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WP2 Setting up and working on a TTO Giuseppe Conti TTO Director Politecnico di Milano March 23 – Casablanca meeting Unchain Project
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TTO © 2009 TTO © 2010 2 INDEX Technology Transfer Approach Technology Transfer Office Check list for setting up and boosting TTO
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TTO © 2009 TTO © 2010 3 DEVELOPMENT UniversityIndustry KNOWLEDGE DIFFUSION know how patents contracts spin-offs graduates PhD EDUCATIONKNOWLEDGE TRANSFER Scientific publications Which are the KT tools? RESEARCH
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TTO © 2009 TTO © 2010 4 the milestone Public research is (usually) at the beginning of the innovation line, industry is (usually) at the end, and part of the path should be shared in partnership. The tools should be used in agreement. The different missions and roles should be seen as opportunities rather than disadvantages. The efficiency strongly depends on the participation of all of the four actors of the TT. KTOs play a crucial role !!
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TTO © 2009 TTO © 2010 5 Scheme of Technology Transfer ways Department driven Handled by TTO 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
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TTO © 2009 TTO © 2010 6 Technology Transfer goals Short term Medium term Long term To disseminate IPR, TT and entrepreneurial culture To apply any kind of IPR To support new company creation To favour a deep link between university and industry To promote networking of spin-off / start up company To increase the innovation potential of regional and national industry
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TTO © 2009 TTO © 2010 7 Definitions Technology Transfer Office (Industrial) Liaison Office Knowledge Transfer Office University Industry Linkage Contract Office Office of sponsored research Patenting and Licensing Office Business Development Office … TTO could and should be the link between research and industry worlds for developing Technology Transfer activities
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TTO © 2009 TTO © 2010 8 I L O – T T O: role TTO Role: listen, understand, evaluate, promote University Research Centers University Research Centers Spin-off Industries Associations Chamber of commerce Spin-off Industries Associations Chamber of commerce UE Ministers Regions Fondations Banks BA Venture Capital
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TTO © 2009 TTO © 2010 9 1.To have a lot of patents 2. To make a lot of licenses 3. To make profit as much as possible Possible mission (Wrong) Updated “mission” (Polimi case studies) 1.To promote protection and exploitation of the university research results, to play a role in the relationships between University and Industry, to make possible the industrial applications of innovation. 2. To improve the excellence of University; to actract students and excellent scientists, to actract research fundings from industries TTO Mission
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TTO © 2009 TTO © 2010 10 TTO: Organisational model Internal Outsourced Indipendent Coordinator PRO Dep Subsidiary Intermediary PRO Dep PRO
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TTO © 2009 TTO © 2010 11 Basic Research Cooperative research I.P. Protection Spin-off I P IPR I.P.R Licensing Development contract Scientific publication Contract research negotiation Marketing negotiation agreement Marketing negotiation agreement Incubation Fund raising Incubation Fund raising Marketing Value negotiation - IP Marketing Value negotiation - IP TTO functional model
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TTO © 2009 TTO © 2010 12 TTO Organizational model Spin-off patent licens admin Boards Legal Communication Int.consultants TTO staff projects Technical advisors Technical advisors University staff
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TTO © 2009 TTO © 2010 13 TTO Main activities Patenting Licensing Spin-off creation Coperative research Patenting Licensing Spin-off creation Coperative research Training Advertising knowledge management Advertising knowledge management Fund raising Project management Amministrative process Fund raising Project management Amministrative process Research scouting IP state of the art Filing Patent attorney mgm Infringment suirveillance Licensees research Negotiation Agreement preparation BP evaluation Spin-off fund raising IP negotiation coop research Research result marketing Research scouting IP state of the art Filing Patent attorney mgm Infringment suirveillance Licensees research Negotiation Agreement preparation BP evaluation Spin-off fund raising IP negotiation coop research Research result marketing Relation with media partners Conferences and seminars Advertising material Database management Relation with media partners Conferences and seminars Advertising material Database management Grants research Invoice mgm …. Grants research Invoice mgm …. Giuseppe Conti 2006 ©
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TTO © 2009 TTO © 2010 14 Licensing process: definition and meaning Licensing activity is a process articulated in several steps to valorise and to exploit the patented research results. This process starts after filing a patent application. Through this activity Politecnico di Milano is able to transfer its research results to industry and to create an important link between companies and university … Licensing activity is a process articulated in several steps to valorise and to exploit the patented research results. This process starts after filing a patent application. Through this activity Politecnico di Milano is able to transfer its research results to industry and to create an important link between companies and university … Meaning: To exploit a result of the research To transfer a patent To transfer the know how of inventors To help industry to find a new market or an innovative solution Meaning: To exploit a result of the research To transfer a patent To transfer the know how of inventors To help industry to find a new market or an innovative solution
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TTO © 2009 TTO © 2010 15 Licensing process: procedure and steps Keep in mind: time consuming activity that should be carry on together with inventors ! To sign Confidentiality Agreement (NDA)To sign MTA (if necessary) Material Transfer AgreementTo arrange a meeting with the inventorsContact with legal office or Licensing officeNegotiationSigned the Agreement
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TTO © 2009 TTO © 2010 16 Mito tech: spin-off for licensing outsourcing Keep in mind: licensing needs right skills and IP critical mass
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TTO © 2009 TTO © 2010 17 Spin-off process Giuseppe Conti 2006 ©
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TTO © 2009 TTO © 2010 18 Main goals: TTO Check list Is there the demand on IPR (number of researchers) ? Have you estimated the number of past university patents ? Feasibility Are you planning the main goal of TTO? Are you plannning how to reach it and in which way? Activities Do you have internal resources? Do you know which skill your organization will need? Organization How much money do you need for doing those things? How can you find it? Financial Need Do you know how to convince your Board, Rector and investor? FIRST GOAL
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TTO © 2009 TTO © 2010 19 TTO Check list: 2 Benchmark Define: 1.Mission and goals 2.Organization and management 3.Activities 4.Manpower and skills … Information, training and advertising … Budget … Networking To understand and plan what and how you can do it
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TTO © 2009 TTO © 2010 20 To favour a deep link between university and industry To increase the innovation potential of local industry To increase the innovation potential of regional industry To increase the innovation potential of national industry To promote the commercial exploitation of IPR and KH To increase the patent portfolio To increase the spin-off portofolio To disseminate the IPR and TT culture To make money To have access to public or private funds …. Check list ILO: 2.1 Mission and goal
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TTO © 2009 TTO © 2010 21 Organizational units or department within the PRO + internal liability + close link to the researchers + ownership of IP + clear definition of the role + secure budget coverage + lower fixed costs + management of contracts high level of burocracy, weak incentives and motivation to commercialisation Subsidiary organizations outside the PRO + managerial and financial independence Public or private intermediaries + high specialised expertise + economies of scale + broader access to commercialisation - distance from research and researchers, weak management of research portfolio Check list ILO: 2.2 Organization
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TTO © 2009 TTO © 2010 22 First consultancy Research on novelty Market evaluation Patent application Patent exploitation (licensing) Advertising and comunication activities Liaison for contract research client recruitment contract signing legal issues Administrative activities Spin-off assistance Financing of spin-offs seed capital holding shares Check list ILO: 2.3 Activities
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TTO © 2009 TTO © 2010 23 Man power = function ( goals, time, activities, organization budget) Man power and roleYEAR 1YEAR 2YEAR 3YEAR 4YEAR 5 ProfessorIN – PT IN – FT To ManagerIN - FT 2IN - FT2IN – FT AdministrativeIN - PT IN - FTIN – FT Patent attorneyOUT SecretaryIN - PT IN - FTIN – FT Legal expertIN - PT IN – PTIN - PT Finance expertPT FT Management expertPT Licensing expertIN - PTIN – FT CommunicationPT FT Man power (FTE)245,58,59 Check list ILO: 2.4 Human resources
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TTO © 2009 TTO © 2010 24 Define the goals and the philosophy of TT activities Within the university Within the local government Among every actors of the Area Be different in comparison to others initiatives Analyse key points of the other actors Underline minus and plus factors Create value added in the TT process Pay attention to raise awareness on IPR and entrepreneurship culture within the university Innovation needs of the industrial world Innovation policies and strategies of Government The Key factors
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TTO © 2009 TTO © 2010 25 Many thanks !! Merci beaucoup !! giuseppe.conti@polimi.it www.polimi.it/tto www.mitotech.eu
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