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Milano, training workshop Unchain Project. University – Industry relationship. Milano – July 12th 2010. Gianluca Valentini Deputy Rector for IP & spin-off Politecnico di Milano. Summary. The Technology Transfer models How University and Industry contribute to the innovation

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slide1

Milano, training workshop

Unchain Project

University – Industry relationship

Milano – July 12th 2010

Gianluca Valentini

Deputy Rector for IP & spin-off

Politecnico di Milano

summary
Summary

The Technology Transfer models

How University and Industry contribute to the innovation

The Technology Transfer strategy and organization @Polimi

The importance of University – Industry research agrements for the social development

Final remarks

slide3

The “open science” model

Research contracts

Industry funding

Public funding

research

RESEARCH

(results, inventions, innovation)

Industry IP

Publications

  • In the “open science” model:
  • Broad circulation of ideas through conferences and publications as the most important KT channel
  • Universities not involved in entrepreneurial initiatives
  • Results of research funded by industry belong completely to industry
  • Concern about changes which might contribute to “close” the system

innovation

development

Source: Pietrabissa (2008)

3

slide4

A more comprehensive model

Research contracts

Industry funding

Public funding

research

ricerca

RESEARCH

(results, inventions, innovation)

Publications

SELECTION

EU research projects

Seed capital

innovation

innovazione

PROTECTION

COLLABORATION WITH INDUSTRY

Company INCUBATION

PROTECTION

Spin-offs

Start-ups

development

New productsNew technologies

Licences

Royalties

sviluppo

4

slide5

Rather than a choice between Open Scienceand “Triple Helix”, we suggest to integrateopen scienceinto a more comprehensive model

Trends in Technology or Knowledge Transfer

  • Universities are progressively fostering the valorization of their research results, through the IP management carried out by dedicated offices
  • Most of pre-competitive research activities are carried out within university-industry networks. Therefore, IP management is becoming highly complex.
  • The Market of Technologies is growing at international level. New business models between university and industry are constantly introduced.
  • Some of the more experienced universities are challenging their current model for KT (e.g. maximize license fees vs. maximize research revenues)
what is technology transfer in a university

Technology Transfer

Knowledge Transfer

or

Professionists

Scientists

Managers

Entrepreneurs

Professionists

Scientists

Managers

Entrepreneurs

Benefits:

social

economic

cultural

...

Benefits:

social

economic

cultural

...

Knowledge

Innovation

Knowledge

Innovation

What is Technology Transfer in a University?

1

high education

2

scientific research

managing models

Research centers

    • Universities
    • PROs
    • Scientific parks
    • other (projects) ...

scientific skills

(knowledge, vision,...)

Service companies

skills ?

(mixed)

  • Industries, enterprises, ...
    • third companies
    • start up
    • spin off
    • other (joint projects)...

industrial skills

(technology, market,...)

Managing models

1

KT done by external agents

New knowledge production

KT

New knowledge application

managing models1

1

1

2

2

3

3

4

4

KT done by external agents

KT done by external agents

integrated KT

integrated KT

KT for offering knowledge

KT for offering knowledge

KT for demanding knowledge

KT for demanding knowledge

(company with a research center,

PRO with spin off)

(company with a research center,

PRO with spin off)

New knowledge production

New knowledge production

New knowledge production

New knowledge production

New knowledge production

New knowledge production

New knowledge production

New knowledge production

KT

KT

KT

KT

KT

KT

KT

KT

New knowledge application

New knowledge application

New knowledge application

New knowledge application

New knowledge application

New knowledge application

New knowledge application

New knowledge application

Managing models
a model

need

need

research

research

innovation

innovation

develop.

develop.

industrial product

industrial product

  • invention
  • right
  • know how

PATENT

PATENT

UNIVERSITY

INDUSTRY

A model

1 €

1 €

10 €

10 €

  • invention
  • right
  • know how

UNIVERSITY

INDUSTRY

slide10

university

exit

SPIN OFF

RESEARCH CONTR.

industry

entry

The gap

University

Industry

(Market)

(Research)

slide11

More concretely: the vision

U

I

Development & Production

Education & Research

TOOL

KT

Profit

GOAL

University and Industry do different things for different purposes  but they are not competitors

they can collaborate

Source: Pietrabissa (2008)

11

slide12

Need

Solution

Product

Research

U

I

The Bricks of the Innovation Line

Source: Pietrabissa (2008)

12

slide13

U

I

Research

Development

Spin off

Joint lab

Patent

Res Contract

gap

The Castle of the Innovation Line

Source: Pietrabissa (2008)

13

slide14

Patent

Need

Product

Spin off

Joint lab

Res Contract

U

I

The Castle of the Innovation Line

Development

Research

Source: Pietrabissa (2008)

14

slide15

Financial Inst.

Industry

University

It is possible to generate an effective and efficient TT process only if all the actors are pushed towork together, playing their roles and taking their responsibilities

The Roles of the Actors of the “model”

Political Inst.

should generate the rules and direct the actors

should invest in research-based ventures

should develop and industrialize new products

should generate research-based inventions

Source: Pietrabissa (2008)

slide16

Development

Research

Need

Solution

Product

The Castle of Innovation

Patent

Spin off

Joint lab

Res Contract

Development

Research

Source: Pietrabissa (2008)

16

slide17

Technology Transfer model

Handled by TTO

Drivenby Research Dept.

  • Transfer by publications
  • Transfer by contracting
  • Transfer by cooperating (joint labs)
  • Transfer through infrastructures (test facilities)
  • Transfer by training
  • Transfer by head (Phd, spillover)
  • Transfer by licensing
  • Transfer by spinning off

17

tools for university industry relationships
Tools for University – Industry relationships

Research agreements between University and Industriesare win-win tools to foster innovation and socialdevelopment

… but …

The differences between players must be undestoodrespected and valorised

university and industry are different players with their own mission and structure
University and Industry are different players with their own mission and structure
  • University
  • Mission
  • Organization:

University grants high autonomy to Departments, research groups and single researchers

  • Industry
  • Mission
  • Organization:

Targets and rules are shared all over the company

Hierarchical decision processes

High Education

Scientific Research

Technology Transfer

Profits

Production of goods and services

  • University and Industry have complementary objectives and scopes
    •  Conflicts of interest can be easily managed
  • There exist wide diffences in the culture and language
    •  Relationships are sometimes difficult and uneffective
the main reasons for signing university industry research agreements
The main reasons for signing University-Industry research agreements

Simplification of the administrative processes

  • Researches do not care of administrative and legal issuses (the just need to do good science !)

The lag time for the signature of specific reasearch contracts is strongly reduced

  • General conditions are approved in advance, only scientific and financial issues need to be negotiated

The ownership of results and IP right are pre-defined according to agreed policies

  • The University and the Industry feel more confident
  • Researchers must pay great attention to their obligations

“Innovative approach” for the University-Industry relationship

  • The University Central Administration (not single researchers) negotiates with the Company Headquarters to establish long-term wide-scope research agreements
the specific terms for intellectual property mgt
The specific terms for Intellectual Property mgt.

The terms referring to the ownership of research Results and Intellectual Property Rights are amongst the most important ones

The ownership and the terms of use for Know-how and IPR are predefined

  • Know how Industry
  • Patents [Industry University]

We strongly suggest that co-assignment in patent applications is warranted to the University in order to defend the Researchers and University reputation

  • After patent filing, University must grant the freedom of operation to the industry by perpetual license agreements

Publication rights must be granted to the University

  • Reasonable confidentiality conditions must be negotiated

The IPR provisions apply for 6-12 months after the expiration of the contract

negotiation of university industry ipr agreement
Negotiation of University-Industry IPR agreement

Is there a real conflict of interest between University and Industry for what concerns IPR ?

... much less than people believes !

  • What does University wants?
  • Moral reputation for its research activity
    •  co-assignment in patents !
  • Reasonable money awards to reward its Researchers
  • The possibility to continue the research in the same field after the expiration of the contract
  • The free of charge use of the results for teaching and research
  • The possibility to publish part of the results in scientific journals
  • Long-term relationship with the Industry instead of sporadic collaborations
  • What does Company wants?
  • The complete ownership of the know-how generated within the contract
  • The unlimited freedom of operation for industrial and commercial purposes
  • The co-ownership of IPR (patents)
  • The complete control of patent filing and international extensions
  • The right to pursuit the legal defense in case of patent infringement
  • Confidentiality about all trade secrets
  • Delay in public disclosure of scientific results to allow patent filing
typical provisions of ipr agreement
Typical provisions of IPR agreement

The property of all non patentable results goes exclusively to the Industry that can exploit them without any limitation

In case of patentable inventions the following procedure applies:

  • Researchers must disclose the invention to the industrial partner as soon as possible and should collaborate to define novelty and claims
  • The Industry must confirm the interest for the invention and decides wheter to file a patent application or keep a trade secret
  • The Company should take care of:
    • patent text and claims
    • payment ofall taxes and expenses
    • payment of a reasonable award to the University
  • Co-ownership is granted to the University
  • University grants the Industry the complete freedom of operation
confidentiality committments
Confidentiality committments

University undertakes proper actions to prevent confidentiality breaks by its Researchers

University keep the rights to use (for free) the results of the research for educational and scientific purposes

  • Researchers must submit to the Industry the paper drafts before publication in order to achieve the approval
  • The Industry should not deny the authorization without motivations

Confidentiality on trade secrets should last for a time long enough to prevent any damage to the industry (usually 5-10 years)

The University Name and Logo should be used only in scientific and technical publications

  • The Industry should refrain to use the University logo in advertising unless specifically authorized
  • University should provide the proper credit to the funding Company in public disclosure of the scientific results
final remarks
Final Remarks

Universities should play a responsible role in the development of the society through technology transfer and cooperation with industries

Relationship between University and Industry should be properly managed

Intellectual Property Rights are key issues for the relationship between Universities and private Companies