Role of IP and Effective IP Assets Management

Triple- Helix: Government – Universities/Research

Institutions – SMEs

Tehran, Islamic Republic of Iran,

October 2016

Tomasz Liharewski

Program Officer

Department for Transition and Developed Countries

SMEs and Entrepreneurship Support Division

Introduction – Universities, SMEs and Tech Transfer

Research & Development

The Role of Governments

The Role of Universities

The Role of Industry

The Triple Helix

Public Private Partnerships (PPPs)

What we do as WIPO and how?

Private Sector collaboration with Universities

Example of a successful TTO

Final observations

Agenda

UNIVERSITY

Teaching

Research&D

Service

Knowledge Management

For the sake of knowledge

Openness Academic Freedom

Publications

SMEs/Industry

Profits

Knowledge management

For Profit

Confidentiality Limited disclosures

R&Development

Secret

Commercialization of new and useful

Technologies

Technology

Transfer

Source: Louis P. Berneman, 1999

Introduction: Universities, SMEs and Tech

Transfer

Research and Development 1/2

Research and Development are two different but sometimes related processes:

Source: University of Geneva/ Matthias Kuhn

Research: Curiosity Knowledge, Ideas (IP)

Development: Knowledge, Ideas (IP) Products & Processes

In Academic Institutions:

R&D

Output: Knowledge, Ideas, IP

In Commercial Organizations:

R&D Output: Products, Processes

R&D is not always the same 2/2

Source: University of Geneva/ Matthias Kuhn

But something is missing …

Government

Industry Science*

*Science = Universities, Research Centers, Tech Parks etc.

The role of Governments 1/2

To create a favorable Ecosystem

R&D funding allocation (pick strategic areas but in a

consensus setting with other actors)

IPR legislation up-to-date (incl. National/Regional IP

Strategies, IP Policies for Universities) to protect

intellectual property, accession to International IP

Systems

Fiscal laws

The role of Governments 2/2

To provide infrastructure & funds for:

Incubators

Technology/Science parks

Research Centers

Technology Transfer Offices (at the respective institution e.g.

Universities)

Technology Transfer Officers who encourage firms to work together with

universities and the government alike

Tailored Science and Technology Policies by encouraging local Universities

to work more closely with key firms in the region (via support to e.g. a

research center)

Promote incentives for SMEs and Universities/researchers/students alike

The “Valley of Death”

The “Valley of Death” is a metaphor used to describe the

gap between academic-based innovations and their

commercial application in the marketplace.

Swedish paradox of high R&D spending with an

apparently relatively low return on investment

Government

Industry Science

توانا بود هر که دانا بود

Ferdowsi

Mighty is he who has knowledge

An entrepreneurial university rests on four pillars:

Academic leadership able to formulate and implement a strategic

vision

Legal control over academic resources, especially intellectual

property stemming from research

Organization capacity to transfer technology through patenting,

licensing and incubation; and

An entrepreneurial ethos among administrators, faculty and

students

University mission: “Capitalization of knowledge”

The entrepreneurial University 1/3

The entrepreneurial University 2/3

Universities should have a considerable degree of

independence from the state and industry but also a

high degree of interaction with these spheres!

Research-problem definition comes from outside

sources as well as from within the academic world;

A full-fledged entrepreneurial university is a seamless

web of teaching, research and entrepreneurial activities,

with each supporting the other.

Professors-of-practice: recruit entrepreneurs to universities;

Promotion criteria to credit academic researchers by their patenting

activity;

Students and Professors alike must learn how to write a business

plan: Project brief, goals, prototypes and market test;

Incentives! Example Sweden: Ownership rights to Intellectual

Property are entirely owned by the Professor;

However, university “holding companies” have been established

to buy those rights and commercialize them.

Switzerland (Geneva University) royalties:

50% to the inventor, 25% faculty, 25% to the University.

The entrepreneurial University 3/3

Impact of Universities on the economy

Patents and licenses based on academic discoveries

contribute over 40 billion USD to the US economy;

< 300 firms established based directly upon academic

research in 1999;

Switzerland, Geneva University:

>150 licenses negotiated

>20 start-ups created

>600 industry research contracts signed

The development of

University – Industry relations 1/2

Contemporary University – Industry relations stem from three sources:

Basic research interests funded by research councils and similar

bodies;

An industrial project for which academic input is solicited; and

Joint formulation of research programs with joint basic and applied

goals and funding sources.

Encouraging the University to play a greater role in economic

development is a common policy trend.

First step toward an academic entrepreneurial ethos is

increased sensitivity to research with practical potential

and willingness to participate in the realization of this

potential;

The next step to an entrepreneurial academic ethos is

the realization that working on practical problems posed

by non-academics has great potential.

Moving relevant knowledge and technology

out of the university, bringing problems in!

The development of

University – Industry relations 2/2

University Technology Transfer Capabilities

Indicator for PPPs - University-Industry Co-publications

Source: Worldwide UIC map - subject area clustering,

Copyright © 2015 Centre for Science and Technology Studies, Leiden University, The

Netherlands - See more at: www.cwts.nl/research/chairs/science-innovation-studies/

Government

Industry Science

SMEs in the World Economy

Source: (1) ITC, SME Competitiveness Outlook 2015

“As reported in an OECD review

of SMEs’ management practices,

most innovative SMEs do not

use IPRs to protect their

intellectual assets, and, when

they do, they rely more on forms

of protection that are less

practical to attract investors, e.g.

trade secrets.” “While applying for or registering IP carries

costs and may not be optimal for all firms, it

is possible that many innovative SMEs still

fail to understand the potential of IP for

financing purposes.”

Main issues with IP and SMEs 1/3

Source: Enquiries Into Intellectual Property’s Economic Impact, OECD, 2015

“Once a firm develops intellectual property, it also must know

how to make best use of it, which requires certain levels of

skills and technology. OECD has found that with the

exception of high-tech firms, SMEs lack a coherent

intellectual property rights strategy and use trade secrets or

confidentiality agreements to a greater extent than formal

IPRs (OECD, 2011).”

Main issues with IP and SMEs 2/3

Source: ITC, SME Competitiveness Outlook 2015

Main issues with IP and SMEs 3/3

Intellectual Property

PATENT

TRADEMARK

GEOGRAPHICAL INDICATION

INDUSTRIAL DESIGN

COPYRIGHT

The use and management of IP assets has become key to coping with

market competition in the knowledge-based economy.

Intellectual Property Rights (IPRs) can facilitate the process of value

creation from IP assets.

The acquisition and management of IPRs are critical for firms to turn

their innovation potential and creativity into market value and

competitiveness.

This is particularly the case for new enterprises and SMEs that rely

heavily on exploiting intellectual capital in their business models.

Intellectual Assets and Innovation – The SME Dimension – OECD 2011

IP Management

The Open Innovation Model

Source: Prof. Henry W. Chesbrough, The Era of Open Innovation, MIT Sloan Management Review, 2003

Role of SMEs and Industry

Upgrading SMEs and renewing large firms by encouraging them to

move to science/research parks in order to collaborate closely with

research groups and the academia to:

develop products,

recruit, and

monitor discoveries with commercial potential.

Connecting the patent system to the intellectual output of the

academia.

Trend is to enter into strategic alliances between the private sector

and the academia and government.

Example Sweden: Saab development of medical devices in

Linköping.

Role of SMEs and Industry plus Start-ups

Renewal of existing firms, but …

… the dynamic of the Start-up process has become more

important to advancing technology.

Source: Prof. Solomon N. Darwin, Haas School of Business, University of California, Berkeley

Public Private Partnerships (PPPs)

Bayh-Dole Act, 1980, USA

IP stemming from publicly funded research belongs to

Research Institution receiving the funds

Strong increase in technology transfer activity and

impact, new way to work with companies

PPPs have intensified since 1980s

Source: University of Geneva/ Matthias Kuhn

Tax revenues

Employment

Employment

Tax revenues

Government

Industry Science

Cooperation for Science-based Economic Development

Start-up

Start-up

Start-up

Larger firms

SMEs

SMEs

What we do as WIPO and how?

What do we do?

Awareness-raising trainings and seminars

Country-specific projects (focus on their IP landscape, identify main local

needs)

All stakeholders must be involved in the process (researchers, students,

local firms). They must own their policy.

It is a dynamic process! The IIPP is a living document, adjusting over time

to the needs of a given institution to ensure a best fit.

Development of effective Institutional IP Policy

Pre-Assessment

o Needs Assessment Questionnaires (Government/Universities):

Institutional IP Policy Assessment

o Face to face meetings

Institutional IP Policy Development and Implementation

o Model IP Policy for Country

o Individual Institutional IP Policies (Method “10 Questions”)

o Group exercise – drafting of basic elements of Institutional IP Policy customized to specific conditions in the country and institutions.

Institutional IP Policy

= A document that sets the framework for the way that an institution intends

to deal with the ownership and management of its Intellectual Property.

Needs to contain statements about:

1. ownership of IP (incl. inventions and teaching materials)

2. the participation of students in research, as well as visiting researchers

3. Conflict of interest

4. commercialization (responsibilities, procedure, outcomes)

5. sharing of commercialization revenue

Who are the stakeholders?

The policy applies to:

- researchers (employees, students, visiting professors)

It is also addressed to:

- the management of the institution

- the potential business partners

- the government (public funding, national IP strategies, legislation).

Legal framework: Institutional IP Policies

No one model that fits all

Each institution has to develop its own policy

The “Ten Questions” – or essential elements of an

Institutional IP Policy

OWNERSHIP OF IP

PRIVATE FUNDING

INCENTIVES AND

REWARDS

COSTS OF

MAINTENANCE

RESPONSIBILITIES

GOVERNMENT

RIGHTS

IP MANAGEMENT

PROCEDURES

REVENUE

SHARING

COMMERCIALIZATION

OPTIONS

CONFLICT OF

INTEREST

A practical example from the Geneva

University – UNITEC (TTO)

Final observations

Nonlinear innovation model

S

T

R & D P

M Natural and Social

Field Space

IP education and training

Intellectual Property (IP) should be educated from different perspectives to the

different stakeholders within a university

Scientists and Technical Students: their focus is Research (less Development)

and these people are potential inventors and patent attorneys -> education and

awareness should focus on the technical aspects of IP such as prior art, novelty

and inventive step

Law Students: they are potential IP lawyers or company attorneys -> education

should focus on the specific IP rights and all agreements related to IP (e.g.

licensing)

Business/economy Students: they are potential managers within an R&D

company -> education should focus on importance of IP in relation to business

strategy, value of IP

Technology Transfer Officers: they should be trained properly in all aspects of

the above

Technology Transfer Officers should work closely with the scientists and try to gain their

trust by showing their added value. This is the only way to success.

Timothy Noah

Thank you!