Anton Habjanič: IP policy model at the University of Maribor

IP Policy Modelat the University of

MariborAnton Habjanič, D.Sc.

director of TechnoCenter at the UM

Conference on University and Business Cooperation in Central Europe

(January 28-29, 2016, Budapest, Hungary)

1859 the beginnings of higher education in Maribor (School of Theology) Between 1959 -1961 the Association of Higher Education Institutions in

Maribor 1975 the University of Maribor was established 17 faculties plus 2 members: Student Dormitories and University Library 16.680 students in the academic year 2014/2015 (all cycles) 1.725 staff members (1063 teachers & employees in higher education and

researchers) Total income in 2014: 83 million EUR (R&D activities: 11,5 million EUR)

University of MariborFacts and Figures

Technology Transfer Cycles

IP Strategy & Policy

IP Strategy:A plan designed to achieve IP management supporting the core missions of technology transfer.

IP Policy:Principles of actions (set of provisions), often with direct legal implication regarding duties and rights of faculty and indirect implications for partners.

Background!Commission Recommendation on the

management of IP in knowledge transfer activities and Code of Practice for universities and other public research organisations

Intellectual Asset Management for Universities (UK IP Office)

Model Intellectual Property Policy forUniversities and Research Institutions (WIPO)

IP policy is a must-have tool: provides clear and transparent rules on IP management while involving the personal, institutional, national and international aspects of IP management in one regulatory document.

Advantages of a good IP Policy: Creates guidance & consistency for IP and technology management

procedures Involves transparency in decision making process Safeguards the interests of all parties by stipulating deadlines Facilitates professional IP management Creates legal certainty for companies and other third parties Supports commercialization activities Stimulates more industrial support for research Guarantees the fair distribution of the income among stakeholders Encourages bringing research results to the public benefit Enhances the promotion & reputation of the university and the researchers

Importance of IP Policy

10 key Questionsfor Establishing a successful IP Policy

Question 1: What rights does the

government have on IP generated at

universities and R&D institutions?

For example, manufacture in the country, preference for national companies, regulatory compliance, royalty sharing, royalty-free license to the government, title back to the government if the institution doesn’t take title etc...


Background of the IP Policy at UM

Employment Related Industrial Property Rights Act (Article 21): Financial resources for organizational infrastructure, necessary for examination

of employee inventions at PRO and for their effective exploitation, are provided separately by the state.

PRO regulates the acquisition procedure of employee inventions with the Rules in a way that is adapted to the needs of scientific work and the publication of scientific results.

PRO specifies the shares in the Rules, which belong to the institution, the unit of the institution where the inventor is employed and the inventor.


Question 2:Who owns IP

generated by publicly funded research?

Who is the first owner of IP (the employed inventor or the employer)?Does the “Professor‘s privilege” exist?Who can apply for ownership of IP?Who has the Pre-emption rights?Can university claim ownership of IP created in the course of students’ research activity?

Who are inventors andwhat are their obligations?Inventors are:

University teachers, researchers and other employees at the University of Maribor, who discovered or created an invention.

Contractors and students, who are not in employment relationship with the UM and when the invention is a result of a contractual relationship or when the UM‘s resources were used in the discovery or creation of the invention.

Inventors are obliged to: Immediately inform the UM‘s Department for Scientific Research by clearly

indicating that the writing is a notification of invention. Refrain from any actions, which would mean the disclosure of the invention to

unauthorized persons, thus putting the patent protection or the protection of other IPR at risk, before and after the submission of the notification.

Provide UM with assistance by offering explanations about the invention and by making the necessary declarations.

Attention! The inventor, who fails to inform the UM, breaches the obligations deriving from

employment.

Question 3: What IP

Management procedures will be

followed?What are the bottlenecks in technology transfer and commercialization of R&D results? How should IP Assets be managed? What are the IP management procedures?How is the IP policy etc. communicated to stakeholders?


Acquisition Procedureof Employee Inventions

UM fully acquires the invention, the continuation of the procedure is conducted by the primary inventor. The Dean of the university member decides on commercial exploitation.

1. Costs of the acquisition procedure are financed entirely by the inventor or faculty from funds of the group(s) that created the invention.

2. Costs of the acquisition procedure are financed in a limited extent by the inventor or faculty from research grants of the group(s) that created the invention (at least 40 % of costs). The remaining amount is financed by UM from relevant system resources.

3. Costs of the acquisition procedure are financed entirely by UM from relevant system resources.

The decision on full or limited acquisition is made by the Rector on the basis of the opinion of the Committee for the preparation of opinion in invention acquisition procedure, which is formulated at the request of the Technology Transfer Office. The Rector decides on the commercial exploitation.

Question 4: Benefit sharing? How are revenues from

research commercialization shared among

inventors, institute or department, university and

government or funding agency?


Distribution of the revenuearising from commercial exploitation

Attention!Irrespective of the above manner of distribution, UM, the relevant faculty and the

inventors may agree on a different manner of distribution in a special agreement.

Financing structure

Share belonging directly to the inventor

Share belonging to the faculty or research group that created the invention

Share belonging to UM and the Rector’s fund

Type 1 65 % 30 % 5 %Type 2 50 % 20 % 30 %Type 3 40 % 25 % 35 %

Question 5: Is private funding

for defined research projects permitted?

If so, under what conditions and approval process? Who owns the IP in such cases? If the university or R&D institution owns the IP, what kind of licenses (royalty free, royalty bearing, exclusive, non-exclusive etc.) would it be willing to grant?


Question 6: Options for

commercialization? What choices do universities and R&D institutions have for commercializing their research

results?

Does the university or R&D institution want to encourage entrepreneurial activity or not?


Commercial exploitationof the invention

When concluding R&D agreements, the parties are obliged to ensure adequate financial implications deriving from the creation of potential IP.

The parties typically have to agree on royalty payments determined on the basis of the net sales figure of products or services deriving from the invention.

Attention!Derogations from the above mentioned principle are possible only with the written

consent of the Rector.

An inventor who, by UM's order, participates in research work funded by non-budgetary contracting entities, the consequence of which is the created employee invention acquired by UM, is entitled to a reward in the net amount of 2.500 EUR.

UM may also benefit from the invention by establishing spin-off or spin-out companies exploiting the invention.

Question 7: Who manages the IP &

technology transfer? Is there a TTO, outsourced

company, government entity, IP Hub or a national IP Office?

Who negotiates licenses with outside parties, reviews employee contracts, manages invention disclosure procedures, reviews sponsored research proposals, manages royalty sharing, establishes and manages spin-off companies …?


Services of TTO Innovators support (assistance in the implementation of innovative ideas) Protection of IPR and management of IP Commercialization Assistance in establishment and development of spin-offs Organization of conferences, workshops and trainings Execution of independent and partnership projects

Question 8:How to afford the cost of protection

and maintenance of IP?

Does the university or R&D institution pay the expenses of protection and maintenance of IP?In the case of government or private sponsored research, who pays for these costs (e.g. registration, attorney’s fees, maintenance etc.)?Is there a limit to how much the university or R&D institution will spend and what kinds of inventions it will fund protection for?


2009 2010 2011 2012 2013 20140

100

200

300

400

500

600

700

800

900

Year

Fund

s (10

00 E

UR)

TTO Activities Funding in Slovenia

• Maribor

• Koper

University of Maribor

University of Ljubljana

Jozef Stefan Institute

National Institute of Chemistry

National Institute of BiologyUniversity of Primorska

TechnoCenter UM

Science & Research Centre of Koper

Center for Technology Transfer

Consortium for TT at PRO in Slovenia

Center for Technology Transfer & Innovation

Question 9:How are conflicts-of-

interest and commitment handled

or prevented?May a professor or researcher accept additional private income for projects that may require time away from the organisation? Does the organisation permit professors to consult on their own or take a leave of absence? Can the professor or student use facilities of the university or R&D institution for private research activities?


Question 10:How should scientists

be encouraged and motivated?

What kind of incentive schemes could foster not only research but

also innovation activities?For example, staff training on IP knowledge, financial incentives or personal career development etc.


Recommendations1. Consider and keep in mind the particularities of your institution (there is no “one

size fits all” approach to IP management)!2. The IP Policy has to be adapted in a manner that the institution is able to identify

emerging inventions efficiently, asses and manage disclosed inventions in a systematic way, and addresses grand challenges (IP Policy has to be flexible and adaptive, i.e. able to evolve in response to changing circumstances.).

3. Provide funding aimed at bridging the gap between embryonic research results and demonstrations of PoC that would stimulate market exploitation (e.g. special funds can be established by leveraging proper (inter)national grants.

Contact data

www.tehnocenter.si

Anton Habjanič, [email protected]+386 2 2355 344

TechnoCenter at the University of MariborSlomškov trg 15

2000 MariborSlovenia

Direct link to the Rules: http://www.um.si/en/research/intellectual-property/Pages/default.aspx

Thank you for your attention!

http://www.um.si/en/research/intellectual-property/Pages/default.aspx