1 DOC-CAREERS II Project, Final conference Brussels 2012 University-Industry Intellectual property rights: Balancing interests Intellectual Properties at NTNU Knut J. Egelie Senior IPR manager, NTNU Technology Transfer AS
2 Innovation through research Norwegian University of Science and Technology (NTNU): 20.000 students 2.200 faculty members / researchers More than 300 cooperative agreements with universities 50 PhD programs 2.300 candidates Graduate schools 300 degrees yearly Funding of PhDs Government (30%) Research Council (32%) Industry/Other (38%)
3 Innovation through industry NTNU has more than 650 industry contracts Most contracts are with large Norwegian and international companies A large majority of Norwegian companies have identified NTNU as their preferred research and development partner Onshore operation and control room, in Cooperation with partners like: Shell, Total, Statoil, Conoco-Phillips, Stanford U., Delft Technical U., SINTEF, Research Council of Norway
4 700 600 700 6 years of experience (2005-2011): 700 ideas/disclosures + 130 student ideas = 56 commercial deals 500 400 300 280 280 patents filed 24 lisence agreements sold 30 spin-off companies formed 200 100 0 56 The spin-off companies have attracted > 50 mill in external funding. Ideas Patents filed Deals
DOC-Careers Report findings on IP practice, p.47-48 Formal agreement: Confidentiality and Intellectual Property Rights Industries generally fear that universities will prematurely disclose outcomes with potential commercial use It is possible to retain ownership and control of IPR and to license the rights to exploit it. A good practice in collaborative programs is to include in the initial agreement establishing the IPR regime, a clause that allows publication of results Universities aware of IPR issues involved their legal services when necessary Universities are becoming more aware of the potential value to themselves and the need to secure a fair return for public investments in education and research some universities and companies tend to work in fundamental research areas, avoiding any IP matter. This is a good solution for companies with a long-term R&D strategy In general I am missing suggestions for specific tools, but of course I will show you some suggestions
Why is IPR important for NTNU? 1. Secure academic freedom 2. Secure technology and research access for the public society at large 3. Make NTNU attractive : international researchers and industry 4. Recognition of the NTNU researcher 5. Avoid infringing other IPR s 6. Create a predictable framework for NTNU's employees, staff, and external partners
It is not (at) ALL about the money a) The desired outcome for universities is NOT to generate a direct financial return as the primary goal b) Universities should be able to demonstrate how they go about maximising economic, social and environmental impact c) It is in the interest of universities, industries and governments that impact is maximised as this: Enhances confidence in the sector Finds the best route to adoption
NTNU balancing different interests Society Dissemination and use Commercialization and confidentiality Industry NTNU intellectual capital Freedom to research and publish Ph.D candidate/researcher Create win-win relations!
University-Industry Collaboration balancing the interests 1. Funding schemes; minority majority fully funded 2. Ownership vs. licensing University often needs to retain rights to be able to continue its activities. Depends on contribution. License within Field of Use, Time Limited, Activity clause, Retainer for research, Exclusive or Non-exclusive 4. Dissemination: Freedom to research and to publish Always retain rights for further research and education Non-compeeting clauses for PhD candidates is generally not acceptabel Delay because of possible patents or to keep as secrecy 5. Foreground results Patenting and ownership, user rights IP Protection and litigation Rights to modifications & improvements 6. Background results: field of use and non-exclusive, strategic technology platforms or non-commercial
Balancing dissemination and confidentiality needs 1. Respect confidentiality regulations 2. Delay in order to apply for patent protection 3. Always retain rights for further research, education and dissemination 4. Secure further freedom for PhD candidate to contiune research without any non-compeeting clauses 5. Utilization Results shall be utilized within reasonable time. If not, the rights to results shall claimed returned Grant back license to NTNU for non-commercial use Publication guidelines on University law - NTNU board may approve postponed publications - in practice: delegation of authority by NTNU management - Industry part can have no option to veto -.. In consultation with the researcher - in practice: the researcher is familiar with and submit to regulations in already agreed contracts and appointments with industry - Postponement - In case patenting: 6-9 months - University needs are prioritized, but balanced with industry needs
Publication and Dissemination Model NTNU scientist: Project result 35 days Planned publication Sponsor: Patentability Evaluation Decision on publication Not OK 30 days OK NTNU scientist: Modifications and confidential Publication Sponsor: Patentability Commercial interest Commercial use Modifications and confidential Notice on delay Notice on delay Delay less than 6 months Delay more than 6 months 20 days Publication 20 days NTNU top management: Consultation with institute Decision on publication NTNU top management: Consultation with institute Decision on publication 15 days Publication with modifications and/or delay (2x6 m) Another round 15 days Publication with due consideration
Ownership I am paying for it so I should own it... In a collaborative research project a sponsor is never paying the full cost of the research Overhead alone do not account for the resources that the institution is bringing to the project (including the PI s expertise and often matching funding) In a collaborative project the parties are working together and thus should both benefit from the results University needs to retain rights to be able to continue to perform collaborative research. Grant back license to NTNU for non-commercial use A possible assignment of ownership really depends on the nature of the project, the funding scheme and the importance of the technology
University-Industry Collaboration Balancing Model Different partners - same interests University interest Industry interest Increase competence Educate candidates New technology
University-Industry Collaboration Balancing Model Different partners - different interests University interest Industry interest University IP ownership Industry Freedom to publish Publication Decision by Industry Freedom to operate Research after the collaboration Non-competition
University-Industry Collaboration Model Proposed IPR model for Results IP ownership Commercial use of IP (minority funded by Industry) (majority funded by Industry) Contract research (fully funded by Industry)
University-Industry Collaboration Model Proposed IPR model for Results (minority funded by Industry) IP ownership University Commercial use of IP To Industry: Non-exclusive license Right to negotiate exclusive license (majority funded by Industry) Contract research (fully funded by Industry)
University-Industry Collaboration Model Proposed IPR model for Results IP ownership Commercial use of IP University To Industry : Relevant issue: (minority funded by Industry) - within defined Field of Use Non-exclusive license Right to negotiate exclusive license (majority funded by Industry) Contract research (fully funded by Industry)
University-Industry Collaboration Model Proposed IPR model for Results IP ownership Commercial use of IP (minority funded by Industry) University To Industry : Non-exclusive license Right to negotiate exclusive license (majority funded by Industry) University or Industry Contract research (fully funded by Industry)
University-Industry Collaboration Model Proposed IPR model for Results IP ownership Commercial use of IP (minority funded by Industry) University To Industry : Non-exclusive license Right to negotiate exclusive license (majority funded by Industry) Contract research (fully funded by Industry) University or Industry To Relevant Sponsor: issue: Exclusive - Strategic license importance NTNU - Dominating Background IP To - University: Industry Scope of Business - Small start-up / big enterprises Option to other Field of Use
University-Industry Collaboration Model Proposed IPR model for Results IP ownership Commercial use of IP (minority funded by Industry) University To Industry : Non-exclusive license Right to negotiate exclusive license (majority funded by Industry) Contract research (fully funded by Industry) University or Industry To Industry : Exclusive license To University: Option to other Field of Use
University-Industry Collaboration Model Proposed IPR model for Results Collaborative research IP ownership Commercial use of IP (minority funded by Industry) University To Industry : Non-exclusive license Right to negotiate exclusive license (majority funded by Industry) Contract research (fully funded by Industry) University or Industry Industry To Industry : Exclusive license To University: Option to other Field of Use To University: Option to other Field of Use
Open innovation, the answer? Universities across the globe practice open innovation publication of research results is open innovation 99% of the world s research takes place outside of Norway For industry open innovation would only work if the companies were so innovative as to capture ideas rapidly into commercial development IPR is essential for many technologies arising from universities because the level of investment required is substantial
The NTNU answer Predictability and professional IPR management Predictable framework Operative and useable tools Clear communication on essential elements Building good relationships When both the University and its partners treat IPR appropriately things happen Grown up conversations IP negotiation tends to be a legal process, it needs also to be a commercial and research conversation. When only one partner takes IP seriously then
The world acquires technology from NTNU 2010: PointCarbon (2000) acquired by Thomson Reuters for NOK 1100 million. 2008: FAST (1997) acquired by Microsoft for NOK 6600 million. 2008: TrollTech (1994) acquired by Nokia for NOK 850 million. 2007: Nacre (1994) acquired by Bacou-Dalloz for NOK 840 million. 2006: Falanx (2001) acquired by ARM for NOK 170 million. 2005: ChipCon (1999) acquired by TI for NOK 1360 million. 1996: Atmel Norway established, annual turnover 2010 NOK 5000 million (892 million dollars)
Thank you! Knut J. Egelie Senior IPR manager NTNU Technology Transfer AS