University Patenting in Europe: On the importance of legal frameworks and ...

University Patenting in Europe: On the importance of legal frameworks and local practice

Martin Meyer et al.

Presented by Dagmara Weckowska

SPRU – Science and Technology Policy Research &Dept of Business and Management,

School of Business Management and Economics, University of Sussex, Brighton BN1 9RH

Acknowledgements

• Martin Meyer• Antje Klitkou• Annamaria Inzelt• Marina Ranga• Paula Moutinho• Joaquin Azagra• Pirjo Kutinlahti• Basak Candemir• Devrim Goktepe• Bart Van Looy• Maurizio Sobrero

• Loet Leydesdorff• Izabela Kijenska• Lena Tsipouri• Elena Castro Martínez• Puay Tang• Jordi Molas-Gallart• Uelle Must• Azele Mathieu• Africa Villanueva Felez• Francesco Lissoni

Dagmara Weckowska Leuven, 10‐11 May 2012

Context

• More and more European countries have adopted Bayh-Dole type legislation to encourage commercial uptake of university research

- through a change of IP ownership that favours universities and often abolishes faculty privileges

University Patenting Activity at Country Level

Source: Van Looy et al. (2007)

19901991199219931994199519961997199819992000200120022003

AU BE CA DE DK ES FIFR GB IT KR NL SE US

Selected Universities – patent output

Source: Leydesdorff & Meyer Scientometrics , forthcoming.Dagmara Weckowska Leuven, 10‐11 May 2012

Selected UK Universities – number of patent applications

Source: HEBCI surveys2002-03 2003-04 2004-05 2005-06 2006-07 2007-08 2008-09

University of Cam-bridge

Imperial College London

University of Oxford

Observations raise questions:

• Perhaps, differences can be explained by local practice and cultural context

• Need to compare

(1) patenting activity by university faculty in countries with different frameworks

(2) explore differences in approaches towards IP between similar, research-intensive universities in a number of EU member states

Legal Frameworks

• Bay Dole type arrangements/no faculty exception:

• Professor’s privilege- Sweden

- Finland (until 2005)

• Not explicitly regulated:Czech Rep

Poland

Slovakia

Portugal

Turkey

AustriaBelgiumDenmark (since 2001)FinlandFranceGermany (since 2001)Greece

Hungary

IrelandLatviaNorway (since 2001)SloveniaSpainUK*

Country Cases

Two universities in the UKTwo universities in Spain

Plans for two universities in Germany

Two universities in Poland – work in progress

Plans for two universities in Sweden

United Kingdom

• Two established in the 1960’s, members of ‘1994 Group’• Case 1: University of Sussex• Case 2: University of Surrey

# invention

disclosures

applications

grants /

# active

patent

portfolio

licensing

income

IP licensing income / # active patent portfolio

Surrey/Sussex in 2005/6 3.5 3.5 6 0.52 2.21 4.25

Surrey/Sussex in 2009/10 5.05 24.41 0.74 0.37 48.34 131.07

IP framework

University of Surrey University of Sussex

▫ University IP code

▫ Well established organisational structures: • TTO since 1970s• Science Park and incubator

facility since 1983• SETSquared pre-incubator

since 2002

▫ University IP code reviewed in 2010 – changes with regard to IP ownership in collaborative/contract research and changes in royalty sharing scheme)

▫ Changes in organisational structure: • Sussex IP company (2002-

2008), • Research and Enterprise

Services (from 2008), • close collaboration with the

university incubator - ‘Sussex Innovation Centre’ (est. 1996)

Approach to generating and handling disclosuresUniversity of Surrey University of Sussex• Academics disclose inventions to

RES• royalty sharing scheme:

Inventors: 70% - 35% University: 30% - 65% ----------------------------------------

• RES manages IP protection

• Structured approach to valorisation of IP

• Strategic partnership with IP Group since 2006.

• Academics disclose inventions to RES and also RES actively seeks commercialisable research outputs

• royalty sharing scheme revised in 2010 Inventors: 80% or 40%Their department: 10% or 40%University: 10% or 20---------------------------------------------

• RES manages IP protection

• a stage-gate process for valorisation of IP since 2010

• Collaboration with Sussex Innovation Centre, which helps with IP marketing, business planning and fundraising

• internal seed fund since 2009

Entrepreneurial orientation of university

University of Surrey University of Sussex

Surrey can be defined as an entrepreneurial university.

• there is a strengthened steering core and well-established developmental periphery

• a diversified funding base (2009/10:43% UK public funds, 4% UK charities, 15% UK businesses 7% non-UK businesses31% from other foreign sources.

Sussex aspires to transform into an entrepreneurial university.

• Recently strengthened steering core and restructured developmental periphery

BUT• not diversified funding base (2009/10:

63% UK public funds, 15% UK charities, 5% UK businesses, 0.15% non-UK business 16% from non-UK sources

Poland

• Two polytechnic universities:- Case study 1: Warsaw University of Technology- Case study 2: Wroclaw University of Technology

National patent applications

FTE Acad. Staff

# #/FTE Warsaw UT 2001-05 131 0.094 1401Wroclaw UT 2001-05 118 0.100 1177

WrUT/WUT 1.07

Wroclaw UT 2005-10 602 0.310 1943

IP framework

Warsaw University of Tech. Wroclaw University of Tech.

▫ WUT is developing IP policy and regulations.

▫ Technology Transfer Centre promotes and manages IPR since 1997, transformed into CTTED in 2010

▫ Creation of a science park is part of the strategic plan for 2011 and 2020

▫ WrUT has policies in place for IP management since 1998

▫ A number of centres supporting commercialisation of academic research: ▫ Wrocław Centre for Technology

Transfer (since 1996), ▫ the Office of Intellectual Property

and Patent Information (since 2008),

▫ the Academic Incubator of Entrepreneurship (since 2006),

▫ the Student Career Office

Approach to generating and handling disclosures

Warsaw University of Tech. Wroclaw University of Tech.

• Reactive approach has dominated so far.

• A network of faculty-based enterprise managers is currently being developed.

• New policy will oblige academics to disclose

• Royalty sharing scheme So far on a case by case basisPlan: 50% for inventors

25% for the faculty 25% for the central university

• Proactive approach, e.g. occasional competitive bids encouraging disclosures

• Academics obliged to disclose by the University’s policy

• Disclosures are one of the key performance indicators in the periodic reviews of the academic staff performance

• Royalty sharing scheme60% for inventors20% for the faculty20% for the central university

Entrepreneurial orientation of university

Warsaw University of Tech. Wroclaw University of Tech.WUT is transforming into an entrepreneurial university. • strengthening steering core:

introduction of IP policy and inclusion of knowledge transfer in strategy for 2010-2020

• expanding developmental periphery: the professional outreach office was established

• The funding base is not diversified: about 75% from public funds.

• The heartland remains suspicious of entrepreneurial activities. An entrepreneurial culture has not developed yet.

WrUT is an entrepreneurial university. • There is a strengthen steering core -

university’s mission and strategy, policies

• developmental periphery – four organisational units for support of commercialisation activities.

• Diversified funding base for research activities: about 50% from public sources.

• There is entrepreneurial culture in many academic departments developed through years of close collaboration with industry.

• Case Study 1: Universidad de Valladolid • Case Study 2: Universidad de Santiago de Compostela

• Long tradition• Note: Universities may have less autonomy here

domestic

applications

# new PCT

applications

# active

patent

portfolio

IP licensing

income /FTE

IP income / # active patent portfolio

USC/UVA in 2005/6 2.13 10.33 2.1 9.90 4.65

USC/UVA in 2010 2.1 2.6 2.4 1.23 0.5

IP framework

Universidad de Valladolid Uni. de Santiago de Compostela

• UVA policy and regulations (1997) establish the procedure and benefits distribution.

• OTRI promotes and manages IPR (only licensing)

• University Science Park and an incubator opened in 2007

• USC policy and regulations (1989) establish the procedure and benefits distribution.

• OTRI promotes and manages IPR(licensing, and spin-out formation, NO support for student start-ups)

• incubator UNINOVA was created in 1999

• a science park opened with its own incubator in 2008

• In 2009 Campusvida started.

Approach to generating and handling disclosures

Universidad de Valladolid Uni. de Santiago de Compostela • The academics disclose inventions

to Pro Vice-Chancellor for Research by means of a technical report.

• OTRI manages IP protection

• OTRI manages the IP valorisation process and negotiations of license contracts.

• OTRI has launched active IP policy in 2007 and by 2010 developed an integral system to manage IPR

• Royalty sharing schemeInventors: 60%Their department: 10-17%University: 30-33%

• The academic disclose inventions to the OTRI

• OTRI manages IP protection

• OTRI manages the IP valorisation process and negotiations of license contracts.

• OTRI coordinates IP valorisation during spin off creation

• Royalty sharing schemeInventors: 60%Their department: 20%University: 20%

Approach to generating disclosures

Universidad de Valladolid Uni. de Santiago de Compostela

UVA has remained a traditional university.

▫ The core is suspicious of entrepreneurial activities due to the previous loss of academic staff.

▫ An entrepreneurial culture has not developed. IPR protection and license policy started in 2007 with good results.

The USC can be defined as a entrepreneurial university

▫ diversified funding base,

▫ active (and creative) policy to promote collaboration with enterprises, IPR, spin offs and start ups

▫ change the academic staff culture.

Some conclusions

• Thriving technology transfer activities in environments where a Bayh-Dole type legislative framework was not in place.

• This could suggest that the impact of regulatory frameworks may have a symbolic or signalling function.

• Case studies have pointed to within country differences in terms of patenting between university pairs

• Differences in patenting between pairs decrease/increase overtime and these patterns seem to be related to changes in local practice or the ‘cultural context’:

• This suggest the importance of local practice or the ‘cultural context’

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