Vilnius Lithuania 2014

BSc.: Biochemistry Neuropsychology J.D.: University of Oregon LL.M.:University College London Pacific Northwest National Laboratory University of Oregon Technology Transfer Office

OVERVIEW: Background: Intellectual Property and Technology Transfer Innovation v. Invention Knowledge Economy to the Innovation Economy National IP Strategy: law and policy Introduction to the United States’ innovation policy and law Technology Transfer Offices Licensing IP 3

U.S. Constitution: Article 1, Section 8, Clause 8 The Congress shall have Power To...promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.... 8

Innovation Economy Starts with Knowledge Generation The “Culture of Innovation” Innovation Systems 9

National IP Strategy An effective National IP Strategy is typically formulated to complement the nation’s existing strategic development plan. The plan should be integrated and aligned with Lithuania's development plan. -Identifying the need Having a well-integrated strategic plan ensures that resources are aligned and de-conflicted. -Are the strategies of the Science Ministry aligned with the health ministry, and how does that work with funding decisions?

Goals of a National IP Strategy Develop a innovation economy Strengthen linkages between industry and research institutions. Strengthens the country’s ability to generate economically valuable IP assets. Builds natural bridges between researchers, universities, laboratories, investors and entrepreneurs.

Patents & Copyright Understanding the tools used to transfer technology. Patents Copyrights Don’t worry about trademarks and trade secrets, but don’t forget about them either. 12

Innovation v. Invention So many inventions and so few innovations, and how to tell the difference. The “Useful Arts.” What do you have? Identifying what is useful. Get the best people in the room. 13

Innovation Economy Financing Research – who? Scientific management What research gets funded? Technology protection and knowledge transfer is essential to making it work Licensing 14

University Research Where does the funding come from? Who owns what? Now what? 15

Bayh-Dole Act Impacts the ownership of inventions made with federal funding. Before the Bayh–Dole Act, federal research funding contracts and grants obligated inventors (wherever they worked) to assign inventions they made using federal funding to the federal government. Bayh-Dole permits a university, small business, or non-profit institution to elect to pursue ownership of an invention in preference to the government. Key Concepts: Encourage: creation, research & development. Facilitate: management of IP assets and encourage licensing and technology transfer. Protection: enforcement with well-trained customs agents, police, and competent judges who understand the value of IP. ownership of inventions made with federal funding. Before the Bayh–Dole Act, federal research funding contracts and grants obligated inventors (where ever they worked) to assign inventions they made using federal funding to the federal government. [3] Bayh-Dole permits a university, small business, or non- profit institution to elect to pursue ownership of an invention in preference to the government [3]

Bayh-Dole Act Major Provisions: Non-profits and universities may retain the title to the intellectual property developed under federally-funded research programs. Universities are encouraged to collaborate with commercial firms. Universities are expected to file for intellectual property protection (patents/copyrights) on inventions they elect to own.

Bayh-Dole Act Major Provisions: The Federal Government retains a non-exclusive license to practice the patent throughout the world. March-in rights Termination of licence The Bayh-Dole Act encourages universities to participate in technology transfer activities.

University Innovation Cycle Research and Development (R&D) Invention IP protection University IP management Licensing Private commercial technology development Royalty development? 19

Innovation Cycle Research and Development (R&D) Inventions 20 R&D can be cost intensive – but it is often not the case for universities to conduct R&D. Strong links between universities and the private sector are essential.

Innovation Cycle IP protection University IP management 21 What is the appropriate IP: Patent or Copyright Inovation Office Staff Structure

Technology Transfer Office Structure Internal or external Professionals Measuring Success 22

Innovation Cycle Licensing Private commercial technology development Royalty development 23

Licensing Granting the appropriate scope of rights Permit research uses Preference for non or partial exclusivity Specified field of use Enforceable milestones and benchmarks Maximize development of products for the public good Ensure appropriate return on the public investment 24

Factors Considered in Licensing Stage of development Type of product Market value of product Uniqueness of material Scope of patent coverage Market timing 25

Private commercial technology development Strong links to the private sector – relationships Cooperative research with a private company Mutual trust 26

Royalty development? “Public good” The problem with Google Every research university began to want to create a Google Be realistic 27