Implementation of IP Law & Compliance Practices · Implementation of IP Law & Compliance Practices...
Transcript of Implementation of IP Law & Compliance Practices · Implementation of IP Law & Compliance Practices...
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Implementation of IP Law & Compliance Practices
Moderator: Ersin Dereligil, Founding President & Board Member of LES Turkey, Managing Partner at Destek Patent Marc Sedam, TTO Director, University of New Hampshire & Board Member, AUTM Patrick Terroir, Patent and Technology Committee Chair at LESI
MARC SEDAM Associate Vice Provost of
Innovation and New Ventures and Managing Director of UNH Innovation,
Executive Director of the New Hampshire Innovation Research Center
PATRICK TERROIR Founder and Managing
Partner at Innovation Legal Patent and Technology
Committee Chair at LESI Teacher in macroeconomics
and IP economics in Sciences Po Paris.
ERSIN DERELIGIL Managing Partner at Destek Patent LES Turkey Board Member Turkish Patent Attorney European Patent Attorney Expert before the Istanbul IPR
Specialized Courts.
Member of the NH Governor’s “Live Free and Start” advisory council
PI of UNH’s National Science Foundation I-Corps Site Member of the Association of University Technology
Managers (AUTM) Board of Directors. Advisor to the boards of two non-profits founded at
UNH: Operation Hat Trick and PLAN (Post-Landfill Action Network).
PAST: Vice President for Professional Development at the
AUTM Board of Directors between 2015-2016 Chief Operating Officer of Qualyst, Inc., Board member and Vice-Cihair at NHICC/AlphaLoft. Associate Director for Life Sciences at the University
of North Carolina at Chapel Hill’s TTO, Founding director of the Peter T. Paul
Entrepreneurship Center Food enzymologist at National Starch and Chemical
Company Inventor of a patented product winning the “2003
Product of the Year” from the Institute for Food Technology.
Certified Lecturer at LES 100 course of «Commercializing Technology through the Power of IP Licensing»
Mentor for universities and techno-parks on the establishment of TTOs and technology transfer.
Member of AIPPI Turkey, EPI, JIPA and INTA
PAST: Research expert on thermodynamics at METU. Patent engineer, office manager at Destek
Patent Guest teacher in patents and industrial design
course at Uludag University Engineering Departments for six years.
Past and founding president of the LES Turkey Founding member of AIPPI Turkey National senior expert on Tehcnology Transfer
Manual for EU/TR Project Outside Patent counsel at three Turkish
universities
Lawyer
PAST Chief of the Bureau of International Financial
Affairs, then as chief of the Bureau of State Participation in the oil, steel, chemicals and raw materials sectors in the Treasury Department at the Ministry of Economy and Finance
Deputy director of the Office of the Minister of Employment.
Head of the social housing financing department at Caisse des Dépôts
Commercial manager of Caisse des Dépôts’s banking services branch.
Regional director for the Paris-Ile de France region.
Chairman of the Val de Marne Paris Development Agency.
Lounch of Caisse des Dépôts’s department on industrial innovative clusters/IP economy.
Managing director of CDC Intellectual Property (a full subsidiary of Caisse des Dépôts)
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Introduction: the Turkish (long awaited) IP reform
Ersin Dereligil, Founding President & Board Member of LES Turkey, Managing Partner at Destek Patent
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Actually determining ownership of invention is not so simple
Problem One: Incentivizing Invention Disclosure Despite a contractual duty to disclose and the possibility of monetary revenue, as many as 50% of patentable innovations are not disclosed by researchers to their university's TTO Social norms, lack of education, and a perception that time is better spent elsewhere all work together to offset the potential monetary incentive to disclose. Academic researchers do not instinctively understand when a patentable invention has been created Problem Two: Determining Inventorship Inventions often have multiple inventors, each responsible for a minor aspect of the final invention.
It is not always easy to determine if two researchers are joint inventors. Multiple researchers can be joint inventors on a patent even if "(1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.“
Transparent and unambiguous regulations with respect to ownership titles and property rights are a decisive element.
2017 Law Parade for Turkish IP Reforms
10 January - The Industrial Property Law (#6769-Art. 121) 24 April - IP Regulations, 01 July - “Bag” bill (#7033) 2017, Art.18 (allows for TTO Inc.). 29 Sept. - Regulations For Employees’ Inventions, Inventions From Higher Education Institutes and Inventions From Publicly Supported Projects Awaited - IP Regulations For Higher Education Institutes (Draft) from YÖK (Council of Higher Education)
Disclosure
• promptly in writing
• to the unit appointed by the HEI
• full disclosure of invention, i.e. technical problems, solutions, details, drawings etc.
• inventors, right distribution ratio, any claim for free invention.
HEI’s Unit/TTO
• Prompt written acknowledgement
• Within «2» months: Request for deficiencies, if any, to be completed within one month.
• Within «4» months: Decision for request on right ownership
Patent
• Within «4» months from right ownership request, HEI unit should file patent application but can be delayed «2» months if parties agreed
• Within «1» month the inventor/s should be informed in writing if HEI renounces the right anytime anywhere.
Invention Disclosure Process in HEIs
REVENUE SHARING:
• At least one third of the income goes to the inventor/s.
• Contracts between all related parties are essential to identify the amount and payment terms.
• HEI’s share should be used primarily for financing the expenditures related to the research, development, (patent) application, registration and commercialization activities of the inventions.
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First debate ownership of inventions and TT The argument: ownership is key but it raises many questions
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European Parliament Report on knowledge transfer, nov 2012
The ownership of patent:
university or TTO? 3 models :
- TTO is only an intermediary
- TTO is licensed with a right
to sublicense
- Isis : assignment to the TTO
with a license back to
university
The ways to assign ownership could be different
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Debate 2: revenue sharing between University/researcher/TTO Argument: revenue sharing is important but transparency is more important
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1- Inventors’ shares of the revenues are positively related to license Incomes 2- Lower shares to inventors may create an incentive to have patents assigned to start-ups and/or reduce the disclosure of inventions to the university. 3- Not only revenues to the inventors themselves, but also to their departments and institutes have been found to be effective for raising license income 4- But the sharing systems and proportions are actually very diverse: an European study on 242 TTO respondents, 16
(6.6%) answered that inventor(s) usually do not receive a share of the revenues generated from the IP; 88 (36.4%) stated
that institutional units don’t receive a share and 48 (20%) answered that the PRO is not entitled to revenues.
The knowledge transfer office does not receive any direct revenues in the large majority of PROs (70%).
5- In 41% of the institutions all expenses, and in 30% some expenses (e.g. out of pocket costs for external services) are deducted from gross revenue before this is shared.
Knowledge transfer study, EC, 2012
What do we know about revenue sharing?
Conclusion: Established clear principles for the sharing of knowledge transfer revenues among the organisation and inventors is essential
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ISIS (Oxford) experience
REVENUE SHARING FROM LICENSING
For each piece of intellectual property, the revenue from
successful exploitation by Isis is:
*first subject to repayment of external project costs (inc.
patenting, exploitation, legal);
*Isis then retains 30% as a contribution towards its ongoing
costs on this and other patents;
*the remainder, i.e. 70% of the net licence income, is then
passed on to the University for distribution to the
researchers, General Fund and Department, in accordance
with University Council Regulation 7 of 2002.
KU Leuven
A clear factor in the success of LRD is the strong
incentive KU Leuven created for researchers to engage
in technology transfer.
83% of the revenues generated by licensing, patents,
collaborations or spin-outs flows back to KU Leuven’s
academics to invest as they see fit in research-related
expenses, including lab equipment, lab technicians or a
new computer.
“You need to have an incentive for researchers to
engage in technology transfer” says Van Dun. In the
case of KU Leuven, the funds are held in accounts
owned by the university but the professor holds the
authority for investment. “That is a very, very
motivating factor,” he adds.
KU Leuven itself receives 17 percent of technology
transfer revenues to cover overheads, half of which are
channeled back to fund LRD’s operations.
Some examples
Revenue Sharing in the US
• Revenue sharing policies vary widely among US universities
• Most common concept: • 33% to inventor(s) • 33% to college/department • 33% to university/TTO
• Costs are recovered prior to income distribution
• Inventor shares are split evenly unless listed in the disclosure
• Uncommon to provide income share to non-inventors
• Older study of 102 US universities correlated higher distribution to faculty with higher overall licensing income
(Journal of the European Economic Association 2(2-3):252-264 · February 2004)
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Debate 3: financial self-sustainability of the TTO? Argument: so difficult but inevitable
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The revenue model of the TTO
Revenue
Operating costs
Cumulative cash flow
Net result
10 years to reach financial autonomy; 20 to be profitable
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Public research monetization remains an exception
US Financial Sustainability of TTOs
• Linked directly to royalty sharing policy
• Higher inventor distribution leads to less money for cost recovery and sustainability of TTOs
• Potential for sustainability closely linked to existence of medical schools
• Valuation of early stage life science discoveries is higher than other fields
• Very few US university TTOs are profitable
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Invention valorization is not only monetization (AUTM) There is
nothing in economic theory to suggest that TTOs should maximize license revenue. Social welfare might be better served by TTOs facilitating local economic development or helping with the translation of academic research into products.
My View
• Do not start a TTO to make money
• TTOs will not make money
• If a TTO makes money it will be a combination of skill and luck
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But shortage of resources threaten R&D and TTO – thus financial autonomy is the key to survival
Typical orders of magnitude of university revenues
Research budget
+..30..50% from Tech Transfer!
June 18th 2016
“A study by the American Association
for the Advancement of Science found
that, at the current rate of
disinvestment, overall federal
research and development funding
could be reduced by $57.5 billion or
8.4 percent by 2017.
In the face of this growing
challenge, research institutions are
pursuing additional means to
combat the decreased investment in
research by finding alternative
operational revenue sources. One
method being pursued by technology
transfer professionals lies in retaining
equity in the companies that license
the institutions’ technology. In 2014,
the number of licenses executed that
included equity acquired by the
research institution was up 17
percent, from 469 in 2013 to
549.(AUTM licensing activity survey 2014)
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Research monetization channels are multiple
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Global reflection for the future (my view) innovation is at the core of economic growth and private profit University and public research lab are more and more at the source of radical innovation - as firm research has to become closer to the market So the capacity to invent and transfer the inventions to the market should find its economic model