at lower cost
Concerns
University inventions are sometimes considered too
early stage (arcane!, impractical) and a lot of innovation
may be required to make it ready for market
Universities tend to publish early
What follow up support could be expected from the
inventor for further development
Universities’ mind set is academic and not
entrepreneurial
Universities are less inclined to work with small firms
who cannot provide the same legal and financial security
as a larger firm.
The Cultural Dilemma
Knowledge for
Knowledge’s Sake
UNIVERSITY
INDUSTRY
Management of
Knowledge for Profit
Teaching
Research
Service
Profits
Commercialization
of New and Useful
Technologies
Economic
Development
Academic Freedom
Open Discourse
Product R&D
Confidentiality
Limited Public Disclosure
Blending the University Research
and Entrepreneurial Cultures
Academics
Industry
research priorities set
by investigator
research priorities set
by management
grant-seeking
profit-seeking
publications
proprietary
serendipity
control
transfer at early stage
add value before
transferring
Factors that Influence UniversityIndustry Collaborations
Technological advances in science-based and technology-intensive
industries
Computer software
Advanced materials
Biotechnology
Increased international competitiveness
Slowing of public and private support for industrial R&D
Factors that Influence UniversityIndustry Collaborations
Encouragement of research collaborations
Federal research programs to promote national
competitiveness through technology development
State programs to promote technology development
Changing Roles
“University-industry technology transfer can be a stimulant, precursor
or complement to building a high skills, high wage, state economy.”
Increase in interdisciplinary research
Emphasis on commercialization
Encourage university-industry collaborations
Issues in University-Industry
Relationships
Ownership of intellectual property
Confidentiality
Publication
Indirect costs of research
Exchange of research materials
Concerns about University-Industry
Relationships
Universities will abandon their core missions
Potential change of university research focus –less
basic, more applied
University research funding tied to job creation
Conflicts of Interest
Conflicts of Commitment
Concerns about the loss of objectivity
Investigator conflicts of interest
Collection and analysis of data
Sharing results and materials
Institutional conflicts
Equity management
Patient protection in clinical trials
Useful Web Sites
Association of University Technology Managers –
www.autm.net
Council on Governmental Relations –www.cogr.edu
Association of American Universities –www.aau.edu
Types of Cooperation
Direct funding of research through gifts and grants
Exchange programs and internships
Consulting by faculty
Commercialization of inventions, innovations and
research findings
Discovery to entrepreneurship
Source UC Davis
Inventions: Process
Invention
Complete Invention
Disclosure Form (web)
and provide all
data on Invention
CSRL Notification of
Patent Filing to
Inventors
Free to Publish
(or make other public
Disclosure)
Inventors to complete
Declaration and
Assignment Documents
Critical
Inventions
Evaluation of Invention
(2 – 4 weeks)
Depends on Extent
Of data (CSRL)
Convey Decision
To Principal
Investigator
Yes, Patent Filing
Outside Attorneys File.
Collaborative –
CSRL, Inventors, Attorney
(1-3 months)
No Patent Filing
Free to Publish
Inventions: Evaluation of Inventions
(Case Manager)
Inventions
Preliminary Screening for Appropriate Filing Content
Evaluation of the Product and its Market
Evaluation of Science Strength/ Evaluation of Institutional Issues
Evaluation of Patent Position
Additional Considerations
Inventions
Invention: Process (continued)
YEAR 1
YEAR 2
Y0
YEAR 3
Y4
PROSECUTION
Back and forth
with the Patent
Office
PATENT
FILING
Identify
Licensee
• Start-up?
• VC?
Negotiate
License
Option
ISSUANCE
Manage
Licensee
Relationship
Finding a partner company: Marketing
Marketing / Licensing
Revenue
and licensing
Identify companies that may have an interest in the invention
Related product market analysis and reports
Inventor knowledge and experience
Contact companies
Non-confidential disclosures
Disclosure of confidential information under a Confidentiality
Agreement
Negotiate license
Exclusive or non-exclusive
Royalties, up-front payments, milestones etc.
Due diligence provisions
Distribution of License RevenueMarketing / Licensing
Revenue
Expenses incurred in IP
protection or creation are
deducted
prior to distribution of
License Income
Inventor(s)
(25%):
Divided equally
among all coinventors
MGH
(25%)
Inventor’s
Laboratory
(25%)
Inventor’s
Department
(25%)
From invention to issued patent (annual
numbers) Scoring
tool/
Screen
3,000 lead
researchers
(PIs) with $1
billion
in annual
expenditures
350 to 400
invention
disclosures
submitted
annually
to RVL
Patent
Office
Decision
175 to 200 patent
applications
80 to 100
patents issued
50%
50%
75 to 125
licenses*
*License amounts vary
widely and some
technologies have more
than one licensee
Goal of a University IP Policy
Not conflict with the primary goals of an university
(teaching and research)
Balance the interests of all stake holders
The university employs the researcher, provides the
facilities and its name
The researchers expends his time, energy and skills
The govt uses its scarce resources to support
universities and expects the knowledge produced to
promote national development
Sponsors want to own the results of sponsored
research
Elements of an IP Policy 1. Ownership
Inventions and innovations arising from activities using
university resources and facilities are owned by the
university
The ownership of inventions and innovations that arise
from activities using government grants depends on the
law of the country
US - Bayh Dole Act.
Japan
Bayh-Dole Act of 1980, USA
Prior to the Bayh-Dole Act public funded research belonged to the
public. 50% of all research in the US was government funded but
very little was put to use. No private ownership no investment.
Under the Act, inventions made by universities that have received
federal funding may be owned by the university.
The inventor must disclose the invention to the university and to
the government with a statement that the invention was made
with government support.
The government retains a non-exclusive, non-transferable,
irrevocable, paid up, world wide license
The government can require the inventor to grant reasonable
licenses to third parties under certain circumstance (march in
rights)
Since Bayh-Dole came into force, nearly 5,000 companies have
been spun out of American campuses, over 40,000 licence
agreements have been concluded between academic institutions
and outside parties.
Companies with their roots in the US university system now
contribute an estimated US$40 billion a year to the country’s
economy.
The Bayh-Dole is credited for the creation of around 1500 biotech
companies, employing more than 180,000 people generating
upwards of US$40 billion in revenue
For example the California Institute of Technology (CALTECH)
received in one year some 10m $ in licensing revenue, filed 416
patent applications, received 142 patents, started 14 new
companies.
A wide range of new products have
stemmed from university -based research
Kansas State University developed nanomaterials that can neutralise a wide range of
contaminants and chemical warfare agents. The technology is licensed to NanoScale Materials
Inc of Manhattan, Kansas.
University of North Carolina invented a software program that incorporates a 3D microscope,
which allows students to experience microscopy in the classroomand from home. The technology
is licensed to Science Learning Resources Inc, of Carboro, North Carolina.
Researchers at Boston University, developed an optical device known as the Numerical Aperture
Increasing Lens (NAIL) to produce high-resolution images of wafer circuitry.
EdgeTech of Marlborough,Massachusetts, has taken a licence to a sonar technology developed at
Florida Atlantic Univeristy that can be used to locate buried underwater mines.
Purdue University developed a miniature mass spectrometer now licensed to Griffin Analytical
Technologies Inc, of West Lafayette, Indiana. This portable device can be used to identify
chemical warfare agents, explosives and toxic industrial chemicals.
University of Texas scientists developed wired enzyme technology, which allows diabetes patients
to measure blood glucose with a much smaller sample than required by existing methods.
Allergan Inc, of Irvine, California, is selling a new drug, Restasis, which is based on technology
licensed from the University of Georgia. Restasis, an immunosuppressant, decreases tear duct
inflammation and is used to treat dry eye.
The Bayh-Dole Battle by Victoria Slind-Flor, Intellectual Asset
Management December/January 2006
Sponsored research
Inventions arising from research sponsored other
than by the government would be governed by the
terms of the agreement which would normally have
been approved by the university
Usually the sponsor would expect to own the results
of the research (but powerful universities like UCLA
own the IP even in such cases).
The Onco-mouse
On April 12 1988, the U.S patent office granted Harvard
a Patent rights over the Oncomouse, a transgenic
mouse designed to have a predisposition to cancer
Dupont had provided some $6 US funding for the
research that resulted in the Onco mouse and under the
terms of that funding were granted an exclusive license
giving DuPont the right to “make and have made, to use
and have used, to sell and have sold, the Oncomouse,
and to fully exploit the patent rights”.
Limits on informal exchange of mice - DuPont would not allow scientists to follow
their traditional practices of sharing mice or breeding extensively from the mice.
Contractual control of scientific disclosure - DuPont imposed forms of contractual
control on scientists, most notably a requirement that they fulfill annual disclosure
requirements; this was not a strict prohibition on publishing but a requirement that
scientists using an Oncomouse would provide an annual research report on their
published findings.
Reach through rights on future discoveries made with an Oncomouse - DuPont
required that scientists give them rights to future inventions made using oncomice.
These so-called reach-through rights give the licensor of a patented technology a
share in any proceeds from a product even though the original technology is not
incorporated into the end product. These rights are not an integral part of patent law
but instead emerge as part of a negotiation over the terms of conditions of a contract
to make use of a technology – they are part of the price of use. While common in the
contracts between biotechnology and pharmaceutical firms, this was the first time a
company had sought to impose such a provision on academic scientists.
By late 1999, after four years of negotiations, DuPont
and the NIH signed a Memorandum of Understanding
under which academic scientists (when funded by the
NIH) could use oncomice without cost, providing they
were not using them for any commercial purpose,
including research sponsored by a commercial firm.
Inventor
If the university does not proceed to patent an
invention the inventor may request that the right to
patent be transferred to him. The University may
retain a non exclusive right to use the IP for
educational and research purposes and perhaps a
right to a percentage of the revenue
If the invention was made without “significant” use of
the university’s resources the inventor could claim
ownership
Elements of an IP Policy
2. Management
Create a department/office such as a Technology
Licensing Office to be in charge of managing the
university’s IP assets
Responsible for the protection and commercial
development of inventions and creations
Responsibilities of a TLO
Processing and safeguarding relevant IP agreements;
Determination of patentability, managing invention
disclosures, undertaking patent search and completing
applications for patents;
Evaluating the commercial potential of an invention;
Obtaining appropriate patent protection;
Locating suitable commercial development partners;
Negotiating and managing licenses.
Invention Disclosure
A disclosure is the first signal to the university that an
invention has been made.
It is typically used to give a formal description of an
invention that is confidentially made by the inventor to
his or her employer.
It provides information about the inventor or inventors,
what was invented, the circumstances leading to the
invention and facts concerning subsequent activities.
It provides the basis for determining patentability and the
technical information for drafting a patent application.
All researchers are obliged to report to the University
TLO all potential patents through the disclosure
document. Premature public disclosure may affect
novelty and disqualify it from patentability
An invention disclosure is treated with confidentiality by
the TLO
Submitting a disclosure is the first formal step towards
obtaining proper intellectual property protection through
the university.
Identify commercially valuable inventions
Protect them (assess their patentability, prepare and
make the patent application)
Reward employees who create such inventions
Commercialize (Locate commercial partners and
negotiate licensing agreements)
Elements of an IP Policy 3. Income Distribution
Gross income - license fees, royalties, milestone
payments etc
Net income - gross income less university expenses for
filing patents, negotiating license agreements etc..
Distribution of revenue - generally the inventors share 
and that of the university  as total net revenue 
Many universities grant an average of 35% income to
the inventor.
Spin -Off
Commercialization of research can also take place (other
than through licensing to another company) through the
route of a spin off company that will commercialize the
invention
a spin off company is one that is established by
members of university staff to exploit IP that belongs to
the university
For example the university will transfer the relevant IP
free of royalty to the spin off and will seek a majority
shareholding in the company.
Incubators have been useful in assisting the
development of spin offs
Incubators
Business incubators are designed to help start-up firms. They
usually provide:
flexible space and leases, many times at very low rates
fee-based business support services, such as telephone
answering, bookkeeping, secretarial, fax and copy machine
access, libraries and meeting rooms
group rates for health, life and other insurance plans
business and technical assistance either on site or through a
community referral system
assistance in obtaining funding
networking with other entrepreneurs
The primary goal of a business incubator is to produce successful
businesses that are able to operate independently and financially
viable.
Companies that spawned from Stanford
Altera
Atheros Communications
BEA Systems
Charles Schwab & Company
Cisco Systems
Cypress Semiconductor
DNAX Research Institute
Dolby Laboratories
eBay
E*Trade
Electronic Arts
Gap
Google
Hewlett-Packard Company
IDEO
Intuit
Kiva
Linked In
Logitech
Mathworks
McCaw Cellular Communications
MIPS Technologies
Nanosolar, Inc.
Netflix
Nike
NVIDIA
Octel Communication
Odwalla
Orbitz
Rambus
Rational Software
Silicon Graphics
Sun Microsystems
Sun Power Corp.
Taiwan Semiconductor
Tandem Computers
Tensilica
Tesla Motors
Trilogy
Varian Associates
VMware
Whole Earth Catalog
Windham Hill Records
Yahoo!
Zillow
Stanford University – Some of the inventions
licensed
Digital sound synthesis: John Chowning developed FM sound synthesis for digitally generating sounds in the
late 1960s, leading to the music synthesizer.
Disease management: The Stanford Patient Education Research Center develops programs for people with
chronic health problems, including arthritis and HIV/AIDS. The program has been licensed to more than 500
organizations in 17 countries and 40 states.
DSL: In the 1980s, John Cioffi and his students realized that traditional phone lines could be used for high-speed
data transmission, resulting in patents used in asymmetric digital subscriber lines.
E-mail security: Identity-based encryption, developed by Dan Boneh and Matt Franklin, offers an efficient way to
encrypt and protect e-mail.
Functional antibodies to treat disease: In the 1980s, Leonard Herzenberg, Vernon Oi and Sherie Morrison
discovered how to mass produce antibodies— molecules that detect foreign substances—and target them for
destruction by the body’s immune system.
Genome sequencing: Two tools assist in the sequencing of DNA: CHEF electrophoresis, invented in 1987 by
Ron Davis, Gilbert Chu and Douglas Vollrath; and Genscan software, developed by Christopher Burge.
Google: The world’s most popular search engine got its start at Stanford when Sergey Brin and Larry Page
developed the page-rank algorithm while they were computer science graduate students.
Personalized medicine: The gene chip, based on spotted microarray technology developed in the 1990s by Pat
Brown and Dari Shalon, allows doctors to create genetic profiles of patients and their diseases.
Recombinant drug production: Recombinant DNA technology, developed in 1973 by Stanley Cohen and Herbert
Boyer, laid the groundwork for modern genetic engineering by allowing scientists to combine pieces of DNA from
different organisms.
Questions to consider
Is the mission of universities being compromised by
commercial interests
Should research results funded by tax payer money be
privately appropriated
If commercialization of publicly funded research is
appropriate
Ensure clarity on ownership of research results
Allow each university and PRO to develop their own
internal policy along the above lines within the
broader national goals
Governments could inject humanitarian/public service
licensing policies into such national goals
Trend
Major private research labs are down sizing while
smaller start ups are increasing their research activities
Companies are funding more basic and applied research
in universities. Less corporate funding for the sake of
public good but tied directly to corporate goals.
More funding
Less independence
Rise in “real world” research
Bayh-Dole Act
Important Provisions
Universities may elect title to inventions
Universities are expected to protect IP
Government retains non-exclusive license
Government retains march-in-rights
Uniform guidelines for granting licenses
Universities must report on activities