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Role of IP Benefiting from University-Industry Partnerships: Incubators and IP

Role of IP Benefiting from University-Industry Partnerships: Incubators and IP. Casey K. Chan National University of Singapore IP Academy of Singapore. New Paradigm. labor intensive high end manufacture value added manufacturing value creation. Investment Driven vs Innovation Driven.

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Role of IP Benefiting from University-Industry Partnerships: Incubators and IP

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  1. Role of IP Benefiting from University-Industry Partnerships: Incubators and IP Casey K. Chan National University of Singapore IP Academy of Singapore

  2. New Paradigm • labor intensive • high end manufacture • value added manufacturing • value creation Investment Driven vs Innovation Driven

  3. New Job Create • 15 million new jobs in the US from 95 to 2000 • 90%<50 employers

  4. Geek Index (Wired Aug 2001)

  5. Partnership • Only the scientific and technologically driven innovation can power the economy to be globally competitive. • Close collaborative partnerships in scientific research is critical to sustain this innovation.

  6. Corporations • Increase shareholder value • Servicing customers • Financial bottom line

  7. University • Education • Research • Service • ? entrepreneurship

  8. Paradigm Shift Can potentially create new problems • No longer straight forward partnership • Ownership of and access to IP • Conflict of interest • Once-clear lines are now blurred

  9. Academic Independence • Bias observation and conclusion • Confidentiality • Publication right • What is acceptable delay • Right of review vs right to censure and edit

  10. Conflict of Interest • Equity ownership vs royalty • Clinical trials • Paid consultant • Benefit • Founder • Use of product in which one has a royalty interest

  11. Dr. Oliveri versus Apotex Inc • deferiprone in the treatment of iron overload in patients with thalassemia major • drug lost effectiveness with long-term use • drug might worsen hepatic fibrosis • revised consent form • drug trails were being terminated by Apotex • published result in NEJM • threat of lawsuit for violating confidentiality agreement

  12. Management of Conflict of Interest • No exception school (MIT) • Management school (others) • Is there a conflict? • Can it be manage? • How to manage?

  13. Warranty & Indemnification • Does not warrant fitness for use or merchantability • Technology is usually early stage and requires much additional development • University has no control over product development • Requires indemnification for product liability

  14. Reach through clauses • For improvements • For research tools

  15. Reach Through Clause for Improvement • University general does not agree to blanket improvement clause • Exception: improvement is dominated by base technology • Terms of employment for academic staff is different from that of industrial scientist

  16. Research Tools • PCR • Vectors • Cre-Lox Recombinant • Stem cells

  17. Possible obligation from the use of research tools • No obligation • No patenting • First rights of refusal • Royalty on derivative

  18. Reach through clause for Research Tools • Pre-publication right • Rights of derivative material and IP • Typewriter analogy • Protest from the scientific community

  19. Tragedy of the Common • Great discoveries were available to all but no one benefited. • Bayh-Doyle – to promote the economic development of the products of federally funded research. • Has the pendulum swung too far?

  20. Benefits • Real-world issues and practical methods of problem solving • Enrich the professional experience • Widen the horizon of our staff and students beyond the academic frontier • Enhancement of translational research • Alternate source of research funding

  21. Mutually beneficial relationship when carefully managed • Detail is in the agreement • Work towards common goal • Understand each others’ objectives • Understand each others’ limitation • Academics need professional help in negotiation

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