Commercial Exploitation of Inventions at the Technische Universität München Centre for Research Support and Technology Transfer - SFT WIPO UNIVERSITY RESEARCH

Commercial Exploitation of InventionsCommercial Exploitation of Inventionsat the Technische Universität Münchenat the Technische Universität München

Centre for Research SupportCentre for Research Supportand Technology Transfer - SFTand Technology Transfer - SFT

WIPO UNIVERSITY RESEARCH AND

DEVELOPMENT INITIATIVE: Subregional Workshop on

Searching of IP Information for University

IP Coordinators Vilnius, Lithuania

May 18 and 19, 2006

Dr. Alexandros PapaderosInventor Consultant

Technische Universität München

OutlineOutline

Short presentation of the Technische Universität München

Knowledge and Technology Transfer from Universities

Implementation of the Bayern Patent Project at the TUM

3 success stories from the TUM


© Dr. Alexandros Papaderos, Inventor Consultant, Technische Universität München

The Technische Universität MünchenThe Technische Universität München

founded in 1868 by King Ludwig II. as “Polytechnische Schule

München”, since 1970: University

highly-modern research and teaching institution offering12 faculties as well as numerous scientific, educational and administrative facilities

four leaved model: Natural Sciences, Engineering, Life Sciences, Medical Science

interdisciplinary collaboration and innovation-promoting processes of a future-oriented approach

Nobel Prize Laureates, famous scientists and inventors including: Rudolf Diesel, Carl von Linde, Willy Messerschmitt, Emil Erlenmeyer, Hans Fischer, Robert Huber


© Dipl.-Biol. Alexandros Papaderos, Inventor Consultant, Technische Universität München

The Technische Universität MünchenThe Technische Universität München

Summer semester 2006 students: ca. 20,000, 30% female freshmen: 4,800 graduates: 2,800 students from abroad: ca. 20% 260 chairs, 440 professors 8,500 staff (academic andnon-academic staff



total budget 2004: € 678.3 million research funding: € 137.5 million fundraising: € 81 million (endowed funds since 1998)

for further information, please see also: www.tum.de

Knowledge and Technology TransferKnowledge and Technology Transfer

Knowledge and Technology TransferKnowledge and Technology Transfer is the connecting link between

basic and applied research and between applied research and

development

commercial utilization and economic exploitation of IPR, esp.

patents, are one aspect of Knowledge and Technology Transfer

between science and economy

licensing and sale of patents have a long tradition in the Anglo-

Saxon countries (Research Corporation founded 1912 in the USA) in other European countries (including Germany) the active

commercial utilization and economic exploitation of IPR is now

evolving



Technology Transfer from UniversitiesTechnology Transfer from Universities

IPR:IPR: licensing of IPR to companies (IPR remains the university) sale and assignment of IPR to companies (IPR is assigned to the company) provision of IPR to university start-up companies:

exclusive licensing (IPR remains with the university) sale of IPR (IPR is assigned to the company) sale or exclusive licensing of IPR; university obtains in return shares of the company (IPR is assigned to the company)



contract research and services offered by the universities

(in most cases IPR is assigned to the contractor)



Technology Transfer through IPRTechnology Transfer through IPRUSA/GermanyUSA/Germany

USA in 1980: ~ 250 patent applications (1980: Bayh-Dole Act) in 1991: ~ 1,600 patent applications in 2003: ~ 8,000 patent applications

Germany before 2002: negligible amount of university patent applications 2002: abolition of the “Professor’s Privilege” in 2004 519 patent applications519 patent applications in the name of German

universities, including technical colleges



AUTM Licensing Survey: Fiscal Year 2004 (approx. 195 institutions)

16,87116,871 inventions reported (82% potentially patentable inventions) 10,51710,517 new patents filed, 3,6803,680 patents issued 462462 new companies (in 52% of the cases institutions received an

equity interest) license income: 1.3851.385 billion US-$

Technology Transfer through IPRTechnology Transfer through IPRBenchmarking USABenchmarking USA

since 1980:since 1980: a total of more than 4,5434,543 companies, 2,671 still operating since 1998: 3,1143,114 new products on the market

legal framework (“Professor’s Privilege”)

scientists in Germany focus more on publications

lack of interest from the inventors and universities for the patent system

lack of resources for the financing of patent applications, etc.

lack of infrastructure for patenting and commercial exploitation

The situation in Germany before the year 2002:The situation in Germany before the year 2002:



Technology Transfer through IPRTechnology Transfer through IPR

Commercial ExploitationCommercial Exploitationof University Inventions in Bavariaof University Inventions in Bavaria



Fraunhofer Patent CenterFraunhofer Patent Centerfor the German Researchfor the German Research

BavariaBavaria High-TechHigh-TechInitiativeInitiative

Bavarian UniversitiesBavarian Universitiesand Technical Collegesand Technical Colleges

Starting pointsStarting pointsof the Bayern Patent Projectof the Bayern Patent Project

raise awareness for the importance of patents

promote and intensify the patent culture

provide funds for patenting and commercialising of inventions

provide infrastructure:

Inventor Consultants

Patent-

Licensing Bureau

at the Fraunhofer Patent Centre for the German Research (FhG-PST)

e.g. at the TUM

Centre for Research PromotionCentre for Research Promotionand Technology Transfer - SFTand Technology Transfer - SFT


Mission of the Inventor Consultant at the TUMMission of the Inventor Consultant at the TUM

e.g.: consulting and support for the inventors contact with high inventive potential research groups of the TUM support for the identification of patentable research results organisation of information events, conferences, workshops etc. enforce the legal frame mission is complemented by the Bayern Patent Project

the Inventor Consultant is the junction between inventors,TUM administration, Technology Transfer Agency (Bayern Patent Project),industry etc.



Mission of the Patent BureauMission of the Patent Bureau



evaluation of inventions (patentability, technical feasibility, economic exploitability)

recommendation to the TUM whether to claim or release the invention

instructing patent attorneys, supervising patent applications and patenting process

co-ordination regarding patenting strategy with the TUM according to business and market specific criteria (what kind of protection to apply for, in which countries, maintain applications etc.)

initiation of licensing activities by the Licensing Bureau

central database for patented technologies

Mission of the Licensing BureauMission of the Licensing Bureau



commercial exploitation of inventions covered by patent applications

co-ordination of the licensing strategy in co-operation with the TUM

drafting of technology offers search for potential licensing partners presentation of the invention at companies negotiation of the conditions for the licensing agreement between TUM and industry partner

supervision of licensing agreements balancing accounts of licensing revenues

University employee decision, if and when to disclose the invention in case of disclosure, obligation to:

report the invention to the university

indicate the disclosure date (normally two months before disclosure)

University decision whether to claim the invention or release it (4 months) in the case of claiming obligation to file a patent application in the case of realization of profits obligation to compensate the

inventor

Special provisions for university employeesSpecial provisions for university employeesin the German Employees’ Inventions Actin the German Employees’ Inventions Act



Workflow in case of a inventionWorkflow in case of a invention

inventor contacts the Inventor Consultant for (legal) advice inventor reports his invention to the TUM Bayern Patent Project evaluates the invention and gives a

recommendation TUM decides either to claim the invention or to release the invention to

the employee in the case of claiming: TUM files a patent application (mostly in

Germany) parallel to patenting the invention: commercial exploitation begins



Sharing of revenues and costsSharing of revenues and costs

Centre for Research PromotionCentre for Research Promotionand Technology Transfer - SFTand Technology Transfer - SFT


Inventor 30% 0% !!!

Revenues Costs

TUM 45%1 0%

BayernPatent 25% 100% !!!

1 : 50% for the academic group/institute/department

Statistical Data from the TUMStatistical Data from the TUM



*: 09/2000-12/2000

2000* 2001 2002 2003 2004 2005 2006 Total

First contacts 59 91 101 93 70 52 30 496

Consultations 138 213 236 218 175 130 75 1185

Reports of Inventions 40 54 87 123 132 116 50 602

Reports of Inventions (BPP) 8 43 66 93 85 73 40 408

Patent Applications 3 16 17 19 23 29 12 119

4

29%

102

Granted Patents

Percentage of Patent Applications

Average Number of Reports of Inventions per Year

*

*: 194 inventions are made within the framework of industry research funding projects and are assigned to contractor

Self assembling spider silks identification of a gene for the fabrication of nature-like spider silks transfer in bacterial cells, which produce spider silks

Example of a successfully commercialized IPR I:Example of a successfully commercialized IPR I:

Spider Silks: exceed the characteristics and properties of man-made materials superior mechanical properties such as strength, toughness etc.

Commercial applications: medical products (i.e. as non allergic material in wound-closure systems, artificial ligaments, tendons) textiles (i.e. protective clothing, parachutes, body armour, ropes, fishing nets) cosmetics leather and paper refinement



beer containing xanthohumol : XAN Wheat Beer and XAN Wellness Drink

Xanthohumol: Xanthohumol from hop can dispose free radicals due to its antioxidant nature and can thus contribute to keep the somatic cells healthy

Special brewing method (pending patent application):concentration of the natural active ingredient Xanthohumol is up to 15 times higher in the XAN Wheat Beer and up to 50 times higher in the alcohol-free XAN Wellness drink in comparison to usual wheat beers

Example of a successfully commercialized IPR II:Example of a successfully commercialized IPR II:



ANTICALINS® technology:

ANTICALINS® are engineered ligand-binding proteins with antibody-like functions therapeutic use in a variety of diseases, particularly in cancer and cardiovascular diseases technology invented in a large part at the TUM and developed at PIERIS Proteolab AG Cooperation and license agreement between TUM and PIERIS PIERIS was founded in January 2001 – after being awarded the first prize in the Munich Business Plan Contest 2000 Laboratories and offices are located at Freising-Weihenstephan, well situated in the neighbourhood of the TU Munich life science campus

Example of a successfully commercialized IPR III:Example of a successfully commercialized IPR III:



see also: www.pieris.biz

Key Factors for a successfulKey Factors for a successfulIP- and TT-managementIP- and TT-management

establishment of a systematic IP- and TT-management process

backup through the academic and administrative management in form of IP- and TT-guidelines

establishment of patent and licensing bureaus and use of all communication channels

information about possible IP-exploitation partners

further education of the staff members

professional contractual commitments for all IP- and TT-matters

soft factors: measures for establishing an IP-culture





AgreementsSupervision

Commercial Exploitation

ProtectionEvaluationOngoing Activities

close contact to researchers

continuous analyzing of the research activities

screening of patent literature

IP-culture and infrastructure

identification and evaluation of the market relevance of the invention

evaluation of protectability

check-up with existing patent portfolio

identification of exploitation strategies

patent application

defence against infringers

development of exploitation strategies, e.g. licensing, transfer, start-up etc.

implementa-tion of the exploitation strategies

revenue management

monitoring of license agreements

legal problems

Contact:Contact:

Dr. Alexandros PapaderosPatent- and Licensing BureauTechnische Universität MünchenArcisstraße 1980333 München

Tel.: +49 / 89 / 289-22611E-Mail: [email protected]: www.wimes.hr.tu-muenchen.de/erfinder.html

www.bayernpatent.de





Thank you for your attention! Thank you for your attention! Questions?Questions?

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Commercial Exploitation of Inventions at the Technische Universität München Centre for Research Support and Technology Transfer - SFT WIPO UNIVERSITY RESEARCH