The IPR strategies of the Italian National Research Council and its researchers
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1 The IPR strategies of the Italian National Research Council and its researchers motivations to file patent: an empirical study Intellectual Property Rights for Business an Society Birkbeck College, University of London September,, Barbara Angelini Italian National Research Council (CNR) Francesco Saverio Donadio Italian National Research Council (CNR)
2 The network of CNR s Institutes
3 CNR s Departments 1. Earth and Environment; 2. Energy and Transport; 3. Agro-food food; 4. Medicine; 5. Life Science; 6. Molecular Design; 7. Materials and Systems; 8. Production Systems; 9. Information and Communication Technology; 10. Cultural Identity; 11. Cultural Heritage.
4 CNR's Industrial Liaison Office Promotion of Industrial Research and Technological Innovation Support to the planning of joint R&D projects with companies Information and training Management of relations with financial subjects Support to spin-off creation IPR Protection, Marketing and Commercialisation Definition of protection strategy Filing of patents License contracts Transfer of know how
5 The 3 routes available under the current Italian legal system Inventions deriving from internal-funded research activities where the employee chooses to keep the ownership, sustaining individually all the expenses connected with filing and marketing. Inventions deriving from internal-funded research activities where the employee chooses to give CNR the right to filing the invention, by way of signing a private law contract. Inventions deriving from external-funded research activities where ownership of the patented inventions devolves to the CNR.
6 CNR Procedures: Extension Abroad Extensions are decided by the centralized CNR s Industrial Liaison Office on the basis of sound industrial interest.
7 CNR-owned patents extended abroad after filing in Italy in the period Nr. Patents filed in Italy Nr. Patents filed (PCT EPO USPTO, other) in the following 12 months) Source: : CNR Industrial Liaison Office
8 CNR Procedures: Commercialization Negotiation: between CNR s Liaison Office and Enterprise: a) Secrecy Agreement Industrial b) Option Contract in view of licence c) Licence (exclusive or non-exclusive) Contract Monitoring of contractual obligations
9 CNR License contracts in the period Nr.License contracts Nr. Patent licensed Source: : CNR Industrial Liaison Office
10 Empirical study: : data analyzed The questionnaire was sent to all CNR s researchers who filed at least one patent; The period taken into consideration (2000/2005) cover all thelegislative changes that have taken place in Italy with regard to IPR; The questionnaire was composed of 3 parts: Personal Data, Individual and Institutional factors to patent, Influence of Legislative changes.
11 Financial origin of Researcher s patent 46,30% 53,70% Co-developed patents Patent developed from internal funds Source: : CNR Industrial Liaison Office
12 Personal expectations that lead researchers to file a patent 50,00% 45,00% 40,00% 35,00% 30,00% 25,00% 20,00% 15,00% 10,00% 5,00% 0,00% Scientific visibility Collaborations with private companies Possibilities to attract external funds Economic gain Public funds for activities of TT Support by the CNR' s ILO Career advantages Academic spin-offs N. A. Source: : CNR Industrial Liaison Office
13 Route 1: Inventions deriving from internal-funded research activities where the employee chooses to keep the ownership, sustaining individually all the expenses connected with filing and marketing Support to researchers: it is in the interest of the CNR, to give support to the researcher in license negotiations with industrial firms, in order to draw out contracts consistent with the standards of CNR; Link to other CNR-owned patents: making efforts to include the so-called self-filed patent in a package of CNR-filed patents close in content or linked, in order to be able to market them together and in case to lead the negotiations pursuant to a license contract.
14 Researchers reasons to keep ownership of their patent 45,00% 40,00% 35,00% 30,00% 25,00% 20,00% 15,00% 10,00% 5,00% 0,00% Economic gain More autonomy Better guarantees of economic exploitation Direct relationship with industry Academic spin-offs Source: : CNR Industrial Liaison Office N. A.
15 Route 2: Inventions deriving from internal-funded research activities where the employee chooses to give CNR the right to filing the invention, by way of signing a private law contract Screening of the patentable invention: after disclosure, CNR procedures state that the green light be given for filing be given by the CNR Institute where researchers / inventors carry out their activities; Marketing & Promotion: after filing, the ILO makes sure that the patented invention has the largest possible diffusion; Inventors involvement: collaborating with inventors in order to make best choices in extending patent, marketing, etc.; Further funding: possibly using the patent or a family of patents to attract further funding for research by linking license contracts s with research contracts where firms fund CNR Institutes; Exploitation choices: choosing, along with the inventors, the best avenue for commercial exploitation (license, spin-off); Fair economic return: ensuring that in case a license agreement is signed, the institution receives a fair return on expenses (equipment, human resources, patenting)
16 Researchers motivations to give CNR the right to filing the invention 60,00% 50,00% 40,00% 30,00% 20,00% 10,00% N. A 0,00% Willingness to avoid excessive financial burden Too much time needed for IPR management Lack of competences in IPR management Possibility to enjoy support from the ILO Econom ic gain Academ ic spinoffs Source: : CNR Industrial Liaison Office
17 Route 3: Inventions deriving from external- funded research activities where ownership of the patented inventions devolves to the CNR. Screening of the patentable invention; Marketing & Promotion; Inventors involvement; Further funding; Exploitation choices; Fair economic return
18 Researchers motivations to filing the invention 45,00% 40,00% 35,00% 30,00% 25,00% 20,00% 15,00% 10,00% 5,00% 0,00% Economic gain Possibility to continue rersearch activities in the same field Avoid filing and exploitation of patent (only) by the private partner Possibility to gain access to further fundings Academic spinoffs N. A. Source: : CNR Industrial Liaison Office
19 Thank you for the attention! Questions? Comments? Ideas? Barbara Angelini Francesco Saverio Donadio
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