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

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