La valorizzazione della ricerca ed il trasferimento€¦ · TT Business Development Strategy Combination of Push and Pull models –Push: Preparation of technology teasers for various

La valorizzazione della ricerca ed il

trasferimento tecnologico

Roma, 5 Giugno 2017

Table of Contents

Technology Transfer @IIT

IIT Intellectual Property Protection Process

IIT Business Development Strategy

– Industrial Liaisons

• Sponsored Collaborative Reserach

• Joint Laboratories

La valorizzazione della ricerca ed il trasferimento tecnologico 2

Technology Transfer Organization


MAIN ACTIVITIES ON INTERNAL SIDE

Map and monitor inventive activity Perform IP evaluation and protection Disseminate IP protection and exploitation

culture Facilitate connection with industry players

MAIN ACTIVITIES ON MARKET SIDE

Map and monitor industry needs Identify best match between industry and

research, and exploitation tools Develop and maintain a relationships with

the financial community (VC, angels, etc.)

Technology Transfer is in charge of facilitating and accelerating the adoption of IIT scientific findings into the industrial cycle

Entire Patenting Process


Priority Filing 0 month

Foreign Filing 12 months (e.g. PCT)

average granting time

0 1 2 3 4 5 6

Search Report (6-9 months)

Options & associated costs Priority filing

IT Patent App.: ≈ 4-5K€ EP Patent App. .: ≈ 5-6K€

Foreign Filing through PCT: ≈ 7-9K€

National phases: “Standard” list of countries 15-20K€ EP: 5-7K€ US: 4-5K€ JP: 6-8K€

years National Phases

30 months

International Publication (18 months)

International Search Report (9-14 months)

Patent Granted

Pre-Filing - IIT IP Protection Process

The PI, in collaboration with the research team, prepares a Record of Invention (ROI) disclosing the novel findings to the Technology Transfer Patent Office (TTPO)

TTPO evaluates the ROI and decides whether the invention is robust enough to go ahead. Shall it be suitable for proceeding, it gets in touch with appropriate patent firm for drafting a patent application based on the ROI

Patent firm, TTPO and PI interact closely to set up and agree upon a robust text for filing

Priority filing usually at UIBM (Italian Patent Office); occasionally, at the USPTO


Post-Filing - IIT IP Protection Process

Once SR or ISR is received, TTPO/PI evaluate potential for amending/completing the application without adding «novel matter», so to avoid loosing priority

Typically, foreign filing via PCT route by month 12 after priority date

Decisions about nationalization by month 30 after priority filing; typically, EU, US, JP and/or CN based on ISR evaluation, market opportunity and business development assessment

Patents and patent applications are reviewed periodically to decide about any option to modify patent protection or even abandon


Patent Portfolio Analysis

La valorizzazione della ricerca ed il trasferimento tecnologico 7 7

Patent Portfolio Details


Material Chemistry

New Materials

Robotics Brain Science

Graphene

Energy

Rehab

Computation

Photonics

Health

Interactions

INVENTION PORTFOLIO

TT Business Development Strategy

Combination of Push and Pull models

– Push: Preparation of technology teasers for various research lines, illustrating the technology, IP, market analysis and key industrial players

– Use of business intelligence tools to identify key decision makers within target industrial organizations (VP R&D, VP BizDev, GM or Founders)

– Sending personalized e-mails to each specific organization/key person with the teaser as an attachment and wait for response


TT Business Development Strategy

Pull: Implement an appealing website, capable to illustrate the research lines, IP and how TT works

Exploit TT’s personal networks Exploit scientists’s networks Interact with corporative associations (Confindustria,

Assolombarda, Aidaf, Federdistribuzione, Federchimica, Assobiotec, Filse, Ligurcapital, etc.)


2015-2016 Life Sciences & Healthcare

Smart Materials

Material Chemistry

Electronics & Robotics

TOTAL %

Networked companies

99 242 102 142 585 100

First feedback 52 77 50 71 250 43

First Meetings/Calls

29 46 41 62 178 30

Negotiations 17 27 19 41 104 18

Industrial Collaboration Formats


Licensing of IP to industrial partners

Joint Lab localized @IIT (and) company, and co-sponsored by IIT & company (3-5 years)

Spin-offs: IIT scientists become entrepreneurs!

Feasibility Study (3-9 months)

Collaborative Research Project (1-2 years)

Sponsored Research: Sponsor covers incremental project costs – no mark-up

Ownership of Background IP

– Each Party remains exclusive owner of its Background

– Each Party shall allow the other Party a non-exclusive access to their own Background, on a royalty free basis, to the limited extent necessary to perform the research activities for the duration of the agreement

– The Parties agree that the agreement shall not be construed as directly or indirectly implying reciprocal grant or transfer of any right on the other Party’s Background


IP Negotiation within Sponsored Research Collaboration

Ownership of Foreground IP

– IIT owns all interest and other intellectual property rights, in and to all Technology developed using IIT facilities and by IIT personnel under the Agreement (“IIT Technology”)

– Sponsor owns all interests and other intellectual property rights, in and to all Technology developed using Sponsor facilities and by Sponsor personnel under the Agreement (“Sponsor Technology”)

– Technology that is jointly developed by IIT and Sponsor personnel will be jointly owned (“Joint Technology”)




Disclosure of IIT Technology – IIT will provide Sponsor with a complete, written, confidential

disclosure of any IIT Technology after the disclosure is received by the

IIT TTO

Patent Filing and Expenses of IIT Technology – IIT may file patent applications on IIT Technology at its own discretion

and expense, or at the request of Sponsor at Sponsor’s expense

– If Sponsor elects to license IIT Technology, Sponsor will pay for the

costs of patent filing, prosecution and maintenance in Italy and any

foreign country



License Election of IIT Technology. Within 3 months after notice of patentable IIT Technology, Sponsor has a right of first negotiation to elect one of the following alternatives:

– Non-Exclusive License. A royalty free, non-exclusive, non-transferable (without the right to sublicense), perpetual, worldwide license in a designated field of use to make, have made, use, and sell products covered by the patent application

– Exclusive License. A royalty-bearing, exclusive, field-of-use license, including the right to sublicense, in Italy or any other country elected by Sponsor to make, have made, use, and sell products covered by the patent application, in exchange for Sponsor’s agreement to diligently commercialize the invention



License Terms and Conditions of IIT Technology

– All licenses elected by Sponsor are effective as of the date the Parties negotiate and sign a subsequent license agreement

Use of Joint Technology

– Sponsor may obtain a license on IIT’s rights in Joint Technology

– Subject to the Sponsor’s right of first negotiation, each of the Parties shall be entitled to use their jointly owned Technology on a royalty-free basis, without requiring the prior consent of the other joint owner, and shall be entitled to grant non-exclusive licenses to third parties, giving notice to the other joint owner

– Parties shall agree in writing the grant of exclusive licenses


Joint Laboratory Guidelines

Strong match with institutional scientific program and research lines

Strong interest from PI to invest institutional budget

Real co-operation with Company to reach common and agreed goals

No need for exactly equal investments

IIT investment only in kind, as matching fund

Tipically, Company investment in kind + cash contribution for personell, consumables and travels

Localized @IIT (and) @Company premises

Duration is typically 3-5 years, renewable

Foreground IP shared between Parties

Royalty-free non-exclusive license to use IIT IP

Royalty-bsased exclusive license to use IIT IP


Current IIT Joint Labs


Created in 2016 and focused on precision control systems, next-generation actuators and control technologies. IIT and Moog will develop the required technologies to push autonomous robots into real-world applications and the marketplace

Created in 2016 for the development of novel cellulose-based substrates and for the production of biocompatible/biodegradable food grade containers with enhanced performances

Created in 2013 through an agreement between IIT Rehab Technologies and INAIL for the development and implementation of new prosthetic, orthotic and rehabilitation devices of high technological impact

Created in 2014, the Nikon Imaging Centre at IIT (NIC@IIT) is a core facility for light microscopy. NIC@IIT addresses the need of a wide community of scientists and professionals at international level

Created in 2014 for the development of new microscopy techniques

Created in 2017 to improve the performance of Grafysorber®, developed by Directaplus, in the water-oil separation related applications, like oil spills remediation or oil separation from industrial wastewaters

Created in 2017 for enabling IIT’s robots to work smoothly in everyday scenarios in various domains like medical/hospital helper, shopping mall or airport information provider and home assistant

https://www.iit.it/lines/nanoscopy-nic-iit

http://www.directa-plus.com/Default.asp

Giuseppe A.M. Giardina Manager, Industrial Liaisons Technology Transfer

Via Morego, 30 16163 Genova

t: +39 010 71781 258 m: + 39 335 7271548 [email protected] www.iit.it

19 La valorizzazione della ricerca ed il trasferimento tecnologico

mailto:[email protected]

mailto:[email protected]

http://www.iit.it/

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La valorizzazione della ricerca ed il trasferimento€¦ · TT Business Development Strategy Combination of Push and Pull models –Push: Preparation of technology teasers for various