1. Director Department for Transition and Developed Countries
International, Regional & National Strategies of Public Institutions on The Role of TTOs in Enhancing Academic IP Commercialization on International, Regional and National Scale
WIPO Toolkit for Academic Institutions – Connecting Research with Economy and Society
Mr. Michal Svantner
Director Department for Transition and Developed Countries
Istanbul
12 October 2017

2. WIPO Toolkit for Academic Institutions
1st Volume: IP Policy Template and Guidelines for customization & Policy Writers Checklist
2nd Volume (practical implementation of Vol.1): Roadmap for Commercialization, Model Agreements and Hypothetical Case Studies

3. Academic Institutions
Universities
Research & Development Institutions (R&D)
Primer users of the Toolkit are academic institutions – Universities and R&D institutions. However, the Volume II can be easily adapted to the needs of businesses, through adaptation of the Roadmap to their own potentially owned or controlled assists and through the use of the Models of Agreements, which are covering a huge scope of IP based business contracts and related ones – like disclose form.

4. Importance of institutional IP policies
Academic Institutions
Education
Research
Economic development IP
For a millennium, education and research have been regarded as the main missions of academic institutions.
However, today, AI are expected to more actively participate in regional economic development and knowledge transfer. And innovation, and IP, from these institutions is increasingly a source of such development.
This has created a new trend by AI to explore strategies that will leverage their IP assets.
Strategies that will leverage their IP assets
Roadmap

5. The Roadmap Roadmap - Utilization Strategy
Selection of Asset(s) and Corresponding Utilization Actions

6. Roadmap = Utilization Strategy
Academic Institution
Research results
Publish
Disclosure
Intellectual Assets
Intellectual Property (protectable IA)
Knowledge (un-protectable IA by IP law)
Other Assets
Collections of information (uncompiled and/or raw data, historic libraries, questionaries, etc.)
Collections of objects (materials) (biobanks, patient material, cell lines, animal model, historic objects, samples, etc.)
Research infrastructure
Human Capital
Equipement
Labs
Capacity
Research Funds
Collaboration support organisation
License(s) – Certification to practice
Access to patients
Access to public funding
Reputation
Entrepreneurial culture …
Etc.
Know-how
Expertise
Proprietary information
Ideas/concepts
Theories
Rationales
Observations
Theoretical frameworks
Solutions
Instructions …
Etc.
Patents and patentable inventions
Industrial design rights and protectable designs
Copyrights and artistic works
Database rights and databases
Layout designs (topographies) and integrated circuits
Plant breeders rights and new plants varieties
Trade secrets
Software
Roadmap = Utilization Strategy
Proposed Roadmap has as an objective to:
Facilitate identification of the existing assets that academic institution owns or controlees – incorporating not only IP but also other intellectual assets based on knowledge – such as know – how, expertise, theories which are not protectable under IP laws but are very valuable. Knowledge based assets if properly managed can be secured, controlled and protected by contracts and often used as a “ticket” for opening collaboration opportunities with industry partners and other R&D institutions – with an ultimate goal to create and commercialize IP ;
Roadmap also gives a broad option of utilization activities that can be taken in the process of the development of existing assets, or in commercialization of those that reached the level of maturity and readiness. Advantage of a such a comprehensive approach is that gives to the user a complete picture of an asset management opportunities and options to be chosen depending on the asset and its status. For example, if academic institution does not currently own an IP that would be solution for the needs of the industry partner, it can still use existing know how and expertise (knowledge assets) as well as its laboratories (other assets) to develop an “open innovation collaboration” with businesses, help them to develop appropriate technologies (IP) and ultimately commercialize that IP through joint venture or licensing agreement.
Utilization Actions
Tool Box
Secure
Share
Explore
Transfer
Venture
Collaborate
Invention disclosure form
Patent
Joint ownership
Informed consent form
Contract research
Material transfer
Interinstitutional license
Consultancy
Disclose
Material transfer
Right of First Refusal or Option
Technology License
Copyright License
Assignment
Material transfer
Technology License
Contract research
Collaborative research
Sponsored research
Collaborative research
Consortium research

7. Utilization Actions
Secure: Secure ownership and/or freedom to use of the asset(s)
identify disclosed asset
determine owners
seek intellectual property protection, if appropriate (patent, copyright, trademark)
other protection, if government certification is not available (trade secret, collections, Know-How)
Share: Offering the asset(s) to be used by 3rd parties for a commercial fee
marketing campaign to make others aware of asset and its problem-solving potential (leads to contract research, transfer of materials, consultancy, Inter-Institutional agreement for jointly owned assets)
Explore: Offer the asset(s) to 3rd party in order to evaluate utilization potential
disclose assets
evaluate utilization potential by internal assessment and prototyping by external assessment and perhaps evaluation license
Transfer: Assignment of ownership or licensing of utilization rights of the asset(s) to a 3rd party for the purpose of utilization
Right of First Refusal or Option to Acquire or License
License of defined rights
Sell or Assignment
Venture: Transfer to a dedicated spin-off company for the purpose of utilization
new entity can acquire License, undertake contract research, participate in Collaborative research
Collaborate: Pool own and 3rd party assets with the purpose of conducting research and/or utilization
contribute asset to multi party relationship focused on research and problem solving (via agreements for Sponsored Research, Collaborative research, or Consortia)

8. The Model Agreements

9. Tool Box – Hypothetical Case Studies – Base for Capacity Building Programs
MATERIAL TRANSFER AGREEMENT (COMMERCIAL);
EXCLUSIVE LICENSE;
CONTRACT RESEARCH AGREEMENT;
COLLABORATIVE RESEARCH WITH COMPANY;
OWNERSHIP OF IP.

10. Reshaping Tool Box into a Toolkit
Development of the standard program for capacity building trainings;
Accompanying presentations – to facilitate trainings;
Train the Trainers Programs – for academic institutions but also for IP Academies.
Our intention is to develop two volumes as user friendly training tools – that is why we will develop standard programs , presentations and template materials to transfer them to our stakeholders – academic institutions and IP Academies – so that they can organize trainings independently.
We are envisaging that those materials would be alive tool under constant update and upgrade and that the use of the ToolKit will be based on the “open source principles” – each user would need to grant back all improvements to WIPO and to the pool of other users.

11. Michal Svantner Michal.svantner@wipo.int
Thank You
Michal Svantner