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dr. sc. Vlatka Petrović Head, Technology Transfer Office

Regional Examples of Best Practices for Developing an Institutional IP Policy. dr. sc. Vlatka Petrović Head, Technology Transfer Office Acting Head , Centre for Research, Development and Technology Transfer. University o f National a nd World Economy Sofia , November 25 and 26, 2015.

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dr. sc. Vlatka Petrović Head, Technology Transfer Office

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  1. Regional Examples of Best Practices for Developing an Institutional IP Policy dr. sc. Vlatka Petrović Head, Technology Transfer Office ActingHead, Centre for Research, Development and Technology Transfer University of National and WorldEconomy Sofia, November 25 and 26, 2015

  2. www.unizg.hr University of Zagreb

  3. University Technology Transfer Office Regulation Approved by the University Senate on 16. December 2008 RATIONALE • Enables a route for the commercialization of IP resulting from R&D performed at the University Faculties (which are separate legalentities) • Gives a mandate to the University level TTO • Based on the principle of voluntary participation by the Faculties and researchers

  4. University TTO Regulation - Procedure • FORMAL DISCLOSURE • Made by Researcher and Faculty Head (Dean) • IP DUE DILLIGENCE • IP ownership clarified • ASSIGMENT OF IP TO THE UNIVERSITY • Formal contract, signed by UoZ, Faculty and Researcher • UoZ agrees to evaluate the IP and commercialize if the IP passes evaluation; UoZ to cover the costs of these activities • UoZ has the right to terminate the contract at any time

  5. University TTO Regulation - Procedure • TTO EVALUATION • IP protection aspects – protection options • Commercial potential - commercialization strategy • Report delivered (max 90 days after Contract) • UNIVERSITY DECISION • Assessment Committee gives an Opinion (max 60 days after Report) • Rector makes the final Decision (max 30 days after Opinion) Assessment Committee - at least five members appointed by the Rector + Vice-Rector for science and technology + Head of TTO

  6. University TTO Regulation - Commercialisation • IP PROTECTION & COMMERCIALISATION • Based on proposed strategy • UoZ free to engage external experts to support the activity • UoZ covers the costs • REVENUE SHARE SCHEME • Direct costs are subtracted from the revenues received • Default revenue split: 40 (Researchers) : 40 (Faculties) : 20 (University) • UoZ to invest it’s share in support and promotion of R&D and IP commercialization

  7. University IP Management - Handbook • IP Creators • Intellectual Property Rights • Commercialisation • IP in Research and Development • Model documents: • agreements (NDA, licensing, commercialisation, R&D project collaboration...) • legal statements • IP management clauses (can be used in an employment contract or IP policy) http://cirtt.unizg.hr/o-nama/publikacije/ March, 2015

  8. UoZ, School of Medicine – IP Management Regulation Approved by the School of Medicine Council on 14. July 2015 RATIONALE • Stimulating IP commercialisation • Ensuring efficient translation of research results to users • Additional income for research activities

  9. School of Medicine IP Regulation - Scope • intellectual creations that belong to the School (by law or thorough contracts) + non-exhaustive list • employees, students and external associates provided there is a written permission or contract Collaboration with third parties - contract with IP provisions that address: right to use results for further research, right to publish Biological materials – Material Transfer Agreement needed for release from the School

  10. School of Medicine IP Regulation - Procedure Invention disclosure made to the Science and Technology Transfer Office => Ensuring the right to publish while addressing the need for patent protection; patent application filing in 60 days if required by publication schedule STTO - technology assessment (due diligence, initial patentability assessment, initial market potential assessment) and IP protection and commercialisation strategy proposal => Report Committee for Intellectual Property – formal Opinion on further management of IP with cost assessment => 5 months to final decision made by the Dean's Collegium (Dean + Vice Deans) • if the decision is negative, IP released to creators (if no obligations towards third parties) Rationale for the negative decision: low likelihood of successful commercialisation or associated costs exceed available funds

  11. School of Medicine IP Regulation - Commercialisation Possible commercialization strategies - licensing, spinout company formation, charging for related services Revenue sharing - revenue after deduction of direct costs and taxes under 65.000 EUR (500.000 HRK) 25% School of Medicine / 25% School of Medicine Intellectual Property Fund / 50% IP creators over 65.000 EUR 30% School of Medicine / 30% School of Medicine Intellectual Property Fund / 10% IP creators’ research costs/ 30% IP creators

  12. UoZ, Faculty of Electrical EngineeringandComputing – IP Management Regulation Draft version – to be approved by the Faculty Council RATIONALE Clarifying IP management issues in teaching, research and commercialisation activities

  13. Faculty of Electrical Engineering and Computing IP Regulation - Scope • Industrial property and computer programs - created under work contract or while fulfilling study programme requirements or using significant Faculty resources • provisions obligatory for employees and students • external associates: contract needs to address IP issues Teaching materials - Faculty may distribute and publish (restricted system) for teaching purposes without additional compensation to Faculty employees, non-exclusive 5 years license for Croatia; • additional written permission needed for release to students

  14. Faculty of Electrical Engineering and Computing IP Regulation - Scope IP in collaboration agreements - guidelines • Faculty seeks to retain IP rights whenever possible • joint ownership possible - based on documented contribution • financial compensation to be negotiated for additional ownership or exploitation rights • Faculty will seek to retain the rights for research and teaching use and the right to publish the results • background IP or any IP that is not part of the project goals is excluded

  15. Faculty of Electrical Engineering and Computing IP Regulation - Procedure • Written notice to the Dean • Dean may request advisory assistance form the Committee for cooperation with industry and innovation, other Faculty employees and bodies or external experts • Dean makes the decision regarding further IP management => further steps may include: IP protection, proof of concept, market assessment, commercialisation Faculty and Creators agree on the implementation plan which addresses financing and human resource needs In case of negative decision or no decision within 60 days IP is consideredto bereleased tothe IP creators

  16. Faculty of Electrical Engineering and Computing IP Regulation - Commercialisation Revenue sharing – revenue after deduction of registration and commercialisation costs • 20% Faculty of Electrical Engineering and Computing • 80% IP Creators

  17. Thankyou for yourattention • dr. sc. Vlatka Petrović • Head, Technology Transfer Office • University of Zagreb • Centre for Research, Development and Technology transfer • E-mail: vlatka.petrovic@unizg.hr • Web: http://cirtt.unizg.hr/

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