1. Summary Slide Management of Intellectual Property Rights Enterprises, R&D Organizations and Universities Wayne H. Watkins - University of Akron

2. 2001 - Jakarta, Bandung & Surabaya Sponsors: World Intellectual Property Organization & Republic of Indonesia © Wayne H. Watkins 2001

3. Presentation Overview Introduction –Property Systems –Culture & Environment Management of Intellectual Property –Creation of Intellectual Property –Mining of Intellectual Property –Assessment of Intellectual Property –Exploitation of Intellectual Property The Challenge/The Opportunity

4. Property Systems Origins of Property Rights Quality of Life in Relation to Property Systems Creative Works as Property

5. General Characteristics of Property Rights – Right to possess – Right to enjoy – Right to dispose

6. Intellectual Property Types Know-How Trade Secret Trade Mark Copyright Patents Plant Variety Protection Other

7. Universities & Some R&D Organizations - Roles & Culture Teaching Research Service

8. Industry & Some R&D Organizations - Roles and Culture Provide goods and services for a profit As compared with Universities, Industry tends to be: –Secretive –Short time frame –Applied rather than basic research –Profit driven

9. Intellectual Property Creation - Universities U.S. Morrill Act of 1862 U.S. Federal Funding of Defense Related Research - World War II – Cold War U.S. Bayh Dole Act of 1980 Currently evolving Need Balance

10. Effect of Bayh Dole Spawned Biotechnology Industry Significant advances in other technology intensive industries –Telecommunications –E-commerce –Medical –Advanced Materials

11. Intellectual Property Creation - Industry $264 Billion R&D in U.S. 75% Industry Sourcing of technology – trend towards acquisition Shift from manufacturing to IP Transfer and brokering of IP Globalization Role of IP in Industry

12. University Intellectual Property Policies Evolving Seek to Strike a Balance –Work Made for Hire –Teacher Exception Rule –Academic freedom

13. Key Elements of a Successful University Intellectual Property Policy Ownership –Work for hire – employment agreements –Inventions –Instructional Materials –Academic Works –Sponsored research –Use of University resources Administration Sharing of Rewards

14. Industry Work for Hire Employment agreements –Inventions rights –confidentiality Scope of employment Sharing

15. Identification & Mining of Intellectual Property Disclosure systems Direct contacting Targeted development Third party mining

16. Confidentiality & Publication Industry –Maintain as trade secret University –Traditional release of Scholarly Works –Proprietary/Contract research –Publication delays –Partitioning proprietary information from publishable results at the initiation of the contract if possible –Incorporating students and accommodating degree requirements for publication of Scholarly Works

17. Assessment of Intellectual Property Technology validation Protection availability Commercial viability Internal & external assessments

18. Exploitation of Intellectual Property Licensing Startups Sale or donation Release to inventors Lock out

19. Value to Universities Royalties and Fees Sponsored Research Revenues Faculty Recruiting Student Recruiting Practical Experiences for Students & Faculty Credibility with Stakeholders (Legislature)

20. Pitfalls Unrealistic Expectations Conflict of Interest Conflict of Commitment Administrative Costs Sponsor Rights Commercial Sponsors vs. Disinterested Inquiry

21. Value to Industry Profits Competitive Position Public relations Recruiting

22. Success Criteria for Exploiting Research Intellectual Property Research Capacity Vision Commitment Administration Support Organizations Market Definition

23. Case Studies

24. Intellectual Property and Industry Driven by R&D Investment Pace increasing Trend to sourcing technologies Employee turnover Stockholder perceptions

25. Intellectual Property and the University High Profile During Past 10 Years Fundamental Culture Change Appropriateness of Direction Questioned Traditionalist Views Sometimes Vehemently Opposed to the Entrepreneurial Style Embraced By More Progressive Faculty and Institutions Now Accelerated by Agency Funding Changes

26. The Challenge The Opportunity

27. Related Topics (as interest dictates) Research Parks Business Incubators Entrepreneurship Institutes Relationships with Economic Development Agencies Research Planning Sponsored Research Issues Conflict of Interest

28. Related Topics (continued) Conflict of Commitment Research Compliance Research Misconduct Confidentiality Agreements Material Transfer Agreements Distance Education Inter-Institutional issues

29. Related Topics (continued) Professional Associations –Licensing Executives Society (LES) –Association of University Technology Managers (AUTM).

30. Possible University Office of Technology Commercialization MISSION STATEMENT THE MISSION OF THE UNIVERSITY OFFICE OF TECHNOLOGY COMMERCIALIZATION IS TO BENEFIT THE PUBLIC, THE UNIVERSITY AND ITS FACULTY BY TRANSFERRING RESULTS OF UNIVERSITY RESEARCH INTO SOCIETY VIA LICENSING AND NEW BUSINESS DEVELOPMENT.