O slideshow foi denunciado.
Utilizamos seu perfil e dados de atividades no LinkedIn para personalizar e exibir anúncios mais relevantes. Altere suas preferências de anúncios quando desejar.
IP Policy Model
at the University of Maribor
Anton Habjanič, D.Sc.
director of TechnoCenter at the UM
Conferenceon Univers...
 1859 the beginnings of higher education in Maribor (School of Theology)
 Between 1959 -1961 the Association of Higher E...
Technology Transfer Cycles
IP Strategy & Policy
 IP Strategy:
A plan designed to achieve IP management supporting the core missions of
technology tr...
IP policy is a must-have tool: provides clear and transparent rules on IP management while
involving the personal, institu...
10key Questions
for Establishing a successful IP Policy
Question 1:
What rights does the
government have
on IP generated at universities and
R&D institutions?
For example, manufa...
Background of the IP Policy at UM
Employment Related Industrial Property Rights Act (Article 21):
 Financial resources fo...
10key Questions
for Establishing a successful IP Policy
Question 2:
Who owns IP
generated by publicly funded
research?
Who...
Who are inventors and
what are their obligations?
Inventors are:
 University teachers, researchers and other employees at...
Question 3:
What IP Management
procedures will be
followed?
What are the bottlenecks in technology
transfer and commercial...
Acquisition Procedure
of Employee Inventions
UM fully acquires the invention, the
continuation of the procedure is
conduct...
Question 4:
Benefit sharing?
How are revenues from research
commercialization shared among
inventors, institute or departm...
Distribution of the revenue
arising from commercial exploitation
Attention!
Irrespective of the above manner of distributi...
Question 5:
Is private funding
for defined research projects
permitted?
If so, under what conditions and approval
process?...
Question 6:
Options for
commercialization?
What choices do universities and R&D
institutions have for
commercializing thei...
Commercial exploitation
of the invention
When concluding R&D agreements, the parties are obliged to ensure adequate financ...
Question 7:
Who manages the IP &
technology transfer?
Is there a TTO, outsourced company,
government entity, IP Hub or a n...
Services of TTO
 Innovators support (assistance in the implementation of innovative ideas)
 Protection of IPR and manage...
Question 8:
How to afford the cost of
protection and
maintenance of IP?
Does the university or R&D institution pay the
exp...
0
100
200
300
400
500
600
700
800
900
2009 2010 2011 2012 2013 2014
Year
Funds(1000EUR)
TTO Activities Funding in Slovenia
• Maribor
• Koper
University of Maribor
University of Ljubljana
Jozef Stefan Institute
National Institute of Chemistry
Nat...
Question 9:
How are conflicts-of-
interest and commitment
handled or prevented?
May a professor or researcher accept addit...
Question 10:
How should scientists be
encouraged and motivated?
What kind of incentive schemes could
foster not only resea...
Recommendations
1. Consider and keep in mind the particularities of your institution (there is no “one size fits
all” appr...
Contact data
www.tehnocenter.si
Anton Habjanič, D.Sc.
info@tehnocenter.si
+386 2 2355 344
TechnoCenter at the University o...
Próximos SlideShares
Carregando em…5
×

Anton Habjanič: IP policy model at the University of Maribor

1.266 visualizações

Publicada em

As the global knowledge economy grows each year, the importance of intellectual property (IP) policy also grows for non-profit organizations such as universities. Pretty much every organization has an IP portfolio of some kind and value, whether or not the organization realizes it as such. As a result, almost every organization needs an IP policy model, even if it’s a simple one.

This presentation is intended to help the universities and other research organizations to set IP policy model to optimise the benefits from the intellectual assets created by their staff and students. The presented model, which was adopted at the University of Maribor, does not provide an IP policy that can be applied across all organizations as there is no “one size fits all” approach to IP management. But, it identifies the key features that need to be considered in order to build a strategic framework for the managing of IP, as for example the issues of ownership, protection and sharing of the economic benefits arising from the commercial exploitation of IP created by researchers in the course of their duties or activities at the university.

Publicada em: Educação
  • Seja o primeiro a comentar

  • Seja a primeira pessoa a gostar disto

Anton Habjanič: IP policy model at the University of Maribor

  1. 1. IP Policy Model at the University of Maribor Anton Habjanič, D.Sc. director of TechnoCenter at the UM Conferenceon University and BusinessCooperation in CentralEurope (January28-29,2016,Budapest,Hungary)
  2. 2.  1859 the beginnings of higher education in Maribor (School of Theology)  Between 1959 -1961 the Association of Higher Education Institutions in Maribor  1975 the University of Maribor was established  17 faculties plus 2 members: Student Dormitories and University Library  16.680 students in the academic year 2014/2015 (all cycles)  1.725 staff members (1063 teachers & employees in higher education and researchers)  Total income in 2014: 83 million EUR (R&D activities: 11,5 million EUR) University of Maribor Facts and Figures
  3. 3. Technology Transfer Cycles
  4. 4. IP Strategy & Policy  IP Strategy: A plan designed to achieve IP management supporting the core missions of technology transfer.  IP Policy: Principles of actions (set of provisions), often with direct legal implication regarding duties and rights of faculty and indirect implications for partners. Background! Commission Recommendation on the management of IP in knowledge transfer activities and Code of Practice for universities and other public research organisations Intellectual Asset Management for Universities (UK IP Office) Model Intellectual Property Policy for Universities and Research Institutions (WIPO)
  5. 5. IP policy is a must-have tool: provides clear and transparent rules on IP management while involving the personal, institutional, national and international aspects of IP management in one regulatory document. Advantages of a good IP Policy:  Creates guidance & consistency for IP and technology management procedures  Involves transparency in decision making process  Safeguards the interests of all parties by stipulating deadlines  Facilitates professional IP management  Creates legal certainty for companies and other third parties  Supports commercialization activities  Stimulates more industrial support for research  Guarantees the fair distribution of the income among stakeholders  Encourages bringing research results to the public benefit  Enhances the promotion & reputation of the university and the researchers Importance of IP Policy
  6. 6. 10key Questions for Establishing a successful IP Policy
  7. 7. Question 1: What rights does the government have on IP generated at universities and R&D institutions? For example, manufacture in the country, preference for national companies, regulatory compliance, royalty sharing, royalty-free license to the government, title back to the government if the institution doesn’t take title etc... 10key Questions for Establishing a successful IP Policy
  8. 8. Background of the IP Policy at UM Employment Related Industrial Property Rights Act (Article 21):  Financial resources for organizational infrastructure, necessary for examination of employee inventions at PRO and for their effective exploitation, are provided separately by the state.  PRO regulates the acquisition procedure of employee inventions with the Rules in a way that is adapted to the needs of scientific work and the publication of scientific results.  PRO specifies the shares in the Rules, which belong to the institution, the unit of the institution where the inventor is employed and the inventor.
  9. 9. 10key Questions for Establishing a successful IP Policy Question 2: Who owns IP generated by publicly funded research? Who is the first owner of IP (the employed inventor or the employer)? Does the “Professor‘s privilege” exist? Who can apply for ownership of IP? Who has the Pre-emption rights? Can university claim ownership of IP created in the course of students’ research activity?
  10. 10. Who are inventors and what are their obligations? Inventors are:  University teachers, researchers and other employees at the University of Maribor, who discovered or created an invention.  Contractors and students, who are not in employment relationship with the UM and when the invention is a result of a contractual relationship or when the UM‘s resources were used in the discovery or creation of the invention. Inventors are obliged to:  Immediately inform the UM‘s Department for Scientific Research by clearly indicating that the writing is a notification of invention.  Refrain from any actions, which would mean the disclosure of the invention to unauthorized persons, thus putting the patent protection or the protection of other IPR at risk, before and after the submission of the notification.  Provide UM with assistance by offering explanations about the invention and by making the necessary declarations. Attention! The inventor, who fails to inform the UM, breaches the obligations deriving from employment.
  11. 11. Question 3: What IP Management procedures will be followed? What are the bottlenecks in technology transfer and commercialization of R&D results? How should IP Assets be managed? What are the IP management procedures? How is the IP policy etc. communicated to stakeholders? 10key Questions for Establishing a successful IP Policy
  12. 12. Acquisition Procedure of Employee Inventions UM fully acquires the invention, the continuation of the procedure is conducted by the primary inventor. The Dean of the university member decides on commercial exploitation. 1. Costs of the acquisition procedure are financed entirely by the inventor or faculty from funds of the group(s) that created the invention. 2. Costs of the acquisition procedure are financed in a limited extent by the inventor or faculty from research grants of the group(s) that created the invention (at least 40 % of costs). The remaining amount is financed by UM from relevant system resources. 3. Costs of the acquisition procedure are financed entirely by UM from relevant system resources. The decision on full or limited acquisition is made by the Rector on the basis of the opinion of the Committee for the preparation of opinion in invention acquisition procedure, which is formulated at the request of the Technology Transfer Office. The Rector decides on the commercial exploitation.
  13. 13. Question 4: Benefit sharing? How are revenues from research commercialization shared among inventors, institute or department, university and government or funding agency? 10key Questions for Establishing a successful IP Policy
  14. 14. Distribution of the revenue arising from commercial exploitation Attention! Irrespective of the above manner of distribution, UM, the relevant faculty and the inventors may agree on a different manner of distribution in a special agreement. Financing structure Share belonging directly to the inventor Share belonging to the faculty or research group that created the invention Share belonging to UM and the Rector’s fund Type 1 65 % 30 % 5 % Type 2 50 % 20 % 30 % Type 3 40 % 25 % 35 %
  15. 15. Question 5: Is private funding for defined research projects permitted? If so, under what conditions and approval process? Who owns the IP in such cases? If the university or R&D institution owns the IP, what kind of licenses (royalty free, royalty bearing, exclusive, non-exclusive etc.) would it be willing to grant? 10key Questions for Establishing a successful IP Policy
  16. 16. Question 6: Options for commercialization? What choices do universities and R&D institutions have for commercializing their research results? Does the university or R&D institution want to encourage entrepreneurial activity or not? 10key Questions for Establishing a successful IP Policy
  17. 17. Commercial exploitation of the invention When concluding R&D agreements, the parties are obliged to ensure adequate financial implications deriving from the creation of potential IP. The parties typically have to agree on royalty payments determined on the basis of the net sales figure of products or services deriving from the invention. Attention! Derogations from the above mentioned principle are possible only with the written consent of the Rector. An inventor who, by UM's order, participates in research work funded by non-budgetary contracting entities, the consequence of which is the created employee invention acquired by UM, is entitled to a reward in the net amount of 2.500 EUR. UM may also benefit from the invention by establishing spin-off or spin-out companies exploiting the invention.
  18. 18. Question 7: Who manages the IP & technology transfer? Is there a TTO, outsourced company, government entity, IP Hub or a national IP Office? Who negotiates licenses with outside parties, reviews employee contracts, manages invention disclosure procedures, reviews sponsored research proposals, manages royalty sharing, establishes and manages spin-off companies …? 10key Questions for Establishing a successful IP Policy
  19. 19. Services of TTO  Innovators support (assistance in the implementation of innovative ideas)  Protection of IPR and management of IP  Commercialization  Assistance in establishment and development of spin-offs  Organization of conferences, workshops and trainings  Execution of independent and partnership projects
  20. 20. Question 8: How to afford the cost of protection and maintenance of IP? Does the university or R&D institution pay the expenses of protection and maintenance of IP? In the case of government or private sponsored research, who pays for these costs (e.g. registration, attorney’s fees, maintenance etc.)? Is there a limit to how much the university or R&D institution will spend and what kinds of inventions it will fund protection for? 10key Questions for Establishing a successful IP Policy
  21. 21. 0 100 200 300 400 500 600 700 800 900 2009 2010 2011 2012 2013 2014 Year Funds(1000EUR) TTO Activities Funding in Slovenia
  22. 22. • Maribor • Koper University of Maribor University of Ljubljana Jozef Stefan Institute National Institute of Chemistry National Institute of BiologyUniversity of Primorska TechnoCenter UM Science & Research Centre of Koper Center for Technology Transfer Consortium for TT at PRO in Slovenia Center for Technology Transfer & Innovation
  23. 23. Question 9: How are conflicts-of- interest and commitment handled or prevented? May a professor or researcher accept additional private income for projects that may require time away from the organisation? Does the organisation permit professors to consult on their own or take a leave of absence? Can the professor or student use facilities of the university or R&D institution for private research activities? 10key Questions for Establishing a successful IP Policy
  24. 24. Question 10: How should scientists be encouraged and motivated? What kind of incentive schemes could foster not only research but also innovation activities? For example, staff training on IP knowledge, financial incentives or personal career development etc. 10key Questions for Establishing a successful IP Policy
  25. 25. Recommendations 1. Consider and keep in mind the particularities of your institution (there is no “one size fits all” approach to IP management)! 2. The IP Policy has to be adapted in a manner that the institution is able to identify emerging inventions efficiently, asses and manage disclosed inventions in a systematic way, and addresses grand challenges (IP Policy has to be flexible and adaptive, i.e. able to evolve in response to changing circumstances.). 3. Provide funding aimed at bridging the gap between embryonic research results and demonstrations of PoC that would stimulate market exploitation (e.g. special funds can be established by leveraging proper (inter)national grants.
  26. 26. Contact data www.tehnocenter.si Anton Habjanič, D.Sc. info@tehnocenter.si +386 2 2355 344 TechnoCenter at the University of Maribor Slomškov trg 15 2000 Maribor Slovenia Direct link to the Rules: http://www.um.si/en/research/intellectual-property/Pages/default.aspx Thank you for your attention!

×