Marcel D. MongeonIntellectual Property Coach

IPR Awareness Seminar – The Need for Technology Transfer

Expertise

Outline Defining Technology Transfer How TT Occurs in North America Financial expectations and Reality The need for national frameworks Policies and practices Setting up TTOs Q&A and discussions

What is Technology Transfer?

My preferred definition:› Any means used to have research results

and academic knowledge put into practical use

The need for a ‘user’ or ‘customer’ Some confusion between input

measures and outcomes› Patent filings› Revenue

Marcel’s Laws

Patents ≠ SuccessCustomers = Success

Patents = Bait

How TT Occurs in North AmericaSource: Berneman, Start UP Business Development, AUTM Annual Meeting 2008 ED9

But, What is Missing? Types of Technology Transfer:

› Licensing of IP› Collaborative Research› Sponsored Research› Use of Equipment and Facilities› Training of HQP

Which is most important? Least?

Financial Expectations and Reality

-10.00

0.00

10.00

20.00

30.00

40.00

50.00

60.00

70.00

80.00

90.00

100.00

McMaster University FY97 to FY06, Net Revenues/Disclosure over Disclosures, Max revenue=100

So, Why Do We Do It?

National Frameworks United States: Bayh-Dole Act Canadian and various European

Countries South African IPR Law Question:

› Does Kenya need a national framework?› Will only be successful if funding for

infrastructure

Creating and Implementing New Policies

What should an institutional policy touch on?

How to decide these issues? How to implement?

Topics for an IP Policy IP that is included Who is covered Ownership of IP Disclosures Dispute resolution Protection of certain

communities/Conflicts Responsibility for Management Splitting the money

What IP is Included Traditional division between Copyrights

and Patents Ignoring of Trade-marks Good arguments to be made now that

all IP should be brought into a policy Who decides when IP will be

commercialized? (Researcher, funder, administration?)

Who is Covered Researchers Students Staff members How about visitors? Members of the local community

allowed to use facilities? How to reconcile issues over

collaborating partners?

Ownership of IP Clear statement that IP is owned by X

[Inventors; Funding Organization; Institution?]› Choice should be based on: who is best

capable of doing the work?

Obligations to sign patent documents› Need for institutional and individual signatures

Consider ‘relief valve’ that lets researchers get ownership back

Alternate IP Situations Open source? Academic publications Open innovation

Contracted Research Most important special case

› transfer of ownership only when paid “full economic costs”

› Meaning of FEC Publication limits Other issues related to working with

industry

Requirement to Disclose Can’t manage what you don’t know Initial information gathering Gather information relevant

to initial valuation Need to balance information

required and complexity to complete

Use of Disclosures Initiates management Can be used to pass information to:

› Internal stakeholders (academic management)

› External stakeholders When is something truly a disclosure?

Dispute Resolution Who is an Inventor?

› Patent attorneys can answer to a point

Useful to have some type of internal committee to arbitrate disputes

Can also help with revenue splits

Protection of Certain Communities

Inherent conflicts between supervisors and students

How to protect students? Conflict between granting agency and

host institutions Use of an intermediate

authority Conflicts between

inventors and institutions

Splitting the Money They say: “It’s not the money, it’s the

principle” They mean: “It’s the money!” How to determine? Institutional portion generally at least

50% after ‘costs’ What do costs mean? Include overhead, time etc? or just

patents and outside personnel?

How to Fund Technology Transfer

Does TT get a portion of revenues automatically?

What other functions will they be given

How to fund over ‘dry spells’?

Implementing a Policy Communication plan Also needs to see almost immediate

services being available Practices (next section) are a critical

piece of the puzzle

Practices: The Basic Steps Education of researchers and

management The 4 steps:

› Identify› Protect› Improve› Move out:

Licence; Spin-off; Additional sponsored research

Educate Management and Employees

Ensure basic understanding of trademarks, copyrights, patents, and trade secrets

Train scientists/inventors in record keeping, patent application filing process

Likely to be first lesson on IP Challenges with researchers doing it

wrong› Especially patent searching

Important Related Educational Step

Lab Notebooks TTO providing a guide to

lab notebooks:› http://www.parteqinnovatio

ns.com/pdfdoc/ LabNotes_Poster_000.pdf

› Also makes a good advertisement for office

Publish or Perish Academic publication imperative

› Runs contrary to patent rules Need to patent before publishing Create paradigm:

› Patent, Publish and Profit

The Rewards of Using IP Protection

Societal good› Will research results get adopted without

protection?› How to benefit local and

international populations?

Recognition› Career advancement for

researchers

Money› Further research money› Personal rewards

Important Practices and Policies

Who owns and manages resulting IP? IP from research agreements Disclosures Initial valuation Managing commercialization process End-points:

› Licence; Spin-off; or Additional Research After end-point administration

IP Protection Patent – most applicable Copyright Trademark Trade Secret

› Most likely inapplicable in academic environment

Implement Proper IP Protection

Patent Protection› Conduct cost/benefit analysis› Determine Patentability› Choose right patent agent/attorney› Choose countries to file applications (U.S.,

PCT applications, Foreign countries)› Manage expense-attorney’s fees,

government fees› Manage patent family› Pay maintenance fees

Develop Standardized Agreements

Protection of Confidentiality› Non-disclosure agreements (NDAs)› Employment agreements

Protection of Technology› Licenses› Technology transfer agreements› Material Transfer Agreements

Research Agreements with Industry

SCIENCE

IP LAW

BUSINESS & INDUSTRYEXPERIENCE

Staffing: Skills Required

Whom Do We Hire? Education:

› MSc or PhD AND

› MBA or LLB/JD Training:

› AUTM or LES course› Some additional providers (TTT)

Q: Need for regular course in East Africa?

Ongoing Training Patent law changes

› Patent Agents on TTO staff? Improvements in office practice AUTM Annual Meeting is useful LES provides good contacts Regional activity

› SARIMA› COMESA

Size and Research Income Direct correlation between TT personnel

and research income ~ 2,000 FTE for $50 B

› $25 Million Research per TT FTE Compare your own research size

› 2004 HERD Data for Thailand $150 M Challenge for smaller countries:

› How to obtain ‘critical mass’ of TT expertise› Solution in S Africa: Central facility

The Generations of TTOs 1G:

› Lots of patent applications› Not many licensees› Financial hardship

2G:› Much more analysis before deciding to file› Applications are highly targeted› Start-up Company creation attempted

3G:› Science portfolios explored with patent back-up› Creation of industry-directed research groups› Use of IP for ‘public good’

Marcel D. Mongeon+1 (905) 481 0133

UK: +44 (0) 1905 70 1818marcel@mongeonconsulting.com

QU

ES

TIO

NS?

Click icon to add picture