Towards a New IP Consciousness in Universities and R&D Institutions: Case Show

Transcription

1 IP Policy for Universities and Research and Development Institutions Tallinn, Estonia April 3, 2014 Towards a New IP Consciousness in Universities and R&D Institutions: Case Show Laurent Manderieux L. Bocconi University, Milan, Italy 1

2 OUTLINE 1. A new behavior for a globalized Research Community Recent Developments and Trends in Protecting and Managing IP at Universities and R&D Institutions: 2. New IP models in European Universities 2

3 Part 1 A New Behavior for a Globalized Research Community Recent Developments and Trends in Protecting and Managing IP at Universities and R&D Institutions 3

4 UNIVERSITIES AND IPRs: A NEW BEHAVIOR As per OECD+EU Studies, European Universities get conscious that IPRs transform knowledge into value Technology transfer from University to the marketplace mostly takes place in the form of IPRs, since Universities are essentially knowledge providers >>> new trend: KT instead of TT In general, IPRs are not the only tools that permit knowledge transfer, but they are mostly the legal tool used 4

5 IPRs MOSTLY INVOLVED Current findings Patents FOR UNIVERSITIES Plant Variety Protection Certificates Copyright But also Trademarks, Industrial Designs, Utility Models The IPRs are created automatically (CR) or further to a costly national granting procedure 5

6 RECENT FINDINGS: WHEN ARE UNIVERSITIES INVOLVED? At the creation of the IPR, i.e, whenever the IPR is generated In the circulation of the IPR And less often For the enforcement of the IPR 6

7 THE NEW IP OBJECTIVES FOR UNIVERSITY Freedom to operate in research Immediate use of creativity Secondary use, i.e. knowledge transfer >>> Ethical value of knowledge generated vs. economic value of knowledge generated 7

8 IPRs AND THE CONCEPT OF PROPERTY An issue of key academic interest, with a view to better understand the logics and ethics of IPRs An issue that is indirectly affecting Technology Transfer from the University Still, in this presentation we consider IPRs as they are mostly considered in IP Laws of OECD Countries 8

9 CURRENT COOPERATION PARTNERS WIPO Patentscope, EU and OECD statistics show that Universities are in a key position in technology / knowledge provision in National and International KT schemes. Internationally, they play a key role in: North North Technology transfer North - South and (even further) South - North Technology transfer South South Technology transfer 9

10 THE COOPERATION PARTNERS Cooperation between Universities from developed and developing countries and companies or universities in developed countries (e.g. in European Union FP7 / Horizon 2020) Universities from developed countries and companies or universities in developing countries Universities from developing countries and companies or universities in developing countries 10

11 The IP landscape Geographical diversity of Technology Transfer schemes For EPO Countries: With Asia (e.g. India, China, most of ASEAN ) With Latin America (e.g. Mexico, MERCOSUR ++) With a few African countries (e. g. Tunisia, Morocco, South Africa) With non-epo Eastern Europe Within the EPO area + with OECD Countries 11

12 The IP landscape Still, a work in progress area Very diversified IP and licensing legislation for very different economies Very different University/ PROs situations between countries and within countries 12

13 The IP landscape Key substantive IP issues at stake EVERYWHERE Issues at stake: Quality of Research Ownership (including importance of IP Policies in Universities) University functioning (TTOs) and funding Enforcement risks 13

14 The IP landscape Key country example I: USA Issues at stake: Ownership: clear situation University functioning (TTOs): major role of Universities, excellent funding potential Enforcement: excellent framework, but very high costs 14

15 The IP landscape Key area example II: EPO Countries Issues at stake: HIGH QUALITY OF RESEARCH BUT: Ownership: non harmonized laws, only sometimes compensated by University Statutes University functioning (TTOs): many PROs, overlaps, lack of training, not many activities, disorganized funding Enforcement: not harmonized >>>>> the EU +EPO Member States try to federate efforts and sort out issues of ownership, FP7 /Horizon , enforcement, 15 etc

16 OWNERSHIP LAWS IN THE EU Institutional ownership: In All Baltic Countries Austria (2002), Belgium (1998), Czech Republic (1990), Denmark (2000), Finland (2007/2010), France (1982), Germany (2002), Greece (1995), Hungary (2006), Ireland (1964/1992), Luxembourg (1992), Netherlands (1995), Poland (2000/2004), Portugal (1995), Slovenia (2006), Slovakia (2000), Spain (1986), UK (1985) Ownership to inventor: Italy (2001/2005), Sweden (1949) 16

17 Complete changes in ownership situation From individual inventor ownership to institutional ownership: Austria (2002), Belgium (1998), Denmark (2000), Finland (2007/2010), Germany (2002) From institutional ownership to ownership to inventor: Italy (2001/2005) 17

18 Institutional ownership: Two situations Automatic attribution: Estonia, France, Ireland, Latvia, UK Usually no reversion rights to the employee. Employee s right to compensation depends on National Legislation Non Automatic Attribution or pre-emption rights: Austria, Finland, Germany, Lithuania Reversion rights are generally possible (within 3 to 6 months) + Fixed Remuneration Table, OR NOT, or no 18 remuneration (Lithuania)

19 UNIVERSITY IPRs IN EUROPE Despite some interest, a small dimension Young IPR Protection and Management Entities Small IPRs Portfolios even if a few national University systems, in particular in younger States, are highly ranked in the EU Scoreboard (Slovenia, Estonia) 19

20 Part 2 New IP Models in European Universities 20

21 UNIVERSITY OWNERSHIP: YES OR NO? A Theoretical Question with Major Impact BUT Practical Solutions in New IP Models for Universities e.g. Tartu vs Uppsala 21

22 VARIETY OF MODEL IP RULES IN UNIVERSITY A few, non exhaustive list, of References: Minho Warwick Heidelberg Oslo Helsinki Oxford 22

23 UNIVERSITY IPRs: UNTIL WHAT DETAIL? Minimum standards: what s in? Broad definition of what IP is protected? Maximum standards: until where? Detailed definition of what IP is protected? Oslo (even the issue of teaching/ students' material is covered) Remuneration tables: strict or flexible tables Obligation for Researcher to Notify IP:Warwick Relations with third party companies: Oslo Favouring the University Company: Oxford, Heidelberg Avoiding University Employee Litigation 23

24 UNIVERSITY IPRs: THE ISSUE OF OPEN IP From Fashion to Replying to Real Needs A few References Oslo : strict on Industrial Property Rights, BUT leaving Freedom on CR Heidelberg: ONLY Recommending Open IP HELSINKI: HELDA Compulsory Repository 24

25 MORE GENERALLY: The issue of Openness in Science Requirement to publish in digital format -National: e.g. Spain (2011 Science, Technology and Innovation Law), Estonia -Institutional: e.g. University of Trento, Italy, US National Institutes of Health (NIH) Establishing knowledge repositories e.g. EC: Digital Repository Infrastructure Vision for European Research (DRIVER), Open Access Infrastructure for Research in Europe (OpenAIRE) New co-operative models, adoption of online guides to open access journals publishing

26 Thank you 26