13/12/2012 Technology transfer @ VUB Hugo Loosvelt

VUB in Brussels www.vub.ac.be

including ~1500 VTE R&D staff

Valorization of research

– Knowledge transfer to society

– To society in general and to economic partners in particular

– Invest return in research

– Build up excellence

« Service center » TTI

Multidisciplinairy team !

•Legal support

•IP management

•Contract management ( IPR included )

•Support project writing & submission

•Stimulate entrepreneurship

•Management Spin-offs

•VUB-Industrial research Fund: advising the board

•VC-fund QBIC

•Research parks

•Incubators IICB– ICAB

•Industrial Network- Crosstalks

•Fundraising & Fellowship programs

•Internal & external communication

Support from TTI

Funding for University research groups

Industrial Research Fund VUB “Industrieel Onderzoeksfonds/IOF”

*strategic and applied research programmes

*proof-of-concept projects

*detailed long-term roadmap and vision

*clear valorization strategy

*application-oriented inventions

*economic and societal value

Funding for the Researcher

Revenues from collaboration with private sector 23% including gifts, chairs, s ponsoring, contract research, licensing, …

Own research means 18%

Flemish governmental support for fundamental research 13%

Projects funded by governments 46%

VUB: R&D budget 2011

2011 licensing revenues: ~1% R&D budget

IP and the university

IP = manifestation of ideas, creativity and inventions in a tangible form

IP underpins all of the activity of a university: teaching, research, consultancy, services and contract research, licensing and spin-off creation

University needs to manage its IP:

• protect own freedom to operate

• translate knowledge with immediate application to society /economy

• create knowledge base for innovation

«Rights & obligations of the researcher »

• A Flemish university owns research results

• VUB recognizes rights of inventors

• Inventors have the obligation to collaborate in the valorization procedure

• VUB pre- finances patent procedure and recuperates costs only if there is an income

• Income will be distributed among inventors, the research lab

and the VUB

IP @ the university: why?

Challenge: huge gap between research findings and product on the market

High (financial) investment needed

To guarantee return on investment, and promote investment in R&D

IP rights provide the owner the right to prevent third parties from making, using, offering for sale, selling or importing infringing products in the country where the IP rights are granted and as long as the IP rights are valid

Allow the owner to sell these rights or conclude licensing contracts

Technology transfer

TTI assists academics to realise knowledge transfer by: - identifying and evaluating technology of potential commercial

value - Protection, management and development of the University’s

intellectual property portfolio - Identifying and facilitating applications to sources of funding for

development work - Exploitation of intellectual property, through negotiating

agreements needed for R&D collaboration, licensing and spin-out company formation

Technology transfer is the process by which new ideas, early stage technologies arising from the University are identified, protected, developed and commercialised.

TTI- team

Coordinator Technology Transfer Interface Sonja Haesen

Business development

Technology Transfer Officer/IP Management & Licensing Hugo Loosvelt

Technology Transfer Officer/Spin-offs Jacky Boonen

Technology Transfer Officer & ICAB/Entrepreneurship Education Marc Goldchstein

Legal

Legal Advisor/ spin-offs / contract research Kristel Mommaerts

Legal Advisor/Contract Research Mariana Moreira

MarCom

Coordinatie Marcom & IOF beheer Tanja Thijs

Communication & Events TTI (Flanders)/ CROSSTALKS Goedele Nuyttens

Communication & Events TTI (Brussels) Alena Aga

Support

Contract Management Tom De Pauw

Contract Management Marie-Anne Straetmans

Management Assistant Tania Bauwens

Consultants

Operational Director CROSSTALKS Marleen Wynants

Fundraising & Fellowship program Ann Verbeeck

Patent portfolio of the Vrije Universiteit Brussel

100 active patent families •33 patent families VUB

•67 patent families with partners

Granted US or EP patents 1998-2006:

- 39.5 % licensed/assigned to spin-off

- 31.6 % licensed to other company

~70% patents actively valorized

Biotech: ~50 % of EP patent output 2007-2011

Creating a spirit of entrepreneurship

• Starter Seminars: create more awareness within the university about entrepreneurship, start-ups and contract research with the industry

• Close collaboration between TTI and ‘Technological Entrepreneurship’

• 10 seminars (3 hours each) offer a basic introduction on entrepreneurship and company management: developing a business plan, finance, marketing, patenting, …

Education program ‘technology entrepreneurship’

AIM: BRIDGING THE GAP

BETWEEN TECHNOLOGICAL KNOWLEDGE AND ENTREPRENEURSHIP

= EUROPE’s 21st CENTURY CHALLENGE!

DIFFERENT LEVELS:

• Introductory courses (such as the Starters Seminars),

•technology sector-specific courses (e.g. biotech, photonics,…)

•master classes in (technology) entrepreneurship

REAL LIFE EXPERIENCE

business development of technologies

that originate directly from the research labs: ‘from lab to fab’

QBIC FUND – Transforming Knowledge

FIRST INTER-UNIVERSITY SEED CAPITAL FUND ( 2012):

(Brussels University Association, Ghent University Association, Association Antwerp University and University Colleges)

AIM OF THIS ALLIANCE = further professionalization

€30 MILLION IN START-UP

POSSIBLY INCREASING IN SECOND CLOSING

VUB spin-off companies

€space

IP: what?

WIPO-treaty 14.07.1967 (art. 2, viii)

“For the purposes of this Convention:

(…)

(viii) “intellectual property” shall include the rights relating to:

– literary, artistic and scientific works,

– performances of performing artists, phonograms, and broadcasts,

– inventions in all fields of human endeavor,

– scientific discoveries,

– industrial designs,

– trademarks, service marks, and commercial names and designations,

– protection against unfair competition,

and all other rights resulting from intellectual activity in the industrial, scientific, literary or artistic fields.”

Courtesy of Prof Brison

IP rights: examples

Courtesy of Prof Brison

IP rights: examples

Courtesy of Prof Brison

IP rights: examples

Courtesy of Prof Brison

Various IP rights Legal right What for? How?

Copyright Original creative or

artistic forms

Trade marks Distinctive identification of

products or services Use and/or registration

Registered designs

Registration*

Patents New inventions Application and

examination

Exists automatically

Trade secrets

External appearance

Valuable information not known to the public

Reasonable efforts to keep secret

IP: what, why, forms of IP

Trade marks:

• “iPhone 4 s"

• Software “iOS 5”

•….

Patents:

• Data-processing methods

• Semiconductor circuits

• Chemical compounds

• …

Copyrights:

• Software code

• Instruction manual

• Ringtone

• …

Trade secrets:

?

Designs (some of them registered):

• Form of overall phone

• Arrangement of buttons in oval shape

• Three-dimensional wave form of buttons

• …

© Nokia

More info on trademarks and designs

World intellectual property organisation (WIPO)

http://www.wipo.int

Europe: Office of Harmonization for the Internal Market (OHIM) is the official trade marks and designs registration office of the European Union

http://oami.europa.eu/ows/rw/pages/index.en.do

Benelux: Benelux-Bureau voor de Intellectuele Eigendom (BBIE) http://www.boip.int/nl/homepage.php

National IP offices

Patent: what is it?

- the right to exclude others from making, using, selling, offering for sale, or

importing the patented invention

- granted by a national government to an inventor or their assignee

- for max. 20 years (subject to payment of maintenance fees)

- in exchange for the public disclosure of the invention

Not the right to practice your invention yourself!! -> one might need a license to obtain freedom to operate

The invention cannot be kept secret!! Quid pro quo!!

No global patent exists, only a international or European application procedure !!

Patent requirements

Patent office conducts a search and examination before granting a patent

Strong differences (in interpretation -> case law) between countries/regions depending on different jurisdictions!!

Art 52 (1) European patents shall be granted for any inventions, in all fields of technology, provided that they are: • new, • involve an inventive step • are susceptible of industrial application.

European patent convention (EPC) -> http://www.epo.org

Sources: EPC 2000 art. 52, 54-57, 100, 138, R. 42, 43, 44

Novelty: example

Images from 'The Sunken Yacht', © 1949 Walt Disney Corporation

Figure 1 of Krøyer's patent

buoyant bodies 1 are inserted into a sunken vessel 4 through a tube 3 from a salvage ship 2

NL 6514306

State of the art is not limited to scientific literature…

Inventive step

- Art 56 EPC: An invention shall be considered as involving an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art.

- EPO’s way to assess: problem – solution approach

- R42 : invention must be a solution to a technical problem…

Patents: information source!

Avoid duplication of R&D efforts and spending

80% of all technical information in patent documentation (OESO)

Duplication of R&D efforts: costs 20 billion EURO/year ; 25% of all R&D efforts ... on inventions that have been invented yet (European Commission)

Define technology trends: what is in a patent application now, is the product of tomorrow…

Preparing new patent: writing/ studying patentibility Find solutions to technical problems

85% of all patents no longer in force

Vast number of inventions available for free

Patent contain reliable information due to exigency of sufficiency of disclosure, enablement, clarity ( for person skilled in the art to be able to repeat the experiments)

14-12-2012 31 Introduction to Intellectual

Property Rights and Technology Transfer

Free patent databases

• espacenet: http://ep.espacenet.com

• google patents: http://www.google.com/patents

• Japanese Patent Database http://www.ipdl.inpit.go.jp/homepg_e.ipdl

• USPTO database http://www.uspto.gov/patft/index.html

• WIPO patentscope http://www.wipo.int/pctdb/en/search-struct.jsp

Protection of software?

- Secrecy

- Copyright: concrete shape (source code, user interface, …)

Fast, cheap, simple

Does not protect technical solution provided by software

- Patent right: computer implemented invention (solution to a technical problem, more than just the software)

Expensive

Technical aspects of the invertion: must be novel, needs to involve an inventive step

- Registration: notary act, i-depot, escrow agent depot

Can be licensed

Can be licensed: e.g. basis for free / open source software…

What software owners seek to control

• Consumer/commercial reproduction of source/object code • Incorporation of parts of source code in new programs – sequential innovation – cross-innovation • Non-literal copying – programs with same structure, sequence, organization (even if they have none of the original source or object code)

Copyright

• Protects the expression of idea not idea itself • No registration required • Fixation • Originality • Duration (+70 or 50) • Economic rights and Moral rights

Trade Secret • Copies of object code are sold • Source code is kept secret BUT • Decompilers allow reverse engineering • No protection against piracy of object code

Pro-Patent Arguments • Patent protection for CIIs – necessary to provide optimal incentives for development of new software ideas – necessary to enable firms to raise funds to commercialise Innovations • Publication requirement – accelerates progress and reduces redundant R&D

Anti-Patent Arguments • Adequate incentives already exist – copyright – opportunities to sell software-related services • Software patents benefit large firms and disadvantage SMEs – high costs – cross licensing – barrier for new players • Rate of increase in software patenting in US exceeds that of R&D Spending • For small firms patents and R&D are substitutes, not complements • Patents create impediments to cumulative innovation

Free /open source software

• Based upon copyright

• Many different F/OSS licenses, for overview : http://www.gnu.org/philosophy/license-list.html

• Many differen F/OSS licenses incompatible

• The Problem with F/OSS Software: - F/OSS is typically a joined effort of many different people / grows organically; looking at the source code of many projects, you have:

o a White zone: code of which the IP is 100% clear; you know because you have written the code yourself. o a Gray zone: code that was contributed by others. Where did they get this code? Did they write the code? o a Black zone: code that was integrated in the software, but for which there was no license or authorization.

Conclusion Writing code is the easy part of the job….when developing and developing a business on a software product!!!