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PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

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Page 1: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

PANEL 3B

Pirated Goods, National IPR Regimes, and Competition Policy

Concerns

Page 2: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

Supporting University Spin-Offs via IPR policies: from Ideas to Profits

Patrick Farrant

KNOWLEDGE ECONOMY KNOWLEDGE ECONOMY FORUM VIFORUM VI

Page 3: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

Why ideas matter…

=?

Page 4: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

Ideas are different

“If you have an apple and I have an apple

and we exchange apples, then you and I

will still have one apple.

But if you have an idea and I have an idea

and we exchange these ideas, then each

of us will have two ideas.”

George Bernard Shaw

Page 5: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

What is Intellectual Property?

“The rights of the creator in the product of his

or her creative intellect. These rights

confer on the creator (or the owner) the

exclusive right to use that product or to

permit someone else to use it.”

…Intellectual Property protects ideas

Page 6: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

IP Assets

• Registered Rights– patents– trade marks– registered designs– domain names

• Unregistered Rights– trade marks– know how/confidential information– design right– database rights– copyright

Page 7: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

Why have IP?

• Incentive function: rewards inventiveness (monopoly

rights are granted)

• Transactional function: allow intangibles to be

exchanged

• Disclosure function: an instrument for the dissemination

of knowledge (for the public good)

• Signalling function: indication of innovation so as to

enable capital to be raised

• Inherent trade off between the rights and the

consequences of the monopoly: it is a balance

• But not without controversy:– Ethics, freedom to research, TRIPS issues

Page 8: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

Science

LawBusiness

IP

IP in context

The output of a synergistic interaction…

Page 9: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

Increasing importance of IP

“In today's knowledge economy , IP has never been

more important for securing … prosperity... It is

estimated that 70 per cent of a typical company’s

value lies in its intangible assets…and the number

of patent applications have more than doubled at

the EPO in the last ten years”

The Gowers Review of Intellectual Property, 2006

Page 10: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

Universities as engine rooms

• Universities and research institutes:– carry out basic research– educate– AND are engine rooms for great technology

• DNA sequencing, computer memory, web search

all came from universities

• Challenge: how to turn great technology into

successful business

• Stanford spin-outs include Google and Sun

Microsystems!

Page 11: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

UK University Spin-outs

590 UK university spin-outs, representing 12% of UK venture capital finance

Page 12: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

What if you get it wrong?

• DNA structure, DNA sequencing, mAb production

came from UK universities…but the economic

benefits mainly generated in the US

• Why: – Failure to recognise the potential?– Philanthropy?– No entrepreneurial culture?– No IP policy?

Page 13: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

University Technology Transfer Offices

Page 14: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

Models for technology transfer

• You will hear about Cambridge and Imperial

• Models typically fall into:– Publicly, or separately owned company– Joint venture – Wholly owned company– Department within a University– Team within a Department

• Whatever the model, investment experience is

critical - Library House analysis show a gain of

over 50% in technology transfer efficiency if staff

have investment experience

Page 15: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

Investment experience uplift

Page 16: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

Case Study: Babraham Institute

• Injection of £1 million investment from Avlar BioVentures

Fund II LLP to form and fund new early-stage life sciences

companies associated with the Babraham Research Campus

• 10-year pipeline agreement with the Babraham Institute

giving it the right to form companies around intellectual

property created at the Institute

• Around 330 staff work at the Institute Babraham is ranked

#4 in the UK by citation in its areas of research specialism

• 41 companies have been associated with the Babraham

Research Campus since 1998 and these companies have

raised in excess of £150m investment.

Page 17: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

Making it happen: a lawyers view

• Bring together:– The ideas (IP)– The people (founder scientists and managers)– The opportunity (the business plan)– The capital (the investors)

• Put it all into a vehicle: the spin-out company

• Documents:– IP assignment, tax structuring, employment

contracts, shareholders agreement, share options,….

Page 18: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

IP ownership: a key issue

• NO ONE will invest (or licence-in) unless:– There is IP– It is good IP (broad scope)– Clarity as to who owns the IP– Can be distinguished from competitors IP

• Farrant’s law based on involvement in 20 plus

spin-outs over past 5 or so years!

• Predicted that to get a new drug onto the market in

2010 will require $2 billion investment; justifying

that investment requires certainty over the IP

monopoly, so to ensure a proper return

Page 19: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

To get from ideas to profit you need

• Strong IP system (national)

• Strong IP policies (university)

• Culture of commercialisation

• Experienced technology transfer professionals

• Clear IP ownership

….and of course a world beating idea!

Page 20: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

Thank you

Taylor Vinters

Merlin Place

Milton Road

Cambridge

CB4 0DP

[email protected]

+44 1223 225181

Page 21: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

21

Cambridge Enterprise Limited

An overview

April 2007

www.enterprise.cam.ac.uk

Page 22: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

22

University of Cambridge

University established in 1209

Students: 16,500 (11,600 u/c, 5,000 p/c)

20% from overseas representing 100 countries

Over 100 departments, faculties and schools

World Class Ranking (Shanghai 2005)

1. Harvard

2. Cambridge

3. Stanford

4. Berkeley

5. MIT

6. Caltech

7. Columbia

8. Princeton

9. Chicago

10.Oxford

Page 23: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

23

Data for 2005/6

University research funding

Total £295.5 million

Page 24: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

24

The Cambridge Phenomenon

• University people and ideas are at the core of many new technology ventures

• Over 1,000 innovation based companies– >500 in IT and >200 in the Life Sciences, the most rapidly expanding

sectors– Nicknamed ‘Silicon Fen’– 8% of all European venture capital invested in Cambridge

(Library House: first half of 2004)

• University organisations have helped develop the infrastructure of the ‘cluster’– Trinity College: Cambridge Science Park– St. John’s Innovation Centre– Peterhouse Technology Park

Page 25: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

25

Teaching and researchIntellectual

property

RSD Partnership Group

Cambridge Enterprise

Large companies

SMEs

Embedded research labs and Licensing

research communities Consultancy

Support for technology transfer

Page 26: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

26

Existing business

Form a business

Inventions

Software

Materials

Patenting

&

Marketing

Commercial Agreements

3 months

DueDiligence

&

Revenue Distribution

6 – 24 months

6 months – 20 years

Baseline - Selected Technology Transfer Metrics for 2005/6

152 annual disclosures 800 cases under mgmt

59 new patent applications350 patent familiesUnder mgmt

61 agreements, (4 spinouts)243 agreements under mgmt (54 spinouts

£3.3 million

Page 27: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

27

Baseline

• For fiscal year 05/06:– 61 commercialisation contracts closed with new and

existing companies to commercialise University of Cambridge innovations.

– £6.2 million was generated in consultancy and technology transfer

– £5.3 million was distributed to stakeholders (academics and departments).

– £1.6 million in seed fund realisations (most of which is available for reinvestment per evergreen structure)

– 25 FTEs and costs of operations/personnel covered by net revenues, grants and HEIF funding

Page 28: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

28

Baseline - assets under management

• Three overlapping portfolios– Licensing contracts and corresponding

revenue streams (250+)– Consultancy contracts with corresponding

revenue streams (150+)– Equity holdings obtained in consideration of

license, equity investment or non-financial support (60+)

Page 29: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

29

Recent relevant policy and organisational milestones

Intellectual Property – as of December 2005• The University has the initial right to apply for patents arising from

work of staff and students of the University • Cambridge Enterprise reviews inventions for patenting within 30

days – or longer if mutually agreed• Copyright in software belongs to academics

Organisational Structure – as of December 2006• Cambridge Enterprise is a Limited Company• The University of Cambridge is the shareholder

Page 30: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

30

Structure and GovernanceCambridge Enterprise Relationship to

University of Cambridge Committee Structure

Regent House

CouncilGeneral

Board

EducationResearch

PolicyFinance

CommitteePlanning & Resources

BuildingsCouncils of

Schools

Cambridge Enterprise Ltd

Board of DirectorsInterfaces Here

Cambridge Enterprise Ltd

Chief Executive Interfaces Here

as a member RPC

Page 31: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

31

Markets

• The focus of the plan are the internal and external markets CE must understand and address:

– The primary internal customers are University of Cambridge academics and also include:

• Academics and Students• Administration (VC, Pro-VC, Registrary, Financial Director)• Departments and Schools• Colleges• Units with overlapping interests (RSD, Communications, Development)• Governing bodies

– The primary external customers are buyers of IP or licensees but also include:

• Companies interested in IP• Investors interested in University affiliated companies and entrepreneurs• Organisations with relationships with the above such as Consultancies• Professional advisors (fund raisers, banks, law firms, accountants• Service providers such as incubators• Government and other granting agencies

Page 32: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

32

Principles

1. Accept cases into the portfolio with the strongest potential to make a significant positive impact and using commercial channels is the most reasonable means to bring the idea forward.

2. Take the course which supports commercialisation of the technology.

3. Work effectively with the inventor(s) to support their aspirations, manage conflicts and encourage synergy with the mission of the university.

4. Find the best partner (licensee or start-up senior management and investors) to take the idea forward.

5. Negotiate fair and reasonable terms which reflect the contribution of the assets and expertise being transferred.

6. Close lots of good deals.

7. Look after the deals once they are closed.

Page 33: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

33

9 points to consider in licensing university technology

1. Universities should reserve the right to practice licensed inventions and allow other non-profit and governmental organisations to do so.

2. Exclusive licenses should be structured in a manner that encourages technology development and use.

3. Strive to minimize the licensing of future improvements.4. Universities to anticipate and help manage technology transfer

related conflicts of interest.5. Ensure broad access to research tools.6. Enforcement action should be carefully considered.7. Be mindful of export regulations.8. Be mindful of the implications of working with patent aggregators.9. Consider including provisions that address unmet needs, such as

those of neglected patient populations or geographic areas, giving particular attention to improved therapeutics, diagnostics and agriculture technologies for the developing world.

Page 34: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

34

Closing thoughts

• The environment for our working grows increasing complex. These complexities are: cultural, political, legal, financial, operational, technical and interpersonal.

• Working well at the interface of for-profit and not-for-profit systems is one of the keys capturing value from innovation. Both systems work well: for-profit system and the academic innovation machine. If you compromise either one delivering innovation to the public isn’t sustainable. In order to work at this interface it’s important to understand and respect both machines.

• One of major challenges in working at this interface is managing multiple missions. That is we are, as a university, engaged in commercialising certain research results for the purpose of: a better world, a more robust economy, service and support to academics and students, building industry relationships, and revenue generation.

• Capturing a fair return on our intellectual property assets is not only and responsibility, it is irresponsible not to do this.

• Accordingly, a principle centred approach is more important than ever. And, innovation is more important than ever: innovation doesn’t just need to occur in the laboratory, it needs to occur in policy, legal, financial and business arenas as well.

Page 35: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

35

A selection of technology companies formed by University of Cambridge staff and students

-

Cambridge Positioning Systems Ltd

High accuracy mobile location solutions

www.cursorsystem.com

October 1997

Cambridge Display Technology Inc

Application of light emitting polymers

www.cdtltd.co.uk

July 1992

Granta Design Limited

Software for engineering materials IT

www.grantadesign.com

April 1994

BlueGnome Ltd

Statistical modelling software for drug -

discovery.

www.cambridgebluegnome.com

October 2001

Cambridge Flow Solutions Ltd

Consultancy and provider of CFD software

www.cambridgeflowsolutions.com

February 1999

ZinWave Ltd

Unified wireless infrastructure

www.zinwave.com

November 2002

-

Metalysis Ltd

Generic Electrolytic Processes

www.metalysis.com

October 2001

Hypertag Ltd

Wireless Information Access

www.hypertag.com

December 2003

Plastic Logic Ltd

Development of Plastic Semiconductors

www.plasticlogic.com

November 2000

-

Cambridge Semiconductor Ltd

Power Electronics

www.camsemi.com

July 2000

CEDAR Audio Limited

Signal Processing

www.cedaraudio.com

February 1989

Genapta Ltd

Next generation bio photonics

www.genapta.com

July 2001

Page 36: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

36

Cambridge Biotechnology Ltd

Neuroscience drug target and discovery

www.camb-biotech.com

June 2001

Biotica Technology Ltd

bioticaTECHNOLOGY LIMITED

bioticaTECHNOLOGY LIMITED

Therapeutic polyketides

www.biotica.co.uk

April 1997

De Novo Pharmaceuticals

Ltd

In Silico drug design

www.denovopharma.com

April 1999

Astex Technology Ltd

Fragment-based drug discovery

www.astex-technology.com

December 1999

Co-founded with University Staff

KuDOS Pharmaceuticals Ltd

DNA repair inhibitors and other small molecule anticancers

www.kudospharma.co.uk

December 1997

A Selection of Biotechnology companies formed by University of Cambridge staff and students

Cambridge Biotransforms Ltd

Bio-organic chemical transformations

March 1997

Diagnostics for the Real

World Ltd

Diagnostics f or the Real World Ltd

Diagnostics for third world countries

April 2003

Daniolabs Ltd

Phenotype driven drug discovery

www.daniolabs.com

July 2002

Solexa Ltd

The analysis of DNA

www.solexa.co.uk

September 1998

Paradigm Therapeutics Ltd

Novel drug targets

www.paradigm-therapeutics.co.uk

June 1998

24/05/2004 © Cambridge Enterprise, 2nd Floor, 16 Mill Lane, Cambridge, CB2 1SB. Phone: +44 (0) 1223 760339. Fax: +44 (0) 1223 332988. E-mail: [email protected]

Chroma Therapeutics Ltd

Novel anti-cancer medicines

September 2001

Akubio Ltd

Acoustic Detection Technology

www.akubio.com

August 2001

Page 37: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

37

for additional information

• www.autm.net

• www.univo.org.uk

• www.praxiscourses.org.uk

Page 38: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

38

Cambridge Enterprise LimitedUniversity of Cambridge10 Trumpington Street

CambridgeCB2 1QA

www.enterprise.cam.ac.uk

Tel: +44 (0) 1223 760339Fax: +44 (0) 1223 764888

Page 39: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

Valuing Innovation

Imperial Innovations

Valuing Innovation

Integrating Innovation

Page 40: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

© Imperial Innovations™Valuing Innovation

Imperial College London

Page 41: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

© Imperial Innovations™Valuing Innovation

Business Mission

Customers

Marketing

R & D

Products & Services

Sales

Procurement,Supply & Back-Office

Profit

Investment

Shareholders

Page 42: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

© Imperial Innovations™Valuing Innovation

The University Mission

University

Technology Transfer

Teaching Research

Page 43: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

© Imperial Innovations™Valuing Innovation

Business & University Interaction

Customers

Marketing

R & D

Products & Services

Sales

Procurement,Supply & Back-Office

Profit

Investment

ShareholdersUniversity

Technology Transfer

Spin-out

Licence

•Management•Capital•Incubation

Page 44: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

© Imperial Innovations™Valuing Innovation

Imperial College London Science, medicine and technology based institution Rated 9th university in the world research rankings

(THES) Top ranked in the UK in terms of research

Over 3,000 staff conducting research14 Nobel laureates and 2 Field medallists

~ £248m annual research income (31st July 2005) ~£20m annual research income from industry Imperial College’s key strengths

Focused on industrial problemsMulti-disciplinary approach

Page 45: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

© Imperial Innovations™Valuing Innovation

Imperial Innovations

1987 – Technology transfer office set up to exploit Imperial’s IP

1997 – DTI Biotech –exploitation and incubation programme

2002 – UCSF plus financing deals with Nikko and FF&P provide funds for spin-outs

2004 – Contract for Carbon Trust Incubation programme

2005 – Partial private placement of shares provide funds for investment

2005 – Contract for WRAP incubation programme

2006 – IPO raised further £26m for expansion

and investment

2006 – Opened BioIncubator

2006 – Commercialisation Services Contract

BAE Systems

Page 46: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

© Imperial Innovations™Valuing Innovation

From the Lab to Market

InventorTechnology Transfer Market ResearchIndustry Experts

Field Trial SalesTechnologyMarket/Application

Commercialisation RealisationRoyalties

Proof of ConceptDesign

Spin-out IncubationLicence Management

ProductProduct

Champion

Page 47: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

© Imperial Innovations™Valuing Innovation

Organisation

Idea generation

•IP protection

•Proof of Concept

•Commercialisation decision

•Company concepts scoped

•Marketing/market research

•Licensing

•Company formation

•Board/management

•Incubation

•Investment ready

proposition

•Shareholder management

•Follow-on financings

•Strategic input

•Liquidity events

•Exits

Imperial College London

Imperial InnovationsIntegrated Model

Engineering & PhysicsTechnology Transfer

Medicine & Life SciencesTechnology Transfer

New Ventures

Investment Management

Engineering & Natural Sciences

Medical and Life Sciences

External Sources

Page 48: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

© Imperial Innovations™Valuing Innovation

Imperial Innovations

Track Record– 250 new ideas each year– 50 new patents filed each year

– 96 commercial IP deals in bioscience and engineering

– Licence revenue ~ £2m pa– Realisations ~ £1 -2 m pa plus large exits– 58 spin-outs

• 21 at incubation, 37 late stage Team of 41 people

Page 49: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

© Imperial Innovations™Valuing Innovation

Leveraging our Networks

Industry– Imperial’s research partners ABB, BAE Systems, Qinetiq,

Rolls Royce, BP, Shell and GSK Innovative programmes

– Shell Carbon Trust – £2m Low Carbon Seed Fund– Lilly Entrepreneur-in-Residence – Johnson & Johnson - Proof of concept

Academic– Panel of advisors and network experts

Investors– Network of investors, angels, VCs, corporate finance – Regular Spin-out forums

Entrepreneurs and Experienced Managers

Page 50: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

© Imperial Innovations™Valuing Innovation

Midaz Lasers

Developing world’s smallest, most efficient and highest quality laser Introduced range of industry customers, first laser tested commercially Founded by Professor Mike Damzen and Dr Ara Minassian Experienced management team introduced Proof of Concept funding £25k Seed funding round - £300k, of which£150k from Imperial Innovations Occupied BioIncubator space Sept 06 First product sold Oct 06

Page 51: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

© Imperial Innovations™Valuing Innovation

Thickness Monitoring of Pipes

Major international energy company seeking a low cost, widely deployable pipeline wall thickness monitor

Prof Peter Cawley, Imperial NDT group involved in an industry academia liaison group made initial connection

Imperial patented a simple waveguide technology for use with ultrasonic test methods

Negotiated a development and Commercialisation Agreement Currently halfway through development phase

Page 52: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

© Imperial Innovations™Valuing Innovation

Imperial Innovations

Intelligent BusinessSolutions

Technology Assessment& Commercialisation

Incubation &Investment

Integrated Business Interaction

Business

Understand Market/Technology Needs

Others Imperial College London

Create appropriate commercial deals to Transfer Technology

Source suitable technologies

Page 53: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

© Imperial Innovations™Valuing Innovation

Summary Operational Issues

University Technology Transfer is part of a New Product Development Process

Achieve critical mass of good quality IP Establish industrial networks and use them

to get market knowledge Collaborate with other partner organisations

to deliver new product solutions not just good IP

Understand how to build value

Page 54: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

© Imperial Innovations™Valuing Innovation

Summary Policy Issues

Technology Transfer is long-term, 5-8 years from lab to product sales

Continuity of resource is important Freedom for local decision-making on use

of resources Ensure resources add value-use metrics The role of venture capital IPR-Local institutional ownership preferred The relationship between Institution and

Technology Transfer Operation should be commercial not departmental

Page 55: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

Sixth Annual Knowledge Economy ForumSixth Annual Knowledge Economy ForumPanel 3BPanel 3B

Supporting University Spin-Offs via IPR PoliciesSupporting University Spin-Offs via IPR Policies

Cambridge19 April 2007

Pol van den BergenPrisma Technology Management

Page 56: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

Existing situationExisting situation

Valorisation: Process converting Research into sustainable commercial application=> Deficient process in Europe

European economy fails to promote new/successful innovative firms compared to USA

The current innovation policy is disjointed at the European level.

There is no collaboration between the key players in the European innovation policy.

Page 57: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

The European Paradox:The European Paradox:Knowledge Investment hardly pays off in new BusinessKnowledge Investment hardly pays off in new Business

In Holland: 40.000 start ups pa3 % “high” tech start up = 120070 % Internet related 30% = 40020% surviving after 3 years = 80

Out of those 80: 15 % come from Universities the rest comes from Larger Companies.15%= 12 pa. “sustainable” companies….

No Figures for Business Renewal.

Page 58: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

ValorValor

Development of an effective joint Development of an effective joint trans-national knowledge trans-national knowledge valorisation process and valorisation process and

coordinated innovation policycoordinated innovation policy

Start date: 1 October 2006Start date: 1 October 2006

Page 59: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

OSEO anvar

Pera

Dublin BIC

CDTIADER

ADI

VINNOVA

CCIAA

FFG

PTJNGI

JAPTI

EAS

IWT

TTGV

MATIMOP

VALOR

Consortium

Page 60: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

Strategic ObjectivesStrategic Objectives

To develop an effective and coherent coordination of EU policy

=> State of the art valorisation process (VP)

To increase valorisation programme efficiency by joint actions

combined good practices from shared experiences

analysis of national programmes and requirements

To support the innovation process through coordinated trans-national joint initiatives

=> enhance complementarity between regional/national and

European valorisation programmes

To create a network of programme managers for sustained, long-term co-operation between programmes

Page 61: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

The Policy Problem The Policy Problem

ResearchGrowing company

Valorisation/Commercialization Process

• Lack of financing• Lack of competence• Lack of ”Business

creation arenas”• Weak incentives• Lack of qualification

systems• Lack of Common IPR

Rules

Page 62: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

Valorisation comprises different phasesValorisation comprises different phases

Research Valorisation Business

“Identification” “Breeding” “Launch”Example of phases within Valorisation

Example of phases within Valorisation

• The challenges are different in each phase

• Every phase can go on for a short or long period of time

• Each phase requires its own financing instruments, conditions and processes

Page 63: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

The Starting Point for the Valorisation The Starting Point for the Valorisation ProcessProcess

Research Valorisation Business

Research based application ideas with interesting commercial potential supported by R&D-results with unique properties or

functionalities which have a potential to support long-term competitiveness within one or several application areas

Research based application ideas with interesting commercial potential supported by R&D-results with unique properties or

functionalities which have a potential to support long-term competitiveness within one or several application areas

Page 64: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

Valorisation – transfer of research results Valorisation – transfer of research results to an established companyto an established company

Qualification andVerification

Knowledge and technology

transfer

Research Business Renewal

Page 65: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

Knowledge and Technology TransferKnowledge and Technology Transfer

Qualification andVerification

Knowledge and technology

transferBusiness Renewal

Transferable IPR

Licensee/Buyer

Technology Transfer

Verified Business Support

Transfer of research results performed• Knowledge transfer• Technology transfer• Research result integrated in company

operations (R&D, production, business development)

Transfer of research results performed• Knowledge transfer• Technology transfer• Research result integrated in company

operations (R&D, production, business development)

Page 66: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

Universities might be the Cork on the Bottle…….The Universities might be the Cork on the Bottle…….The State of Mind is important..State of Mind is important..

In the US a Scientist has three personalities. He/She is at the same Time:

A ScientistAn Expert in Finance An Entrepreneur

In Europe a Scientist is used to a more or less “safe Environment”, He still is a “Researcher made for Research”Many Times Universities are the Bottle Neck in the Process, defining their Sole Reason of Being in :

ResearchEducation

and not in“Valorisation”, or: “Commercialization of Knowledge”.

But the Climate is changing; Pressure on Universities to take a more business like Approach in Knowledge and Technology Transfer is increasing; they have to make money too….Bit by bit the Professor and his Students become Entrepreneurs be it that the Transfer still is sailing I between Scylla and Charybdis…

Page 67: PANEL 3B Pirated Goods, National IPR Regimes, and Competition Policy Concerns

IPR …Universities’ Approach in case of IPR …Universities’ Approach in case of spin-offs is crucial…spin-offs is crucial…

Almost all Countries have a nice Patent Law and I will not dig deeper in the European patent Law History…Unfortunately in Europe in many Countries there is no clear legislation/Regulation to the further distribution of Rights, this in contradiction to the US where since 1980 the Bayh-Dohl Act is applied.

Legally in most of the countries Universities are the Owners of Inventions made by their Employees.

• As a Consequence they are free to sell or license out Anything any Way they like…

• Many times they use their own RegimesSo in Holland a “Code of Conduct” is under discussion for several years already

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IPR in the case of University Spin-Offs.. the ideal Code of IPR in the case of University Spin-Offs.. the ideal Code of Conduct in case of Patent TransferConduct in case of Patent Transfer

Pay back of CostsPay back of Costs

Universities have invested heavily to get and maintain patents; estimation for a worldwide patent = € 100.000Delft University spent for Maintenance € 500.000 pa in 2004 for all Patents.

These patenting Costs should be paid back; the University should by all Means get a Royalty free License for Research and Education PurposesTransfer Costs should be paid backRoyalties can be :

A Percentage of the Turn Over / or something like : “The Higher the Turn Over, the lower the Percentage”A specific Sum per Product.

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Patent TransferPatent Transfer

The Spin-Off/Start Up pays a Lump Sum for Rights gainedOr Royalty Rights are applied: e.g. the Higher the Turn Over the Lower the Percentage

Agreement that the Amount paid by the Start Up will be spent for Research on the specific Issue by the University

Stock Appreciation Rights [SAR] : claim equals a percentage of Shares issued; no Power no Liabilities

In all Cases the Spin-Off should have the Duty to commercialize…

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Licensing…Licensing…

Exclusivity for the Spin-Off is vitalThe Agreement should be clear and well definedTerritory should be definedTime Period should be clear

A Lump Sum/Entrance Fee can be paidRoyalties can be asked for by the UniversityMinimum Turnover defined: Loss of Exclusivity as Penalty

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Thomas Jefferson…Thomas Jefferson…

QuoteThat Ideas should freely spread from One to Another over the

Globe, for the moral and mutual Instruction of Man and Improvement of his Condition, seems to have peculiarly and benevolently designed by Nature, when She made them, like Fire, expansible over all Space, without lessening their Density at any Point, and like the Air in which we breathe, move and have our physical being, incapable of Confinement or exclusive Appropriation. Inventions then cannot, in Nature be a Subject of Property.

Unquote

Third US president: Ideals of Republicanism 1776.

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Bayh DohlBayh Dohl

In the US in 1980 Measures such as the Bayh-Dohl Act were introduced. Under Bayh-Dohl “Grantees”/Contractors in Government R&D Contracts get the Ownership of these patents. But if you don’t use, you lose it….The Aim was enhancing Public’s Access to technology funded with Government Money.As a Consequence many universities established Technology licensing Offices, which accelerated the Tie-ups between Industry and Academia. This Arrangement gave Birth to many new Industries, including Information Technology and Bio-technology. The Collaboration also served as a Catalyst for the Recovery of the US Economy during the 1990s.

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An Advice might be…An Advice might be…

A wise Advice might be :Do not make the same mistakes as we didDo not assume that a nice Patent Law is enoughDo not just leave it, seek Things out, the one Way or the Other….Give the Spin offs Security; make your Approach reliable and once a Regime is established keep it and maintain itDo not think a Patent is the solution to all ProblemsIt is expensive to register, it is difficult to scout infringements and its is even more expensive to defend your RightsIn Micro Electronics some Times you even should abstain, in Medicine you cannot do without

In the InnoNet Valor eventually we will be able to help; you might even join in.Thank You.