1. WIPO Tool: „Management of Academic Intellectual Property and Early stage Innovation in Countries in Transition” Dr. Gligorce VRTANOSKI University Professor, WIPO IP Coordinator “Ss Cyril and Methodius” University of Skopje, Faculty of Mechanical Engineering Skopje, MK 01-03 April, 2009

2. Content of the Presentation: 1. Background 2. Objectives 3. Methods & timeline 4. Responses & statistics 5. The tool

3. Background: Increasing importance of the academic intellectual property in the national economics. Need for the appropriate management skills also in those countries which had paid less attention to this question before. A study has been requested by certain countries with transition economies during the Strategic Planning Meeting, held in Moscow, on July 18 and 19, 2007.

4. Objectives: (a)to identify the legal and institutional elements of the early stage innovation systems (such as innovation and IP laws, roles of the central innovation promoting bodies, IP policies, TTOs, licensing activities, spin-offs, incubation) in transition countries; defining a general picture of the most usual elements; (b)to benchmark the best practices; (c)to describe in a Guideline a feasible model for the early stage management of the academic intellectual property in transition countries; THUS: to give a tool in the hands of the university technology managers as well as innovation agents, thus develop the organizational background and human resources of the early phase management of innovation.

5. The project We conducted a research on the present practices of the early phase management of innovation in the transition countries. In the framework of a 12 months long international consultancy, we discovered the established methods of the university tech-transfer, and gave recommendations for the best practices in a Tool.

6. Methods: questionnaire sent to the countries Different sets of questions Set 1: the first set of questions is devoted to discover the laws and practices on the ownership of IP right created at budgetary institutions. As the ownership of such IP rights is usually established in acts, this section has been sent to national patent offices and not to individual universities. Set 2: From the second section, the questions have been sent directly to universities, as the practices vary from one research institution to another. The second set of questions relates the general management methods and policies of the university IP. We put into the focus the professor’s involvement and the existence of a long-term written innovation strategy. Set 3: The third set of questions relates to the preparatory steps of the IP management. Focus is on the prior art research and technology evaluation, the decision making and the existence of an established protocol of the IP disclosure, patent search and patenting prosecution.

7. Different sets of questions Set 4: The fourth set of questions deals with the contractual background of the universtiy tech-transfer. Set 5: Questions about spin-offs, focusing primarily on the shareholder structure, the ways of contribution, the scientist involvement and the opportunities for the start-up incubation.

8. Contents of the Tool 1. Early Stage Innovation, Research & Technology Management, Transfer of Technology; 2. Legal Framework of IP Management & Technology Transfer (Innovation Acts, University IP Policies); 3. Research and Academic IP Management (TTOs; Research of the Prior Art; Management of Material Transfer Agreements; Management of Research & Development Agreements; 4. Transfer of Technology (General issues; Technology Licensing Agreements; Management of Spin-Offs.

9. The simplified process of technology transfer at universities Cooperative research and development agreement Research Fundamental Applied (Industrial) Experimental Reinvestment in the research IPR protection Technology evaluation Disclosure at the TTO Licensing to an established company Incorporation of a spin-off firm Product development Marketing (Registration) Production and sales

10. Technology Transfer Organizations Fact: According to our survey, in the majority of the responding research organizations there is a central body (e.g. department, technology transfer office, etc.) within the organisation that is responsible for IPR management and technology transfer issues.

11. The tasks of technology transfer organizations I. Research management tasks a) identification of R&D results, evaluation of inventions; b) prior art research; c) organizing IP protection, patent portfolio management; d) tasks related to material transfer contracts (MTA); e) tasks related to research agreements (CRADA); f) cooperation in sharing of the income from selling IP rights and in the management of conflicts of interest.

12. The tasks of technology transfer organizations II. Technology transfer activities a) technology transfer consultancy; b) consultancy related to the assignment of intellectual property; c) consultancy related to the licensing of IPRs d) Consultancy related to the management of spin-off companies; e) innovation marketing activities; f) systematic industrial liasions.

13. The tasks of technology transfer organizations III. Tasks of the third, complementary group: a) communication of the university’s innovation activities; b) Training and development of methods.

14. Key messages: 1. The organizational setup of the TTO should be chosen so that it best suits the quality and liability of the service, its for profit or non-profit character and expectations on conflicts of interest. 2. Ensure the TTO’s proximity to the laboratories and projects. 3. Ensure and train human resources with knowledge in engineering/natural arts, law, business administration. The tasks of the employees should be defined in such a way that they always work on the projects in a team. 4. The mission and objectives of the TTO should be defined so that it best suits the institution’s IPR portfolio and that it ensures focused working.

15. The Identification, Evaluation, and Protection of the IPRs I. Fact: Our research shows that only half of the responding organizations employs any specific arrangement on the evaluation of the scientific results before protecting or exploiting an IPR.

16. Key messages: 1. Use a unified protocol for the identification, evaluation and protection of the technologies. 2. Always test the patentability. 3. Always clarify the ownership issues, and the IP rights of the employer, the inventors and third parties. 4. The preliminary technology assessment should be limited to the rough estimation of the market of the anticipated products/services. Using of secondary market information is sufficient. The Identification, Evaluation, and Protection of the IPRs II.

17. Research of the prior art I. Fact: A positive phenomenon is that most responing research organizations perform prior art search or freedom to operate analysis before utilization of an IPR.

18. Research of the prior art II. At the responding research organizations, Esp@cenet is used most often (66,67%) from among the named databases, however searching in other, not named free databases is also wide-spread (76,67%). The commercial databases are a lot less exploited. Utilization of the later were only mentioned in four countries.

19. Key messages: 1. IPR search should always be performed according to a uniform protocol in a reproducible way. 2. Besides using keyword search, use the International Patent Classification and always search the inventors in the databases. 3. Always consult the inventors on the keyword-combinations, but keep them a secret from everyone else. 4. If we get a lot less than 50 or a lot more than 500 hits for our search, it is advisable to reconsider our search strategy. 5. Always analyze the search hits thoroughly. 6. 18 months after the first search perform a follow-up search with the original search strategy. 7. Always consider and communicate the limitations of the databases and search engines used for your search.

20. IPR Protection and Portfolio Management Issues Key messages: 1. The patenting strategy must always be harmonized with the ideas on the invention’s exploitation and with the publication objectives of the inventors. 2. The priority application strategy is limiting the flexibility of the patent portfolio management, thus it is advisable to plan for a longer period of time.

21. Research and Development Agreements Fact: For most responding research institutions the number of research agreements signed per year exceeds five. Compared to the other examined types of agreements, the estimated annual number of agreements is the highest in case of research agreements.

22. The European Commission has adopted on the 10th April, 2007 the general model grant agreement to be used in research projects funded under the 7th Framework Programmes: http://cordis.europa.eu/fp7/calls-grant-agreement_en.html#standard_ga Most important terms: - background: means the information (IP) of the participants preceeding their joining to the grant agreement and all copyrights and other intellectual properties connected to such information; - foreground: the results created due to the activities within the framework of the project independently from their patentability - access rights: rights of licensing of the background and the foreground; - dissemination: appropriate publication of the foreground, excl. patent application.

23. The Transfer of Technology General Issues, Technology Transfer Strategy Facts: For most responding research organizations the assginment of IPRs is usual for the exploitation of the IPR. Less research organizations sign licensing agreements, whilst one quarter of the research organizations typically creates spin-off companies.

24. The Transfer of Technology General Issues, Technology Transfer Strategy Most of the responding research organizations (63,16%) does not have any written strategy on innovation.

25. The Transfer of Technology General Issues, Technology Transfer Strategy However, approximately two-thirds (65,79%) of the research organizations do have a policy on technology transfer (IP).

26. The Transfer of Technology Technology Licensing Agreements Fact: The research institutions that have responded make only a moderate number of licensing agreements. The annual number of such agreements exceeded 15 in case of only 1 research site.

27. The Transfer of Technology Technology Licensing Agreements Most business partners concerning University Licensing Agreements are SMEs. Licensing agreements made with large enterprises are much less characteristic.

28. Early Stage Innovation from the SME Point of View: Management of Spin-Offs Fact: In the past two years, the number of founded spin-off companies by majority of the responding research institutions was up to 5

29. Early Stage Innovation from the SME Point of View: Management of Spin-Offs Fact: The majority of the responding research institutions does not gain shares in the spin-off company, that utilizes its research achievements.

30. Early Stage Innovation from the SME Point of View: Management of Spin-Offs Fact: Three-forth of the researchers keep their share of capital in the spin-off company for more than two years.

31. Early Stage Innovation from the SME Point of View: Management of Spin-Offs Fact: The universities usually give a non-monetary contribution to the companies.

32. Early Stage Innovation from the SME Point of View: Management of Spin-Offs Fact: In case of the majority of responding research institutes (62,5%) the researcher, who creates IPR, does not take part in the spin-off company, neither as owner, nor as employee.

33. Early Stage Innovation from the SME Point of View: Management of Spin-Offs Fact: The majority of the research institutions (64,52%) does not provide incubation services for the spin-offs.

34. Main differences between non-financial contribution and licensing

35. Thank you for your kind attention!