New Ways of R&D Collaboration:
Open Innovation, Collaborative
Licensing and How to Prevent
and Resolve Disputes
Wim Vanhaverbeke
University of Hasselt,
Vlerick Leuven Gent Management School,
ESADE Business School (Barcelona),
Founder of Exnovate
Esther van Zimmeren
Research Fellow FWO
University of Leuven
esther.vanzimmeren@law.kuleuven.be
wim.vanhaverbeke@uhasselt.be
Workshop on ADR in R&D
Collaborations, November 13 2009,
Thesis
Organizations involved in Open Innovation (OI)
have an even bigger incentive to use ADR in
order to prevent and resolve disputes
Workshop on ADR in R&D
Collaborations, November 13 2009,
Leuven
Plan
1. Open Innovation (OI)
1.
2.
3.
4.
Introduction
Closed Innovation
OI
Crucial dimensions in OI
2. Basic IP Issues
Conflicts – Recent Example
3. OI & R&D Collaborations & ADR
1. Multiple Parties
2. IP Models
3. Collaborative Licensing Models & ADR
1. Patent Pools & ADR
2. Clearinghouses & ADR
4. Conclusions
Workshop on ADR in R&D
Collaborations, November 13 2009,
Leuven
Introduction
What is Open Innovation?
“Open innovation is the use of purposive inflows and
outflows of knowledge to accelerate internal innovation,
and expand the markets for external use of innovation,
respectively.”
Chesbrough, Vanhaverbeke, West
Open Innovation: Researching a New Paradigm (2006)
Workshop on ADR in R&D
Collaborations, November 13 2009,
Leuven
A Closed Innovation System
Science
&
Technology
Base
Research
Investigations
R
The
Market
Development
D
Workshop on ADR in R&D
Collaborations, November 13 2009,
Leuven
New Products
or Services
Source: Henry Chesbrough
CI: The Virtuous Circle for R&D
Fundamental Technology Breakthroughs
Increased investment
in R&D
New Products and Features
Increased Sales and Profits via existing business model
Workshop on ADR in R&D
Collaborations, November 13 2009,
Leuven
Source: Henry Chesbrough
OI: The Virtuous Circle Broken
Fundamental Technology Breakthroughs
The outside option
IPO
Increased
or
investment
acquisition in R&D
RIP
New Products Key engineers
and Features exit to form
new company
Increased Sales and Profits
Venture Capital helps team to focus on
new market, new business model
Workshop on ADR in R&D
Collaborations, November 13 2009,
Leuven
Source: H.
Chesbrough
Inbound OI: Filling gaps with external
technology
New
Market
Internal
Technology
Base
Current
Market
External
Technology
Base
Technology in-licensing
External research projects
Technology
acquisition
Venture investing
R
Source: H. Chesbrough
Workshop on ADR in R&D
Collaborations, November 13 2009,
Leuven
D
Outbound OI: Profiting from
others’ use of your technology
Licensing
Other Firm’s
Market
Technology Spin-offs
New
Market
Internal
Technology
Base
Current
Market
External
Technology
Base
Technology Insourcing
R
Source: H. Chesbrough
Workshop on ADR in R&D
Collaborations, November 13 2009,
Leuven
D
Open Innovation: Crucial dimensions
in open innovation strategies
•
•
•
•
•
•
Strong/weak IP regime
Complexity and cost of technologies
Relevance of emerging technologies
Products or integrated solutions
Core technologies or not
Precompetitive or application driven
– non-exclusive or exclusive rights
•
Vertical vs. horizontal cooperative deals
– Specialization of labor (technology markets) and FTO/I
Workshop on ADR in R&D
Collaborations, November 13 2009,
Leuven
Basic IP Issues
1.
Commercial objectives – link with IP
2.
Fee for service contracting model vs. full-scale collaboration
3.
Do not postpone legal issues vs. overly complicated contract
4.
Strong, long-term relationship with the collaborators
(non-disclosure agreements)
5.
IP ownership – Employees
6.
Background/foreground IP
a)
b)
conditions access partners
conditions access third parties
i.
ii.
Open source
Workshop on ADR in R&D
Collaborative licensing
models
Collaborations,
November 13 2009,
Leuven
Conflicts – Recent Example
Board of Trustees of the Leland Stanford Junior
University v. Roche Molecular Systems, Inc. (Fed.
Cir. 2009)
co-development in the late 1980's and early 1990's of the application of
PCR technology to HIV detection by Stanford and Cetus (private
company that developed and owned the PCR technology)
Agreements
"Copyright and Patent Assignment (CPA)" agreement Holodniy Stanford
"Visitor's Confidentiality Agreement (VCA)" Holodniy - Cetus
"Materials Transfer Agreements“ Stanford - Cetus
Workshop on ADR in R&D
Collaborations, November 13 2009,
Leuven
Conflicts – Recent Example
Board of Trustees of the Leland Stanford Junior
University v. Roche Molecular Systems, Inc. (Fed.
Cir. 2009)
•
•
•
•
•
•
3 US patents held by Stanford
Roche successor in title Cetus
Licensing negotiations fail
Stanford sues Roche
CAFC: Stanford had no standing
Legitimate assignment of rights to Cetus/Roche
Workshop on ADR in R&D
Collaborations, November 13 2009,
Leuven
OI & R&D Collaborations & ADR
Open Innovation – R&D Collaborations
-
Value Creation
Long-term Relationships
Complexity
New technologies
Expertise – Complimentarity
Funding/revenue
Knowledge Transfer
Bringing Product to the Market
…
Workshop on ADR in R&D
Collaborations, November 13 2009,
Leuven
Multiple Parties
Contracting Parties
Contracting Parties
& Third Parties
Workshop on ADR in R&D
Collaborations, November 13 2009,
Leuven
IP Models
Bilateral Licenses
Cross-licenses
Open Source
Collaborative IP models
Patent Pools
Clearinghouses
Workshop on ADR in R&D
Collaborations, November 13 2009,
Leuven
Collaborative IP Models & ADR
P1
L2
P2
L3
P3
L4
P4
P1
P4
P2
P3
Patent Pool
Clearinghouse
L1
Clearinghouse
Workshop on ADR in R&D
Collaborations, November 13 2009,
Leuven
L1
L2
L3
L4
Patent Pools & ADR
P1
Conflict
Conflict P4
P2 Conflict
P3
Litigation?
Conflict L1
Conflict L2
ConflictL3
Conflict
L4
European Commission Technology
Transfer Guidelines - ADR
Workshop on ADR in R&D
Collaborations, November 13 2009,
Leuven
Arbitration
Mediation
Expert determination
Clearinghouses & ADR
P2
P3
P4
L1
Clearinghouse
P1
L2
L3
L4
ADR
Litigation?
Mediation
Expert determination
Workshop on ADR in R&D
Collaborations, November 13 2009,
Leuven
Conclusions
Organizations involved in Open Innovation (OI) have an even
bigger incentive to use ADR in order to prevent and resolve
disputes
-
ADR integrated in Collaborative
Open relationships
IP models?
Long-term relationships
Patent Pools
Expertise
Clearinghouses
Negotiated solutions
Quick solutions
Transaction costs – Litigation costs
Role of precedents
Workshop on ADR in R&D
Collaborations, November 13 2009,
Leuven
2008
2006
Open
Innovation
for
Policy makers
Vision-Eranet
2006
2003
Workshop on ADR in R&D
Collaborations, November 13 2009,
Leuven
2010
Implementing
and organizing
open
innovation
Exnovate as a network of excellence for
OI-practitioners and scholars?
• www.exnovate.org = An international network of excellence
on Open and Collaborative Innovation based on connecting
people, creating transparency and leveling up quality of services
• Connects companies – academia (30 top scholars networked)
– governments – service providers
• Membership organization
• Projects
– CE and OI Masterclass (6 times already)
http://masterclassfall2009.cisevents.hightechcampus.nl/
– European Innovation Forum
– Calls for proposalsr OI-management solutions
• Free information : cases, syllabi & updated bibliography about
open innovation, PhD projects, etc…
24
wim.vanhaverbeke@uhasselt.be