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IP/PATENT TRANSACTION SYSTEMBETWEEN
R&D+ INSTITUTES
PROVIDING AT LEAST A BRIDGE BETWEEN US
SCOPE VISION: OPENING UP IP ?
IS THERE A DEMAND FOR MORE OPEN IP FROM R&D PARTNERS?
IP IN MOTIONDEVELOPMENTS IN IP MONETIZATION BUSINESS
Dr. ir. Vincent Ryckaert, European Patent AttorneyIMEC IP Business and Intelligence DirectorMr. Sigrid GilisAttorney at Law and IP Specialist
2© IMEC 2012
GOAL OF THE PRESENTATION
• renew and strengthen the interest • global picture – open innovation/IP monetization
• divergence between policy and field reality• adverse effects in the market
• issues to be decided to find the right entry point• motivate by showing IMEC interest in this
(contrary on the more theoretical analysis presented last time)• present R&D life cycle model to introduce terminology• short remark to theoretical studies on IP and game theory
• most profit for most IP by non-exclusive licensing
EPIP CONFERENCELEUVEN
OPENING UP IP ?IS THERE A DEMAND FOR MORE OPEN IP FROM R&D
PARTNERS?
IP IN MOTIONRECENT INSIGHT DEVELOPMENTS IN THE IMEC IP BUSINESS
Dr. ir. Vincent Ryckaert, European Patent AttorneyIMEC IP Business and Intelligence DirectorMr. Sigrid GilisAttorney at Law and IP Specialist
1984
▸ Established by state government of Flanders in Belgium
▸ Non-profit organization
▸ Initial investment: 62m€
▸ Initial staff: ~70
2011
▸ World-leading research in nanoelectronics
▸ Revenue 2010: 285 m€ (incl. 44 m€grant from Flanders government)
▸ Staff: ~1900 worldwide
▸ Worldwide collaboration >600 companies
A. INTRODUCTION OF IMEC 1984 – 2011
5© IMEC 2012
POSITION IN THE R&D LIFE CYCLE
Providing focus for universities and basic insight and solutions for industrial partners
UniversitiesLo
nger
te
rm, m
any
optio
ns
Shor
ter
term
, ap
plic
atio
nsTim
e fr
ame
Lower HigherR&D cost
Industry
Shared R&D Platforms
6© IMEC 2012
GLOBAL R&D PLATFORMS :…TO THIS:
Providing focus for universities and basic insight and solutions for industrial partners
UniversitiesLo
nger
te
rm, m
any
optio
ns
Shor
ter
term
, ap
plic
atio
nsTim
e fr
ame
Lower HigherR&D cost
Industry
Shared R&D Platforms
Shared R&D Platforms
Shared R&D Platforms
IMEC BUSINESS PARTNERS
The World’s Largest Industry Commitment to Semiconductor Research in Partnership
LamRESEARCH
8© IMEC 2012
KEY FEATURES OF IMEC IP POLICY
1. Avoiding IP blocking for our Partners2. Securing IP Rights for our Partners3. Enabling Publications
Tools: - Use of (selective) Patenting
- Carefully designed IP model
9© IMEC 2012
IMEC IP GROUND RULES
▸ Open multi-partner model ▸ Cost & IP sharing with all Partners▸ Fairness to ecosystem ▸ Non-exclusive “use and exploitation” rights (to make/have
made, sell, offer to sell) “semiconductor” products▸ Technology Transfer via Residents (creating Results jointly with
IMEC) ▸ Co-ownership without accounting (for such jointly created
Results)▸ Access to IMEC Background ▸ Access to Material & Equipment: Normal Use clause▸ Achieves non-blocking effect for the Partners
OPEN INNOVATION In-ward: Universities (PhD’s > 200 persons)In-ward: Industry (Suppliers – in-kind – equipment/materials/software/IP blocks)In-ward: Industry (Industrial Residents >300 persons)Outward: Industry
IMEC Industrial Affiliation ProgramsDevelopment on Demand Low volume prototypingTechnology TransferSpin-offIP monetization
Outward: Alliances
To be worked at: IP in – from Academia/Industry –in a structured manner
WHO IS DEMANDING MORE OPEN IP ?
Industrial partners- shift to later life cycle
Academia- focus on spin-off
Government- more KPIs
Internal- justified?
12© IMEC 2012
INDUSTRIAL PARTNERS – SHIFT TO LATER LIFE CYCLE
▸Governmental Funded - Fundamental Research: no industry
- Basic Research Funded projects: no industry
- Applied Research Projects: industry involvement and no industry financing
- Applied Research Projects: industry involvement and co-funding
▸Bilateral- Consortia, programs
- Bilateral R&D
- Development on Demand
- Low Volume Manufacturing
- Transfer and/or IP Licensing and/or Spin-off Creation
- IP Monetization
13© IMEC 2012
ACADEMIA– FOCUS ON SPIN-OFF▸Governmental Funded
- Fundamental Research: no industry
- Basic Research Funded projects: no industry
-----------------------------------------------------------------------------------------------
- Applied Research Projects: industry involvement and no industry financing
- Applied Research Projects: industry involvement and co-funding
▸Bilateral- Consortia, programs (cost sharing)
-----------------------------------------------------------------------------------------------
- Bilateral R&D
- Development on Demand
- Low Volume Manufacturing
- Transfer and/or IP Licensing and/or Spin-off Creation
- IP monetization
A B
14© IMEC 2012
GOVERNMENT – DEMANDS GROWTH OF PATENT PORTFOLIO
15© IMEC 2012
GOVERNMENT – DEMANDS GROWTH OF PATENT PORTFOLIO
• ~120 filings/year
16© IMEC 2012
INTERNAL REQUEST FOR OPENING UP IP?What is openness? (open innovation, open source, open access)
Openness: - trade secrets – hardly used- publishing “yes” (in combination with patents)- talking without NDA
• not an issue for selected info• over use of NDAs not requested by IP
- sharing of material “yes” – see standard evaluation agreements
Questions to ask:- is the info you are open about really yours (and only yours)?- any confidentiality restrictions? (hitting liabilities)?- what is the value proposition left for paying partners?
17© IMEC 2012
IMEC – MORE OPEN?
The wrong question? - ARE WE NOT THE NON-EXCLUSIVE CHAMPIONS ALREADY?
The wrong message!- MIGHT WE NOT BE HIT WITH LIABILITIES BECAUSE WE INTRODUCE
SLOPPINESS?
Can we decide on this?- WHAT DO OUR PARTNERS DICTATE?
• Industry NO
• Academia NO
• Government NO
• Internal YES – BUT DANGEROUS
ANYTHING TO GAIN? (or to loose – how are we perceived externally?)
18© IMEC 2012
CONCLUSIONS ON IMEC – OPEN
IMEC seems to be known for its NON-EXCLUSIVE IP MODEL IN INDUSTRY (for some industry partners too much)
on UNIVERSITY SIDE, the IMEC MODEL OF NON-EXCLUSIVE DEAL MAKING is NOT HEAVILY APPRECIATED
IMEC is engaging in the more competitive field and models for extracting IP VALUE – OPENNESS (if wrongly perceived) are CONTRADICTORY thereto
IMEC is promoting NON-BLOCKING approaches for the IP market (policy-wise, PATENT POOLS) - but FULL OPENNESS seems RATHER NEGATIVE PERCIEVED in such context
IMEC also promoted that UNREASONABLE IP DILUTION in the early state is rather HAMPERING technology entry in the market and defined lots of intermediate approaches
so who is asking this? NOT OUR (paying) PARTNERS IN INDUSTRY, NOT OUR UNIVERSITY NETWORK, INTERNAL ONLY, WHY?
19© IMEC 2012
IP IN MOTION - IP MONETIZATION Sale of `old’ patents – financial demand
some successesnew offerings outNew offerings in preparation
Considerations1. Securing our eco-system and risk management – cold feet- value versus risks/liabilities// parties to consider - which intermediaries to select //cost versus risks/liabilities
2. Business practice policy --- still struggling with- avoiding submarine type approach - Pre-offering to IMEC partners?
3. Why is IP market booming? Failure of Early Stage IP market
• Overemphasize on spin-off creation• Lack of trust between R&D players
20© IMEC 2012
IP IN MOTION - IP BUSINESS IN EU R&D SCENE
1. None
2. BG licensing (exclusions?)
3. Joint IP – minor
4. Joint IP – highly debated in CA negotiations▸ Emphasize on mutual blocking
21© IMEC 2012
IP PROPOSALS FOR TTO CIRCLE1. Create IP business frame work for early
stage IP▸ Focus on patents (clearly identified IP) first▸ Respecting each other business autonomy – no
joint business▸ Adapted financial consideration ▸ Simple predetermined (parameterized) scheme
2. Apply such IP business frame in collaborations
▸ In funded projects▸ Especially on joint IP
22© IMEC 2012
SITUATION TODAY
• Scope patents or broader• Might open difficult issues on improvement IP
• Scope BG program licenses or broader• Seems to fit the R&D life cycle model
• Soft-co-management versus steered actions
• Voluntary or obligations
• Support
• Mediation
• Evaluation
• Evolutionary
23© IMEC 2012
GLOBAL R&D PLATFORMS: GOING FROM THIS…
Providing focus for universities and basic insight and solutions for industrial partners
UniversitiesLo
nger
te
rm, m
any
optio
ns
Shor
ter
term
, ap
plic
atio
nsTim
e fr
ame
Lower HigherR&D cost
Industry
Shared R&D Platforms
24© IMEC 2012
GLOBAL R&D PLATFORMS :…TO THIS:
Providing focus for universities and basic insight and solutions for industrial partners
UniversitiesLo
nger
te
rm, m
any
optio
ns
Shor
ter
term
, ap
plic
atio
nsTim
e fr
ame
Lower HigherR&D cost
Industry
Shared R&D Platforms
Shared R&D Platforms
Shared R&D Platforms
25© IMEC 2012
CONCLUSIONS1. IMEC IP model – more dynamic than ever before▸ Broader license scope makes sense
2. IMEC recognizing and starting to use the IP market evolutions – but caution on policy side
▸ We`d better create our own early life cycle IP market
3. IMEC experience a less open field environment
4. IMEC believes it is time to discuss IP in- and out-licensing with other EU research institutes
1. To overcome failure of early stage IP market2. To overcome adverse effects of EOL IP monetization3. To create true EU collaboration
5. IMEC willing to bring its experience with Academia on the table to achieve concrete solutions
Work Package 1
Facilitate R&D collaboration and
increase the use of research results
Dr. ir. Vincent Ryckaert, IMECDr. Olivier Eulaerts, JRC
EARLY(IER) STAGE IPR TRANSACTIONS BETWEEN R&D ACTORS
AN OPPORTUNITY TO STRENGTHEN INNOVATION IN EU?
IPR TRANSACTIONS
INDUSTRYIP/Knowledge
Creation
INDUSTRYIP/Knowledge
Creation
Secondary IP market
Cross‐licensing
ProductsServices
ProductsServices
Licensing-out/Selling-out
Secondary IP market
MARKET
Licensing‐in/Buy‐in
IPR TRANSACTIONS
INDUSTRYIP/Knowledge
Creation
INDUSTRYIP/Knowledge
Creation
Secondary IP market
Licensing‐out/Selling‐out
Licensing‐in/Buy‐in
Cross‐licensing
PROIP/Knowledge
Creation
PROIP/Knowledge
Creation
ProductsServices
Licensingout
ProductsServices
Spin‐off Companies Contract Research
Services
Licensingout
Spin‐off Companies Contract Research
ServicesSecondary IP market
MARKET
No acquisition
No cross‐licensing (FTO)
No licensing
IPR TRANSACTIONS BETWEEN PROS
Why is this not happening?
Emotional factorsNot invented here syndromother PRO’s IP is unknown, we feel we are competitors (but are we really?)Trust issue (difficulty to leave another PRO to negotiate alone)Fear of change Risky aventure (lack of previous experience)
Narrow perspectiveNo short term effectunderestimated potentialduty to maximise the use of IP portfolios
Technical aspectsInsufficient portfolio management
IPR TRANSACTIONS BETWEEN PROS
Why should it happen?
Innovation is the only engine behind Europe’s capacity to sustain its economic and societal model
Europe invests heavily in Research, but performs less when transforming research into innovations
IP portfolios of PROs are under‐used and ways to bring more IP to the market should be explored
PROs are collaborating in R&D projects but rarely exploit jointly the complementary IPRs generated
The present conservative stance is unproductive and lead PROs toeither drop IP or sell IP on secondary IP markets
A framework should be created to facilitate IPR transactions between PROs
How to make it happen?
Start small, on a voluntary basis
Start with Patents, then tangible Know‐How (e.g. software), then knowledge
Start with some demonstration as model e.g. on joint IP in funded projects
KISS ‐ Keep it simple and standardised (model/standard agreements)
K it fl ibl bi ti f d bil t l t
IPR TRANSACTIONS Between PROs
STATUS AND NEXT STEPS
Work Package 1
WHAT HAS BEEN DONE SO FAR
WP1 timeline
Grenoble Mtg1st brainstorming
October 2011 January 2012
Survey on 9 Work Packages
March 2012
Brainstorming in Brussels on WP1
April 2012
Rome MtgCreation Working Group on WP1
(WGWP1)
WP1 Aim to enhance the operations of the TTOs of the partner organisations by
‐ reducing barriers to collaboration, ‐ fostering the use of IP assets and know‐how, ‐ increasing interactions with industry and SMEs. The underlying goal is.‐ exploring synergies with other work packages of the Circle
35© IMEC 2012
WORKING GROUP ON WP1
Proposal for Mandate‐ To explore concrete ways to increase the use (both by Market and PROs) of the IPR and know‐how generated by the partners of the TTO Circle + to propose implementation plan.‐To report to the next plenary meeting.
Proposal for Composition1 representative from 3 to 5 partner organisations and 1 representative from the Secretariat of the network.
Boundary conditions‐ Partners shall remain owners of their IPR.‐ Participation to the adopted initiatives will not be compulsory.‐ Participation will be modular i.e. each organisation can participate to selected initiatives.‐ Others?
36© IMEC 2012
WORKING GROUP ON WP1
Dimensions to explore
PROIP/Knowledge
Creation
PROIP/Knowledge
Creation
Freedom‐to‐operateCommon principles for IP in
joint R&D
IP mediation mechanism
IPR bundling
Non‐exclusive use of IPR
Exchange and use of Know‐How
Others
37© IMEC 2012
CREATION OF A PATENT POOL
Purpose: sharing of existing technology and collaboration – create mutual gains
Initial iniative: creation of a Patent Co-Management platform/environment; this is a closed circuit for participating parties on a voluntary basis; royalty based; restricted to patents, predetermined to Background; with sublicensing scheme; co-management = cost sharing + option scheme…..
* valuation system: fixed fee determined in advance by the offering party
38© IMEC 2012
IMEC: CO-MANAGEMENT SYSTEM
* engaging parties: proposer/ Offering Party –interested/ Receiving party
* option = cost share = proposed 25% but free to set a % yourself; option fee = % fee of the cost
* communicate the fee if the engager exercise the option for a background license: now fixed fee
* predetermined character on the prices
* proposer fixes the prices = fee per year
39© IMEC 2012
PURPOSE - IMEC * Important for research programs in our R&D life cycle
* frame: free flow, less controlled
* intermediate position might be support
*starting with a simple basic model in order to rework the basic system on a gradual basis = start with a practical, fix and clear frame which can be adapted and expandend afterwards
* diminish consortium agreements,…
* light version
* exploration of an IP-dealing system
40© IMEC 2012
SCOPE - IMEC * patents
* background licenses to start with: simple approach: licensing of BG, no know-how transfer or sael of patents; work with a frame that contains bare minimum = code of conduct
* entering the patent pool and participation does not imply a prior offering
* set up a code of conduct or regulation for engaging parties which can participate in the patent pool as a proposer or interested party at the sime time, while acting according to guidelines and resepcting contractual freedom
41© IMEC 2012
TTO COLLABORATION AGREEMENT
* broader scope: know-how; softare, materials, equipment, patents, …
* immediately a moderated and more complex scheme
* more incumbrances/issues: what with creation of new IP blocking
*
42© IMEC 2012
TTO: CONSORTIUM AGREEMENT Four main elements:
1. access rights for R&D: internal research with possibility 3rd parties
2. Collaboration
3. Contract R&D=closer to the market
4. Exploitation
System: you need to offer to participate
Option = linked with Evaluation scheme
43© IMEC 2012
TTO
* Broadening of IP aspects… (vertically)
* Broadening horizontally in R&D lifecycle:
- sublicenses are linked/intertwined with FG,
- pay for commercial use = ok
- free for internal use and research program = ok
- in between: intermediate phase needs to be taken into account
* controlled system/ forced system
44© IMEC 2012
TNO: PRACTICALITIES
45© IMEC 2012
TNO: PRACTICALITIES * valuation of patents?
*determining a minimum fee might be a hard burden on the Proposer how to assess a patent valuation?
* limited scope to non-exclusive Bglicenses
* IT-concept? Database/platform? How to make the system operational?
* continue feedback/control: assign a manager/coördinator/intermediary/mediator
* evaluation system
* anti-blocking
46© IMEC 2012
WORKING GROUP ON WP1
Discussion
