1. Topic 5: Bridging the gap between Academia and Industry
J.-M. Le Goff
WIPO Seminar on IP Commercialization and Innovation: Policy Options and Practical Instruments
Minsk, Belarus, May 04-05, 2017
Workshop on Innovation and Intellectual Property

2. Workshop on Innovation and Intellectual Property
Agenda
1: Context
Research versus Industry
The valley of Death
There is no model that fits all!!
2: Requirements
3: Conclusions
Workshop on Innovation and Intellectual Property

3. Establishing the context
Research versus Industry
The valley of death
Establishing the context
Workshop on Innovation and Intellectual Property

4. New technology business lifecycle Industry faces two valleys of death
Academia is not supposed to take risk with public money
How to address the first valley when part or most of research results belong to
academia?
The more high-tech the higher the investment!
Effective KT & IP transfer in the R&D context

5. The Valley of Death for TT
Achieving TT from Academia to Industry   Addressing the valley of death
Effective KT & IP transfer in the R&D context

6. R&D: Academia vs industry
Research: Open science
Industry: In/out sourcing technology
Publication of discoveries & R&D results
Scientific recognition
Value in copyrights
R&D to meet scientific programme objectives
Long-term
Best possible solution within budgetary constrains
R&D results: Technology
IP rights to use internally
Highly collaborative
Memorandum of Understanding (MoU)
Unclear IP situation
Joint ownership of R&D results
Complex dissemination
Funding
Public
Quality of research program
Protection of innovations & know-how
Required to facilitate industrial dissemination
Value in IP rights (patents, etc.)
R&D to increase market share
Short-term
Best cost-effective solution
R&D results: Products (prototypes)
IP rights to manufacture
Highly competive
Licence and/or partnership agreement
Clear IP situation
Clear ownership of R&D results
Dissemination based on manufacturing
Financing
Private with public support (EU, National funds)
Product market potential
Softening of above statements when moving from
Fundamental  Applied research

7. There is no Model that Fits All !
Different context and level of development inside the same country, income group, region and continent;
Surveys in certain countries showed significantly different results up to 47% – 50% among selected institutions of the same country - institutional IP policies, TTOs, IP commercialization practices etc.
Academic users of IP system are also changing – trend is moving toward Asia and middle income countries! .

8. AUTM Licensing Activity Survey
2015
879 new products
1,012 startups formed, a jump of 11%, made a direct impact on local economies with more than 72% of the new businesses remaining in the institution’s home state.
New and existing licensed products generated more than $28.7 billion in net product sales.
2014
719 new products and the sales revenue generated from net product sales ($22.8-billion);
Number of executed licenses and options (6,554);
The 818 new companies created as a result of technology transfer activities represent an increase of 16% over the prior year and an average of 2.25 new companies per day.”
The standard model works very well in the US

9. Intel Science and Technology Centers (ISTCs) – Open Source
ISTCs established in US universities- funded at the rate of $2.5 million a year for five years.  
INTEL “The IP policies and practices within the ISTCs will typically be designed to level the playing field for all of the participants, thereby enhancing cooperation and open collaboration.  The preferred IP policy is to conduct open research wherein ISTC researchers, whether from academia or Intel, agree to not file patents and to publish all patentable inventions.  All significant software developed in the course of conducting research will be released under an open source license.”
Stanford - Visual Computing;
UC Berkeley - Secure Computing;
Carnegie Mellon - Cloud Computing;
Carnegie Mellon - Embedded Computing.
 Patenting software is counterproductive

10. Carnegie Mellon University – Awarded $ 1
Carnegie Mellon University – Awarded $ 1.17 Billion for Patent Infringement
Federal jury in Pittsburgh found that the Marvell Technology Group had sold billions of semiconductors using technology developed at the Carnegie Mellon University without a license and awarded university with $ 1.17 billion.
The award is one of the largest in a patent infringement case, and comes after a $1 billion verdict awarded to Apple against Samsung over iPhone design patents.

15. Australian Technology Network

16. Bridging the Gap = Increasing the TRL
Technology Readiness level: 19
WIPO Workshop on Innovation and IP

17. WIPO Workshop on Innovation and IP
Increasing TRL = $,€,¥,£
Company pre-creation, Institute: Seed money
Company pre-creation, Institute: Follow-up money
WIPO Workshop on Innovation and IP

18. Beyond TRL 4: Business vision
Criteria
Effective business perspectives
Limited interest if not market pulled
Capability of evaluating Risks
Responsibility of academia to bring technology to appropriate TRL
Pre-requisite
Commercial applications clearly identified
Strong IP (preferably protected)
Clear IP ownership
Availability of academic expert team
WIPO Workshop on Innovation and IP

19. Beyond TRL 4: Academic View
Third mission of University
Teaching
Research
Technology & Knowledge Transfer
Additional funding/Revenues to R&D institution
As part of budget
Services, Consultancy, contracted research
From financial return
Revenues from Licensing
WIPO Workshop on Innovation and IP

20. Beyond TRL 4: What do you need?
People
University experts
TT to set up contractual arrangements
TT to seek seed funding
Funds
Government
University funds devoted to TT projects
IP policy
Legal frameworks supporting activities
Involvements of academics in projects
Level of involvement,
Conditions for the involvement of your institution
Project access to funding (grant mechanisms)
WIPO Workshop on Innovation and IP

21. WIPO Workshop on Innovation and IP
Beyond TRL 4: Involvement of academics  Depends on IP policy of institution
University: situation depends on the Country
US: (Bayh-Dole) Professor can take a leading role in start-up companies while teaching and researching at University ( Resulting IP must be specified)
Europe: In general limited participation in company (Part-time Consultancy) more if contractual arrangements (Compensation)
R&D institution
Part-time with compensation within contractual arrangements (Partnership)
On-leave for a certain duration. Academic status restored at the end of secondment
WIPO Workshop on Innovation and IP

22. Involvement of TT Office
Contractual arrangements
Partnership + Licence
Negotiations
Support to start-up creation (if in IP policy)
Equities in exchange of softer licensing conditions
Arrangements with researchers/students
Access to TT funds (if in IP policy)
Implementation of funding strategy
Funding approval and follow-up
WIPO Workshop on Innovation and IP

23. Involvement of institution: BIC
WIPO Workshop on Innovation and IP

24. Business/Innovation/Techno Park
WIPO Workshop on Innovation and IP

25. WIPO Workshop on Innovation and IP

26. Example: CERN technology portfolio
During the period of analysis, 163 TT cases have been recorded:
More than 90% are related to the LHC programme
Technology/expertise originating from the LHC programme
Ex: Mechanics: Diaphragm system used for the assembly of the LHC dipoles
Developments carried out to support the LHC programme
Ex: IT: Electronic Document Management System (EDMS) used for the handling of the LHC and experiments construction data
Cases almost evenly distributed across technology domains
Accelerators
Detectors
Electronics
IT & software
Average exploitation level of the technology portfolio: 50%
TT cases distribution
00-04: On average 22 new TT cases/year on
05-09: Decreasing to 9/year -> end of LHC construction
Jean-Marie Le Goff

27. Technology readiness and exploitation level
TRL
Simplified Definition 1
Technology application formulated and basic concept demonstrated 2
Functional validation in laboratory environment 3
Representative prototype fully qualified (technology ready to transfer)
51% of the CERN technologies are ready to transfer1
The exploitation level decreases with the Technology Readiness Level
71% of the technologies with TRL 3 are exploited
30% of the technologies with TRL 2 are exploited
25% of the technologies with TRL 1 are exploited
Courtesy of E. Chesta/CERN
Jean-Marie Le Goff
1 Active TT cases at the end of 2010

28. Public Funding (no follow-up)
Government incentive policy
Income taxes of start-up waived for a certain duration
Tax credit for company to invest
Grants to support innovation
National, regional
Price
Incubators, techno parks
Access to and use of facility (for start-up)
Restricted if no company to develop the technology is in place
WIPO Workshop on Innovation and IP

29. Private funding (If company)
Foundations
Sponsored research with or without IP conditions
Research grants
Family of researcher
Not always available
Business angels
For first round
Take shares (sometimes control)
Strict follow-up
University via TT Office involved in company’s strategy if equities
Venture funding
Normally not at this stage
Investment too small
TRL not high enough  No market insight
WIPO Workshop on Innovation and IP

30. Government funding trends
The new economy is High-Tech
Rich variety of mechanisms
Emergence of public/private initiatives
Europe
Funding is directed towards academia
Tax incentives towards companies
Special funding Academia/Industry funding programs
Marie-Curie RISE: Research & Innovation Staff exchange,
United State of America
Funding is directed towards companies and academia
NIH, DoE, NSF, etc.
Limited tax incentives
WIPO Workshop on Innovation and IP

31. Conclusions There is no model that fits all
Need for a variety of tools
Adjust use of tools according to:
TRL
IP policy of institution
 Target: seek private funding as early as possible in the process
Minimize risks of failure
Guaranty value of technology

32. Thank you