Bayh-Dole Act The Portuguese Reality: Challenges and Opportunities

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1 Bayh-Dole Act The Portuguese Reality: Challenges and Opportunities Telmo Vilela Member of the Board Lisboa 27th February

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3 Agenda IP protection, management and valorization at Portuguese Universities - Before the year 2000: the age of outlaw ; - The New Millennium: first steps (first falls?); - IP Regulations and IP Code (work in progress); - The Pitfalls; - Balance: Are we doing it the right way or should we go rad n bad? - Debate (and debate again ) 3

4 Before 2000: The Age of Outlaw General Picture: absence of internal policies and guidelines regarding ownership, management and valorization of IPR s developed at universities (general rule); no central management of IPR s and no staff committed and prepared to deal with the protection, management, and valorization of University inventions; no disclosure forms or any kind of information was provided to the University regarding possible IPR s arising from R&D results; Faculty Staff filed for the IP Rights, on their own name; 4

5 Before 2000: The Age of Outlaw Questions: Was it allowable under the legal framework? Was there (is there) any Bayh-Dole Act alike? Was (is) there any specific legal provision addressing ownership of university inventions? Was (is) there any legal provision on the law that applies to the determination of university inventions ownership? 5

6 Before 2000: The Age of Outlaw At the end: Faculty Staff who filed for patent applications in their own name were breaking the law 6

7 The New Millenium: first steps (first falls?) 7

8 IP Regulations and IP Code (work in progress) - Industrial Property Code Article 58 GENERAL RULE ON THE RIGHT TO PATENT 1 The right to patent shall belong to the inventor or his successors in title. 2 If two or more persons have made an invention, any of them may apply for a patent on behalf of all. 8

9 IP Regulations and IP Code (work in progress) - Industrial Property Code Article 59 SPECIAL RULES ON ENTITLEMENT TO A PATENT 1 If an invention was made during the performance of an employment contract in which inventive activity is provided for, the right to the patent belongs to the company. 2 In the case referred to in the previous paragraph, if the inventive activity is not especially remunerated, the inventor is entitled to remuneration in keeping with the importance of the invention. 9

10 IP Internal Regulations General Principles IP Regulations and IP Code (work in progress).: University retains IP Ownership.: Scope: all inventions developed by internal staff or other w/ Un. Resources.: Respect for Inventor moral rights (right to be named).: Right to publish (acc. to Patent Strategy).: Duty of disclosure for all staff Inventors.: (Net) Profit sharing scheme with Inventors.: University leads all exploitation efforts.: Inventor isn't charged with any costs.: Exceptions: R&D contracts w/ companies, joint ownership.: Win-win solution for Staff and University 10

11 Pitfalls - not having a solid IP Policy (like the Sinatra song: there may be trouble ahead!) - not having a good patent portfolio management strategy! (patents can make you rich or bankrupted); - not being able to have the faculty staff committed (being evolved is not enough: you better have pigs, and not chickens!) - not being able to complete the metamorphosis phase: (shouldn t the bug be a beautiful butterfly by now??) 11

12 Right way or go rad n bad? Should IP belong to faculty staff? Should faculty staff be entitled to choose the TTO he/she thinks is more capable of doing the work? Therefore, should we open competition between TTO s? Nonsense?? Kauffman Foundation Experts' Solution for University Technology Licensing Reform Named to List of 'Ten Breakthrough Ideas for 2010' by Harvard Business Review Authors say a free agency for inventors will get innovations to the market faster and create jobs, benefit consumers, researchers and universities 12

13 Right way or go rad n bad? Is it reasonable to have 15/20 TTO s in a country like Portugal? Shouldn t we create centralized and specialized TTO s (per field), which would aloud to allocate more resources to these TTO s? Shouldn t UTEN evolve to a liaison office helping PT university patents and spin-off s cross the ocean to US? Multiple team with staff from US and PT actually working to close deals in the US? Isn t it all a question of (poor marketing)? Shouldn t faculty staff be discharged of exclusivity obligations and be somehow motivated to adopt an entrepreneurial attitude? What could be done to change our culture of once you fail you will always be a loser? Disclaimer: this does not reflect my personal opinions!!! 13

14 IP Management and TT: at the end it s all quite simple right?? 14

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16 Debate 16

17 Contacts INPI Telmo Vilela Member of the Board Telef: telmo.vilela@inpi.pt Blue Line: Fax: atm@inpi.pt Site: Adress: Campo das Cebolas, LISBOA 17