University – Industry relationship Gianluca Valentini Deputy Rector for IP & spin-off Politecnico di Milano Milano, training workshop Unchain Project Milano – July 12th 2010

TTO © 2009 Summary The Technology Transfer models How University and Industry contribute to the innovation The Technology Transfer strategy and The importance of University – Industry research agrements for the social development Final remarks

TTO © RESEARCH (results, inventions, innovation) Research contracts Industry funding Public funding research innovation development Industry IP Publications In the “open science” model: 1.Broad circulation of ideas through conferences and publications as the most important KT channel 2.Universities not involved in entrepreneurial initiatives 3.Results of research funded by industry belong completely to industry 4.Concern about changes which might contribute to “close” the system The “open science” model Source: Pietrabissa (2008)

TTO © SELECTION PROTECTION COLLABORATION WITH INDUSTRY Company INCUBATION Licences Royalties New products New technologies Spin-offs Start-ups Seed capital ricerca innovazione sviluppo Research contracts Industry funding Public funding Publications RESEARCH (results, inventions, innovation) EU research projects A more comprehensive model research innovation development

TTO ©  Universities are progressively fostering the valorization of their research results, through the IP management carried out by dedicated offices  Most of pre-competitive research activities are carried out within university-industry networks. Therefore, IP management is becoming highly complex.  The Market of Technologies is growing at international level. New business models between university and industry are constantly introduced.  Some of the more experienced universities are challenging their current model for KT (e.g. maximize license fees vs. maximize research revenues) Rather than a choice between Open Science and “Triple Helix”, we suggest to integrate open science into a more comprehensive model Trends in Technology or Knowledge Transfer

TTO © 2009 What is Technology Transfer in a University? high education scientific research Professionists Scientists Managers Entrepreneurs Knowledge Innovation Benefits: social economic cultural Knowledge Transfer Technology Transfer or Professionists Scientists Managers Entrepreneurs Knowledge Innovation Benefits: social economic cultural...

TTO © 2009 Industries, enterprises,... third companies start up spin off other (joint projects)... industrial skills (technology, market,...) Managing models New knowledge production New knowledge application KT 1 KT done by external agents Research centers Universities PROs Scientific parks other (projects)... scientific skills (knowledge, vision,...) Service companiesskills ? (mixed)

TTO © 2009 New knowledge production New knowledge application KT 1 KT done by external agents New knowledge production New knowledge application KT 4 KT for demanding knowledge New knowledge production New knowledge application KT 3 KT for offering knowledge New knowledge application New knowledge production KT 2 integrated KT (company with a research center, PRO with spin off) New knowledge production New knowledge application KT 1 KT done by external agents New knowledge production New knowledge application KT 4 KT for demanding knowledge New knowledge production New knowledge application KT 3 KT for offering knowledge New knowledge application New knowledge production KT 2 integrated KT (company with a research center, PRO with spin off) Managing models

TTO © 2009 A model invention right know how PATENT 1 €10 € innovationindustrial productneed INDUSTRY develop. UNIVERSITY research UNIVERSITYINDUSTRY 1 €10 € invention right know how PATENT develop.researchinnovationindustrial productneed

TTO © 2009 Industry (Research) (Market) industry entry university exit University SPIN OFF RESEARCH CONTR. The gap

TTO © Education & Research UI University and Industry do different things for different purposes  but they are not competitors More concretely: the vision Development & Production KT Profit TOOL GOAL Source: Pietrabissa (2008) they can collaborate

TTO © Solution Product Need U I The Bricks of the Innovation Line Source: Pietrabissa (2008)

TTO © gap U I The Castle of the Innovation Line Source: Pietrabissa (2008)

TTO © Need Product U I The Castle of the Innovation Line Source: Pietrabissa (2008)

TTO © The Roles of the Actors of the “model” should generate research-based inventions should develop and industrialize new products should generate the rules and direct the actors should invest in research-based ventures Source: Pietrabissa (2008) It is possible to generate an effective and efficient TT process only if all the actors are pushed to work together, playing their roles and taking their responsibilities

TTO © Solution Need Product The Castle of Innovation Source: Pietrabissa (2008)

TTO © Technology Transfer model  Transfer by publications  Transfer by contracting  Transfer by cooperating (joint labs)  Transfer through infrastructures (test facilities)  Transfer by training  Transfer by head (Phd, spillover)  Transfer by licensing  Transfer by spinning off Handled by TTO Driven by Research Dept.

TTO © 2009 Tools for University – Industry relationships Research agreements between University and Industries are win-win tools to foster innovation and social development … but … The differences between players must be undestood respected and valorised

TTO © 2009 Industry Mission Organization: Targets and rules are shared all over the company Hierarchical decision processes University and Industry are different players with their own mission and structure High Education Scientific Research Technology Transfer Profits Production of goods and services University and Industry have complementary objectives and scopes  Conflicts of interest can be easily managed There exist wide diffences in the culture and language  Relationships are sometimes difficult and uneffective University Mission Organization: University grants high autonomy to Departments, research groups and single researchers

TTO © 2009 The main reasons for signing University-Industry research agreements Simplification of the administrative processes  Researches do not care of administrative and legal issuses (the just need to do good science !) The lag time for the signature of specific reasearch contracts is strongly reduced  General conditions are approved in advance, only scientific and financial issues need to be negotiated The ownership of results and IP right are pre-defined according to agreed policies  The University and the Industry feel more confident  Researchers must pay great attention to their obligations “Innovative approach” for the University-Industry relationship  The University Central Administration (not single researchers) negotiates with the Company Headquarters to establish long- term wide-scope research agreements

TTO © 2009 The specific terms for Intellectual Property mgt. The terms referring to the ownership of research Results and Intellectual Property Rights are amongst the most important ones The ownership and the terms of use for Know-how and IPR are predefined  Know how Industry  Patents [Industry University] We strongly suggest that co-assignment in patent applications is warranted to the University in order to defend the Researchers and University reputation  After patent filing, University must grant the freedom of operation to the industry by perpetual license agreements Publication rights must be granted to the University  Reasonable confidentiality conditions must be negotiated The IPR provisions apply for 6-12 months after the expiration of the contract

TTO © 2009 What does University wants? Moral reputation for its research activity  co-assignment in patents ! Reasonable money awards to reward its Researchers The possibility to continue the research in the same field after the expiration of the contract The free of charge use of the results for teaching and research The possibility to publish part of the results in scientific journals Long-term relationship with the Industry instead of sporadic collaborations What does Company wants? The complete ownership of the know- how generated within the contract The unlimited freedom of operation for industrial and commercial purposes The co-ownership of IPR (patents) The complete control of patent filing and international extensions The right to pursuit the legal defense in case of patent infringement Confidentiality about all trade secrets Delay in public disclosure of scientific results to allow patent filing Negotiation of University-Industry IPR agreement Is there a real conflict of interest between University and Industry for what concerns IPR ?... much less than people believes !

TTO © 2009 Typical provisions of IPR agreement The property of all non patentable results goes exclusively to the Industry that can exploit them without any limitation In case of patentable inventions the following procedure applies:  Researchers must disclose the invention to the industrial partner as soon as possible and should collaborate to define novelty and claims  The Industry must confirm the interest for the invention and decides wheter to file a patent application or keep a trade secret  The Company should take care of: patent text and claims payment ofall taxes and expenses payment of a reasonable award to the University  Co-ownership is granted to the University  University grants the Industry the complete freedom of operation

TTO © 2009 Confidentiality committments University undertakes proper actions to prevent confidentiality breaks by its Researchers University keep the rights to use (for free) the results of the research for educational and scientific purposes  Researchers must submit to the Industry the paper drafts before publication in order to achieve the approval  The Industry should not deny the authorization without motivations Confidentiality on trade secrets should last for a time long enough to prevent any damage to the industry (usually 5-10 years) The University Name and Logo should be used only in scientific and technical publications  The Industry should refrain to use the University logo in advertising unless specifically authorized  University should provide the proper credit to the funding Company in public disclosure of the scientific results

TTO © 2009 Final Remarks Universities should play a responsible role in the development of the society through technology transfer and cooperation with industries Relationship between University and Industry should be properly managed Intellectual Property Rights are key issues for the relationship between Universities and private Companies