IP/PATENT TRANSACTION SYSTEM BETWEEN R&D+ INSTITUTES PROVIDING AT LEAST A BRIDGE BETWEEN US SCOPE

Transcription

1 IP/PATENT TRANSACTION SYSTEM BETWEEN R&D+ INSTITUTES PROVIDING AT LEAST A BRIDGE BETWEEN US VISION: OPENING UP IP? SCOPE IS THERE A DEMAND FOR MORE OPEN IP FROM R&D PARTNERS? IP IN MOTION DEVELOPMENTS IN IP MONETIZATION BUSINESS Dr. ir. Vincent Ryckaert, European Patent Attorney IMEC IP Business and Intelligence Director Mr. Sigrid Gilis Attorney at Law and IP Specialist

2 GOAL OF THE PRESENTATION renew and strengthen the interest global picture open innovation/ip monetization divergence between policy and field reality adverse effects in the market issues to be decided to find the right entry point motivate by showing IMEC interest in this (contrary on the more theoretical analysis presented last time) present R&D life cycle model to introduce terminology short remark to theoretical studies on IP and game theory most profit for most IP by non-exclusive licensing 2

3 EPIP CONFERENCE LEUVEN OPENING UP IP? IS THERE A DEMAND FOR MORE OPEN IP FROM R&D PARTNERS? IP IN MOTION RECENT INSIGHT DEVELOPMENTS IN THE IMEC IP BUSINESS Dr. ir. Vincent Ryckaert, European Patent Attorney IMEC IP Business and Intelligence Director Mr. Sigrid Gilis Attorney at Law and IP Specialist

4 1984 Established by state government of Flanders in Belgium Non-profit organization Initial investment: 62m Initial staff: ~ A. INTRODUCTION OF IMEC World-leading research in nanoelectronics Revenue 2010: 285 m (incl. 44 m grant from Flanders government) Staff: ~1900 worldwide Worldwide collaboration >600 companies

5 POSITION IN THE R&D LIFE CYCLE Time frame Longer term, many options Shorter term, applications Universities Shared R&D Platforms Industry Lower Higher R&D cost Providing focus for universities and basic insight and solutions for industrial partners 5

6 GLOBAL R&D PLATFORMS : TO THIS: Time frame Longer term, many options Shorter term, applications Universities Shared R&D Platforms Shared R&D Platforms Shared R&D Platforms Industry Lower Higher R&D cost Providing focus for universities and basic insight and solutions for industrial partners 6

7 IMEC BUSINESS PARTNERS The World s Largest Industry Commitment to Semiconductor Research in Partnership Lam RESEARCH

8 KEY FEATURES OF IMEC IP POLICY 1. Avoiding IP blocking for our Partners 2. Securing IP Rights for our Partners 3. Enabling Publications Tools: - Use of (selective) Patenting - Carefully designed IP model 8

9 IMEC IP GROUND RULES Open multi-partner model Cost & IP sharing with all Partners Fairness to ecosystem Non-exclusive use and exploitation rights (to make/have made, sell, offer to sell) semiconductor products Technology Transfer via Residents (creating Results jointly with IMEC) Co-ownership without accounting (for such jointly created Results) Access to IMEC Background Access to Material & Equipment: Normal Use clause Achieves non-blocking effect for the Partners 9

10 OPEN INNOVATION In-ward: Universities (PhD s > 200 persons) In-ward: Industry (Suppliers in-kind equipment/materials/software/ip blocks) In-ward: Industry (Industrial Residents >300 persons) Outward: Industry IMEC Industrial Affiliation Programs Development on Demand Low volume prototyping Technology Transfer Spin-off IP monetization Outward: Alliances To be worked at: IP in from Academia/Industry in a structured manner

11 WHO IS DEMANDING MORE OPEN IP? Industrial partners - shift to later life cycle Academia - focus on spin-off Government - more KPIs Internal - justified?

12 INDUSTRIAL PARTNERS SHIFT TO LATER LIFE CYCLE Governmental Funded - Fundamental Research: no industry - Basic Research Funded projects: no industry - Applied Research Projects: industry involvement and no industry financing - Applied Research Projects: industry involvement and co-funding Bilateral - Consortia, programs - Bilateral R&D - Development on Demand - Low Volume Manufacturing - Transfer and/or IP Licensing and/or Spin-off Creation - IP Monetization 12

13 ACADEMIA FOCUS ON SPIN-OFF Governmental Funded A B - Fundamental Research: no industry - Basic Research Funded projects: no industry Applied Research Projects: industry involvement and no industry financing - Applied Research Projects: industry involvement and co-funding Bilateral - Consortia, programs (cost sharing) Bilateral R&D - Development on Demand - Low Volume Manufacturing - Transfer and/or IP Licensing and/or Spin-off Creation - IP monetization 13

14 GOVERNMENT DEMANDS GROWTH OF PATENT PORTFOLIO 14

15 GOVERNMENT DEMANDS GROWTH OF PATENT PORTFOLIO ~120 filings/year 15

16 INTERNAL REQUEST FOR OPENING UP IP? What is openness? (open innovation, open source, open access) Openness: - trade secrets hardly used - publishing yes (in combination with patents) -talking without NDA not an issue for selected info over use of NDAs not requested by IP - sharing of material yes see standard evaluation agreements Questions to ask: - is the info you are open about really yours (and only yours)? - any confidentiality restrictions? (hitting liabilities)? - what is the value proposition left for paying partners? 16

17 The wrong question? IMEC MORE OPEN? - ARE WE NOT THE NON-EXCLUSIVE CHAMPIONS ALREADY? The wrong message! - MIGHT WE NOT BE HIT WITH LIABILITIES BECAUSE WE INTRODUCE SLOPPINESS? Can we decide on this? - WHAT DO OUR PARTNERS DICTATE? Industry NO Academia NO Government NO Internal YES BUT DANGEROUS ANYTHING TO GAIN? (or to loose how are we perceived externally?) 17

18 CONCLUSIONS ON IMEC OPEN IMEC seems to be known for its NON-EXCLUSIVE IP MODEL IN INDUSTRY (for some industry partners too much) on UNIVERSITY SIDE, the IMEC MODEL OF NON-EXCLUSIVE DEAL MAKING is NOT HEAVILY APPRECIATED IMEC is engaging in the more competitive field and models for extracting IP VALUE OPENNESS (if wrongly perceived) are CONTRADICTORY thereto IMEC is promoting NON-BLOCKING approaches for the IP market (policy-wise, PATENT POOLS) - but FULL OPENNESS seems RATHER NEGATIVE PERCIEVED in such context IMEC also promoted that UNREASONABLE IP DILUTION in the early state is rather HAMPERING technology entry in the market and defined lots of intermediate approaches so who is asking this? NOT OUR (paying) PARTNERS IN INDUSTRY, NOT OUR UNIVERSITY NETWORK, INTERNAL ONLY, WHY? 18

19 IP IN MOTION - IP MONETIZATION Sale of `old patents financial demand some successes new offerings out New offerings in preparation Considerations 1. Securing our eco-system and risk management cold feet - value versus risks/liabilities// parties to consider - which intermediaries to select //cost versus risks/liabilities 2. Business practice policy --- still struggling with - avoiding submarine type approach - Pre-offering to IMEC partners? 3. Why is IP market booming? Failure of Early Stage IP market Overemphasize on spin-off creation Lack of trust between R&D players 19

20 IP IN MOTION - IP BUSINESS IN EU R&D SCENE 1. None 2. BG licensing (exclusions?) 3. Joint IP minor 4. Joint IP highly debated in CA negotiations Emphasize on mutual blocking 20

21 IP PROPOSALS FOR TTO CIRCLE 1. Create IP business frame work for early stage IP Focus on patents (clearly identified IP) first Respecting each other business autonomy no joint business Adapted financial consideration Simple predetermined (parameterized) scheme 2. Apply such IP business frame in collaborations In funded projects Especially on joint IP 21

22 SITUATION TODAY Scope patents or broader Might open difficult issues on improvement IP Scope BG program licenses or broader Seems to fit the R&D life cycle model Soft-co-management versus steered actions Voluntary or obligations Support Mediation Evaluation Evolutionary 22

23 GLOBAL R&D PLATFORMS: GOING FROM THIS Time frame Longer term, many options Shorter term, applications Universities Shared R&D Platforms Industry Lower Higher R&D cost Providing focus for universities and basic insight and solutions for industrial partners 23

24 GLOBAL R&D PLATFORMS : TO THIS: Time frame Longer term, many options Shorter term, applications Universities Shared R&D Platforms Shared R&D Platforms Shared R&D Platforms Industry Lower Higher R&D cost Providing focus for universities and basic insight and solutions for industrial partners 24

25 CONCLUSIONS 1. IMEC IP model more dynamic than ever before Broader license scope makes sense 2. IMEC recognizing and starting to use the IP market evolutions but caution on policy side We`d better create our own early life cycle IP market 3. IMEC experience a less open field environment 4. IMEC believes it is time to discuss IP in- and out-licensing with other EU research institutes 1. To overcome failure of early stage IP market 2. To overcome adverse effects of EOL IP monetization 3. To create true EU collaboration 5. IMEC willing to bring its experience with Academia on the table to achieve concrete solutions 25

26 Work Package 1 Facilitate R&D collaboration and increase the use of research results Dr. ir. Vincent Ryckaert, IMEC Dr. Olivier Eulaerts, JRC

27 EARLY(IER) STAGE IPR TRANSACTIONS BETWEEN R&D ACTORS AN OPPORTUNITY TO STRENGTHEN INNOVATION IN EU?

28 IPR TRANSACTIONS INDUSTRY IP/Knowledge Creation Licensing in/buy in Cross licensing Licensing-out/Selling-out INDUSTRY IP/Knowledge Creation Products Services Secondary IP market MARKET Products Services Secondary IP market

29 IPR TRANSACTIONS INDUSTRY IP/Knowledge Creation Licensing in/buy in Cross licensing Licensing out/selling out INDUSTRY IP/Knowledge Creation Products Services Secondary IP market Products Services Licensing out MARKET Licensing out Spin off Companies Contract Research Services Secondary IP market Spin off Companies Contract Research Services PRO IP/Knowledge Creation No licensing No acquisition PRO IP/Knowledge Creation No cross licensing (FTO)

30 IPR TRANSACTIONS BETWEEN PROS Why is this not happening? Emotional factors Not invented here syndrom other PRO s IP is unknown, we feel we are competitors (but are we really?) Trust issue (difficulty to leave another PRO to negotiate alone) Fear of change Risky aventure (lack of previous experience) Narrow perspective No short term effect underestimated potential duty to maximise the use of IP portfolios Technical aspects Insufficient portfolio management

31 IPR TRANSACTIONS BETWEEN PROS Why should it happen? Innovation is the only engine behind Europe s capacity to sustain its economic and societal model Europe invests heavily in Research, but performs less when transforming research into innovations IP portfolios of PROs are under used and ways to bring more IP to the market should be explored PROs are collaborating in R&D projects but rarely exploit jointly the complementary IPRs generated The present conservative stance is unproductive and lead PROs to either drop IP or sell IP on secondary IP markets

32 IPR TRANSACTIONS Between PROs A framework should be created to facilitate IPR transactions between PROs How to make it happen? Start small, on a voluntary basis Start with Patents, then tangible Know How (e.g. software), then knowledge Start with some demonstration as model e.g. on joint IP in funded projects KISS Keep it simple and standardised (model/standard agreements) K it fl ibl bi ti f d bil t l t

33 STATUS AND NEXT STEPS Work Package 1

34 WHAT HAS BEEN DONE SO FAR WP1 timeline October 2011 January 2012 March 2012 April 2012 Grenoble Mtg 1st brainstorming Survey on 9 Work Packages Brainstorming in Brussels on WP1 Rome Mtg Creation Working Group on WP1 (WGWP1) WP1 Aim to enhance the operations of the TTOs of the partner organisations by reducing barriers to collaboration, fostering the use of IP assets and know how, increasing interactions with industry and SMEs. The underlying goal is. exploring synergies with other work packages of the Circle

35 WORKING GROUP ON WP1 Proposal for Mandate To explore concrete ways to increase the use (both by Market and PROs) of the IPR and know how generated by the partners of the TTO Circle + to propose implementation plan. To report to the next plenary meeting. Proposal for Composition 1 representative from 3 to 5 partner organisations and 1 representative from the Secretariat of the network. Boundary conditions Partners shall remain owners of their IPR. Participation to the adopted initiatives will not be compulsory. Participation will be modular i.e. each organisation can participate to selected initiatives. Others? 35

36 WORKING GROUP ON WP1 Dimensions to explore PRO IP/Knowledge Creation IPR bundling Non exclusive use of IPR Exchange and use of Know How Common principles for IP in Freedom to operate joint R&D IP mediation mechanism Others PRO IP/Knowledge Creation 36

37 CREATION OF A PATENT POOL Purpose: sharing of existing technology and collaboration create mutual gains Initial iniative: creation of a Patent Co- Management platform/environment; this is a closed circuit for participating parties on a voluntary basis; royalty based; restricted to patents, predetermined to Background; with sublicensing scheme; co-management = cost sharing + option scheme.. * valuation system: fixed fee determined in advance by the offering party 37

38 IMEC: CO-MANAGEMENT SYSTEM * engaging parties: proposer/ Offering Party interested/ Receiving party * option = cost share = proposed 25% but free to set a % yourself; option fee = % fee of the cost * communicate the fee if the engager exercise the option for a background license: now fixed fee * predetermined character on the prices * proposer fixes the prices = fee per year 38

39 PURPOSE - IMEC * Important for research programs in our R&D life cycle * frame: free flow, less controlled * intermediate position might be support *starting with a simple basic model in order to rework the basic system on a gradual basis = start with a practical, fix and clear frame which can be adapted and expandend afterwards * diminish consortium agreements, * light version * exploration of an IP-dealing system 39

40 SCOPE - IMEC * patents * background licenses to start with: simple approach: licensing of BG, no know-how transfer or sael of patents; work with a frame that contains bare minimum = code of conduct * entering the patent pool and participation does not imply a prior offering * set up a code of conduct or regulation for engaging parties which can participate in the patent pool as a proposer or interested party at the sime time, while acting according to guidelines and resepcting contractual freedom 40

41 TTO COLLABORATION AGREEMENT * broader scope: know-how; softare, materials, equipment, patents, * immediately a moderated and more complex scheme * more incumbrances/issues: what with creation of new IP blocking * 41

42 TTO: CONSORTIUM AGREEMENT Four main elements: 1. access rights for R&D: internal research with possibility 3rd parties 2. Collaboration 3. Contract R&D=closer to the market 4. Exploitation System: you need to offer to participate Option = linked with Evaluation scheme 42

43 TTO * Broadening of IP aspects (vertically) * Broadening horizontally in R&D lifecycle: - sublicenses are linked/intertwined with FG, - pay for commercial use = ok - free for internal use and research program = ok - in between: intermediate phase needs to be taken into account * controlled system/ forced system 43

44 TNO: PRACTICALITIES 44

45 TNO: PRACTICALITIES * valuation of patents? *determining a minimum fee might be a hard burden on the Proposer how to assess a patent valuation? * limited scope to non-exclusive Bglicenses * IT-concept? Database/platform? How to make the system operational? * continue feedback/control: assign a manager/coördinator/intermediary/mediator * evaluation system * anti-blocking 45

46 WORKING GROUP ON WP1 Discussion 46