Negotiating intellectual property rights between industry and university can be very complex and sometimes contentious. This presentation covers the key areas of negotiating strategy that tries to find common ground.
IP Negotiations for Tech Transfer Tactics FINAL.pdfDipanjan "DJ" Nag
Intellectual property rights are at the heart of virtually every research collaboration between academia and industry, and the negotiation around IP is often contentious, frustrating – and too often a deal-breaker. Every negotiation is unique and loaded with complexity. By gaining practical knowledge of the various situations that arise in these negotiations – and the creative solutions used to resolve them — you can dramatically increase the chances of resolving IP issues and establishing long-term relationships that bring critical benefits to both partners.
This practical session will focus on arriving at a win-win strategy for resolving IP-related issues and structuring a deal that benefits both parties. The session will draw from the direct experiences of the speakers in handling sensitive situations, including a role-playing exercise in a mock negotiation to illustrate specific sticking points and showcase proven strategies for resolving them.
Here is a brief look at the areas covered:
Who owns the foreground IP?
Rights to background IP?
Publication
Patent prosecution
Patent enforcement
Research, Development & Commercialization
Improvements
Other issues in IP negotiations
Mock negotiations to illustrate win-win resolutions
We’ve teamed with a pair of experts with extensive experience on both sides of the table. Join Dr. DJ Nag, PhD, MBA, CLP, RTTP, President of Innovaito, LLC, and Tatiana Litvin-Vechnyak, PhD, Vice President of Technology Commercialization for Georgetown University, for this important program
Presented by Dr. Tom Corr, CEO – Waterloo Research and Technology Park Accelerator Centre & Associate Vice President, Commercialization – University of Waterloo
Part of the Ontario Post Doctoral Fellowship Networking Event, October 6, 2008
TOPICS
Research Funding
Who Owns the Intellectual Property?
Commercialization Options
Dealing with VCs
Outcomes of Commercialization Efforts
A Step-by Step Guide to Starting a Nanotech Business
Objective: To build a viable business selling nanotechnology to make profit
How to:
1. Set up your nanotech business structure.
2. Raise financing, receive government grants and tax breaks.
3. Hire developers, employees, subcontractors and suppliers.
4. Protect ownership of your intellectual property in nanotechnology.
5. Use open innovation to enhance R&D.
6. Commercialize your nanotechnology by licensing and distribution.
Patenting Issues For Biomedical Start UpsJohn Bashkin
Patenting is crucial for biomedical startups to protect their innovations and attract investors. However, the patenting process is expensive and complex. This document outlines key patenting challenges for startups and provides recommendations to reduce costs, such as thorough prior art searches, provisional patent filings, limiting patent claims and countries, and working closely with experienced patent counsel. Strong patents are important startup assets, so preparation and oversight of the patenting process is necessary to maximize value while managing expenses.
This document provides an overview of Tech Transfer from academia to industry through Yissum, the technology transfer company of The Hebrew University of Jerusalem. It summarizes Yissum's role in identifying technologies with commercial potential, protecting intellectual property, licensing patents, and creating spin-offs. Yissum employs various business models and funding initiatives to facilitate collaboration between researchers and industry. The document also outlines the major types of technology transfer agreements and Yissum's global reach and flexibility in crafting agreements to meet industry needs.
IP Negotiations for Tech Transfer Tactics FINAL.pdfDipanjan "DJ" Nag
Intellectual property rights are at the heart of virtually every research collaboration between academia and industry, and the negotiation around IP is often contentious, frustrating – and too often a deal-breaker. Every negotiation is unique and loaded with complexity. By gaining practical knowledge of the various situations that arise in these negotiations – and the creative solutions used to resolve them — you can dramatically increase the chances of resolving IP issues and establishing long-term relationships that bring critical benefits to both partners.
This practical session will focus on arriving at a win-win strategy for resolving IP-related issues and structuring a deal that benefits both parties. The session will draw from the direct experiences of the speakers in handling sensitive situations, including a role-playing exercise in a mock negotiation to illustrate specific sticking points and showcase proven strategies for resolving them.
Here is a brief look at the areas covered:
Who owns the foreground IP?
Rights to background IP?
Publication
Patent prosecution
Patent enforcement
Research, Development & Commercialization
Improvements
Other issues in IP negotiations
Mock negotiations to illustrate win-win resolutions
We’ve teamed with a pair of experts with extensive experience on both sides of the table. Join Dr. DJ Nag, PhD, MBA, CLP, RTTP, President of Innovaito, LLC, and Tatiana Litvin-Vechnyak, PhD, Vice President of Technology Commercialization for Georgetown University, for this important program
Presented by Dr. Tom Corr, CEO – Waterloo Research and Technology Park Accelerator Centre & Associate Vice President, Commercialization – University of Waterloo
Part of the Ontario Post Doctoral Fellowship Networking Event, October 6, 2008
TOPICS
Research Funding
Who Owns the Intellectual Property?
Commercialization Options
Dealing with VCs
Outcomes of Commercialization Efforts
A Step-by Step Guide to Starting a Nanotech Business
Objective: To build a viable business selling nanotechnology to make profit
How to:
1. Set up your nanotech business structure.
2. Raise financing, receive government grants and tax breaks.
3. Hire developers, employees, subcontractors and suppliers.
4. Protect ownership of your intellectual property in nanotechnology.
5. Use open innovation to enhance R&D.
6. Commercialize your nanotechnology by licensing and distribution.
Patenting Issues For Biomedical Start UpsJohn Bashkin
Patenting is crucial for biomedical startups to protect their innovations and attract investors. However, the patenting process is expensive and complex. This document outlines key patenting challenges for startups and provides recommendations to reduce costs, such as thorough prior art searches, provisional patent filings, limiting patent claims and countries, and working closely with experienced patent counsel. Strong patents are important startup assets, so preparation and oversight of the patenting process is necessary to maximize value while managing expenses.
This document provides an overview of Tech Transfer from academia to industry through Yissum, the technology transfer company of The Hebrew University of Jerusalem. It summarizes Yissum's role in identifying technologies with commercial potential, protecting intellectual property, licensing patents, and creating spin-offs. Yissum employs various business models and funding initiatives to facilitate collaboration between researchers and industry. The document also outlines the major types of technology transfer agreements and Yissum's global reach and flexibility in crafting agreements to meet industry needs.
The document discusses alternative licensing options for universities to promote global access to medicines, including open source licensing, patent pools, and global access licensing. Open source licensing makes intellectual property freely available for use and modification with attribution. Patent pools allow multiple patent holders to license patents to each other or third parties under a standard license. Global access licensing includes terms to ensure drugs and diagnostics are available in developing countries. The document analyzes pros and cons of these options and case studies of initiatives like BiOS and BioBricks Foundation that use open source approaches.
Common Pitfalls and Key Considerations in Getting (and Keeping) Intellectual ...UCICove
About UCI Applied Innovation:
UCI Applied Innovation is a dynamic, innovative central platform for the UCI campus, entrepreneurs, inventors, the business community and investors to collaborate and move UCI research from lab to market.
About the Cove @ UCI:
To accelerate collaboration by better connecting innovation partners in Orange County, UCI Applied Innovation created the Cove, a physical, state-of-the-art hub for entrepreneurs to gather and navigate the resources available both on and off campus. The Cove is headquarters for UCI Applied Innovation, as well as houses several ecosystem partners including incubators, accelerators, angel investors, venture capitalists, mentors and legal experts.
Follow us on social media:
Facebook: @UCICove
Twitter: @UCICove
Instagram: @UCICove
LinkedIn: @UCIAppliedInnovation
For more information:
cove@uci.edu
http://innovation.uci.edu/
Strong patent protection is essential for a start-up biotechnology company and can be a valuable company asset. However, it is also expensive, with costs ranging from tens to hundreds of thousands of dollars over time. This session will focus on how to get the most out of your patent dollars.
This session presentation is available in audio format here: http://www.marsdd.com/bioent/dec4
This document discusses developing new technology products and innovation. It covers several key areas: paradigms for innovation; issues with invention commercialization; product evolution versus revolution; why companies need innovation; examples of innovation; sources of innovation; types of innovation; principles of innovation; and challenges with commercializing university research such as market problems, technology taker problems, legal problems, and institutional problems.
The document discusses various challenges non-profit research institutions face in accessing patented technologies. It notes that while research exemptions exist, they are limited. It also outlines 10 options for accessing other's technologies, such as cross-licensing, research-only licenses, patent pooling, alliances with independent developers, and pressing technology holders to share. The conclusion emphasizes the importance of understanding intellectual property rights and ensuring freedom to operate for public science worldwide.
Technology Transfer: Global trends in Tech TransferBananaIP Counsels
This document discusses intellectual property rights (IPRs) and technology transfer. It begins by outlining the objectives of understanding the intangible nature of IPRs, appreciating how IPRs provide competitive advantages, and gaining an overview of the legal bases for technology transfer. It then discusses several topics in more detail, including the economic and social rationales for IPRs, how IPRs contribute to intangible assets like reputation and brand value, pressures in enforcing IPRs globally, managing intellectual capital and assets, types of offshore collaboration, legal aspects of technology transfer, risks involved, and frameworks for regulating international transfer of technology and publicly funded technology.
Accessing other people’s technology for nonprofit researchBhavitha Pulaparthi
There are several options for non-profit research institutions to access patented technologies for research purposes. These include cross-licensing agreements where each party grants rights to their intellectual property; research-only licenses that do not permit commercialization; market segmentation strategies to avoid patent infringement; mergers or joint ventures between parties; cost-free licensing of unused technologies from private companies; patent pooling where rights are aggregated and licensed to third parties; and independent development of alternative research tools. However, current patent law provides no general research exemption, so non-profit institutions still face risks from infringement suits regardless of location or purpose. Mechanisms are needed to clearly define the boundaries between non-commercial research and commercial activities.
411 on IP 101 for Tech-Geeks in the Startup WorldG. Nagesh Rao
The document discusses intellectual property law and different types of intellectual property. It explains that intellectual property refers to creations of the mind like inventions, artistic works, and symbols. There are four main types of intellectual property: trademarks, copyrights, patents, and trade secrets. The document provides details on what each type protects, requirements for obtaining protection, duration of protection, and examples. It emphasizes the importance of understanding intellectual property law and protecting intellectual property.
This document provides an overview of the process of licensing intellectual property from universities to industry. It discusses:
1) The typical technology transfer process where a university evaluates an invention, patents it if promising, and licenses it to interested companies.
2) Ways companies can find and access university technologies, such as through personal contacts with researchers or patent searches.
3) Potential issues in university technology transfer, including early-stage research, conflicts over secrecy, and financial concerns for small companies.
Entrepreneurship 101: Commercializing University / Hospital TechnologiesMaRS Discovery District
Speaker: Tom Corr, DBA, MBA, ADipC, Director of Commercialization, IT and Communications, at Innovations at the University of Toronto
An audio presentation can be accessed by going to
http://www.marsdd.com/ent101
and clicking on the October 17, 2006 session:
"Entrepreneurship 101 - An Introduction to Commercializing University/Hospital Technologies"
The document discusses the need for universities to shift their research orientation towards more commercially focused and market-driven approaches. It outlines some of the challenges with traditional university research models and how expectations have changed to focus more on potential applications and commercialization. Some key steps are proposed for universities to take such as adopting a market-driven research framework, focusing on multidisciplinary teams, and protecting intellectual property to facilitate commercialization.
This document discusses how intellectual property strategies and open innovation can establish platforms for collaboration in the wind energy industry. While companies initially patented and kept technologies private, many large players are now embracing open innovation by collaborating with universities, partners, and competitors. This allows companies to leverage external ideas and knowledge to accelerate innovation. Examples of companies using open innovation include GE, Novozymes, and Dong Energy. The document argues that no single company can develop all needed technologies internally, and that products benefit from compatibility with others, making open innovation a valuable model for the wind industry.
This document provides an overview of working with private sector funders for research funding. It discusses the different types of private funders, including corporations, industry associations, and research institutes. It outlines some key differences between the university and corporate perspectives on issues like intellectual property ownership, timelines, and goals. The document also describes various types of private funding models like philanthropic donations, contracts, technology transfer, and partnerships. It provides guidance on understanding the needs and drivers of private sector funders and identifying potential funding opportunities. Contact information is provided for the relevant university offices that can assist with philanthropic, contractual, or technology transfer funding.
Technology Transfer in an Emerging EconomyMarcel Mongeon
Presentation made on August 13, 2009 in Nairobi Kenya. Sponsored by the Institute of Economic Affairs, this presentation highlights the improtant of engaging in technology transfer to being the results of publicly-funded research into actual use. Tips and traps of the process were highlighted.
Leveraging IP with Research Teams_Bootcamp Bilbao.pdfVITALISEProject
This project received funding from the European Union's Horizon 2020 program to develop a virtual health and wellbeing living lab infrastructure. The document discusses intellectual property, noting that IP protection encourages investment in creative works and that leveraging IP through various methods like licensing and partnerships can help optimize the value of innovations. It also outlines potential benefits and challenges of different IP leveraging options for research teams.
The document discusses intellectual property (IP) and patents. It defines IP and the main methods of protecting IP, including patents. Patents provide a temporary monopoly on inventions and encourage innovation. The summary describes the patent process, including filing requirements, examination, opposition periods, and duration of typically 20 years. It outlines strategies for patenting, such as aggressively patenting everything or using patents defensively. The benefits of patents include exclusivity, monopoly pricing and licensing income. Infringement can result in injunctions or requirement to pay reasonable royalties or lost profits.
A crucial element of formulating a firm’s technological innovation strategy is determining whether and how to protect its technological innovation. Traditionally, economics and strategy have emphasized the importance of vigorously protecting an innovation in order to be the primary beneficiary of the innovation’s rewards, but the decision about whether and to what degree to protect an innovation is actually complex.
The lecture covers topics such as:
* Which is best - licensing or start-up?
* Who owns my invention?
* How do I work with my Tech Transfer Office?
More information: http://www.marsdd.com/Events/Event-Calendar/Ent101/2007/introcommercializing-20071107.html
Speaker: Tom Corr, Associate VP Commercialization, University of Waterloo Office of Research
Radiant Energy Vacuum (REV) has developed a new dehydration technology that can efficiently dry foods, liquids, and pharmaceuticals using less energy than traditional methods, and they are partnering with large multinational companies like Nestlé, Danisco, and Bimbo to commercialize the technology through licensing agreements and machine sales that could generate over $50 million annually per partner. REV aims to establish this new dehydration platform globally through strategic collaborations to test and refine the technology while building a portfolio of patents and royalty revenue streams.
Virginia Tech E-Club: John Geikler on Intellectual PropertyNathan Latka
This document provides an overview of intellectual property (IP) types including trade secrets, trademarks, copyrights, and patents. It discusses Virginia Tech Intellectual Properties' (VTIP) mission to license university technologies to help them become commercial products that benefit society. VTIP evaluates inventions for patentability, commercial potential, conducts market research, negotiates licenses, and has various example technologies available for licensing.
World IP Forum presentation on building an innovation system through intellec...Dipanjan "DJ" Nag
Building an innovation ecosystem in India through IP. Startups are at the heart of building value to through technology transfer. The challenge that India has is valuation.
Speaking at the World Intellectual Property Forum was a unique experience. After many years to come back to India and learn about the advancements was truly a pleasure. India is now the 5th largest economy in the world with $3.7T and by 2030 it is predicted to be the 3rd largest economy.
My talk focused on the need for increased number of startups which are more intensive on hashtag#intellectualproperty. Currently India ranks #2 in the world after the hashtag#unitedstates in the number of startups created. But the valuation is still lagging. We had a wonderful discussion around that topic and I will post the slides in a later posting soon.
What to know if it is your first rodeo in patent monetization?Dipanjan "DJ" Nag
What to know if it is your first rodeo in patent monetization
The top two monetization deals from universities have received more revenues than the combined revenues of technology transfer for all universities reporting to AUTM. Yet, patent monetization is often seen in a negative light. Corporate licensing relies heavily on patent monetization and a company like IBM produces close to two billion dollars in annual revenues year after year. There are certain nuances of patent monetization that a university should adopt, which can be regarded as ethical licensing. The cornerstone of ethical licensing is to ensure patents utilized in a monetization campaign are of the highest quality and that the university takes every precaution to preserve its reputation. If it is the first time that a university is considering patent monetization, certain best practices from the corporate side before launching a campaign. This panel of highly experienced patent monetization experts will discuss the financials, due diligence, public perceptions, and legal implications of carrying out a highly successful patent monetization program.
Mais conteúdo relacionado
Semelhante a Industry - University IP Negotiations
The document discusses alternative licensing options for universities to promote global access to medicines, including open source licensing, patent pools, and global access licensing. Open source licensing makes intellectual property freely available for use and modification with attribution. Patent pools allow multiple patent holders to license patents to each other or third parties under a standard license. Global access licensing includes terms to ensure drugs and diagnostics are available in developing countries. The document analyzes pros and cons of these options and case studies of initiatives like BiOS and BioBricks Foundation that use open source approaches.
Common Pitfalls and Key Considerations in Getting (and Keeping) Intellectual ...UCICove
About UCI Applied Innovation:
UCI Applied Innovation is a dynamic, innovative central platform for the UCI campus, entrepreneurs, inventors, the business community and investors to collaborate and move UCI research from lab to market.
About the Cove @ UCI:
To accelerate collaboration by better connecting innovation partners in Orange County, UCI Applied Innovation created the Cove, a physical, state-of-the-art hub for entrepreneurs to gather and navigate the resources available both on and off campus. The Cove is headquarters for UCI Applied Innovation, as well as houses several ecosystem partners including incubators, accelerators, angel investors, venture capitalists, mentors and legal experts.
Follow us on social media:
Facebook: @UCICove
Twitter: @UCICove
Instagram: @UCICove
LinkedIn: @UCIAppliedInnovation
For more information:
cove@uci.edu
http://innovation.uci.edu/
Strong patent protection is essential for a start-up biotechnology company and can be a valuable company asset. However, it is also expensive, with costs ranging from tens to hundreds of thousands of dollars over time. This session will focus on how to get the most out of your patent dollars.
This session presentation is available in audio format here: http://www.marsdd.com/bioent/dec4
This document discusses developing new technology products and innovation. It covers several key areas: paradigms for innovation; issues with invention commercialization; product evolution versus revolution; why companies need innovation; examples of innovation; sources of innovation; types of innovation; principles of innovation; and challenges with commercializing university research such as market problems, technology taker problems, legal problems, and institutional problems.
The document discusses various challenges non-profit research institutions face in accessing patented technologies. It notes that while research exemptions exist, they are limited. It also outlines 10 options for accessing other's technologies, such as cross-licensing, research-only licenses, patent pooling, alliances with independent developers, and pressing technology holders to share. The conclusion emphasizes the importance of understanding intellectual property rights and ensuring freedom to operate for public science worldwide.
Technology Transfer: Global trends in Tech TransferBananaIP Counsels
This document discusses intellectual property rights (IPRs) and technology transfer. It begins by outlining the objectives of understanding the intangible nature of IPRs, appreciating how IPRs provide competitive advantages, and gaining an overview of the legal bases for technology transfer. It then discusses several topics in more detail, including the economic and social rationales for IPRs, how IPRs contribute to intangible assets like reputation and brand value, pressures in enforcing IPRs globally, managing intellectual capital and assets, types of offshore collaboration, legal aspects of technology transfer, risks involved, and frameworks for regulating international transfer of technology and publicly funded technology.
Accessing other people’s technology for nonprofit researchBhavitha Pulaparthi
There are several options for non-profit research institutions to access patented technologies for research purposes. These include cross-licensing agreements where each party grants rights to their intellectual property; research-only licenses that do not permit commercialization; market segmentation strategies to avoid patent infringement; mergers or joint ventures between parties; cost-free licensing of unused technologies from private companies; patent pooling where rights are aggregated and licensed to third parties; and independent development of alternative research tools. However, current patent law provides no general research exemption, so non-profit institutions still face risks from infringement suits regardless of location or purpose. Mechanisms are needed to clearly define the boundaries between non-commercial research and commercial activities.
411 on IP 101 for Tech-Geeks in the Startup WorldG. Nagesh Rao
The document discusses intellectual property law and different types of intellectual property. It explains that intellectual property refers to creations of the mind like inventions, artistic works, and symbols. There are four main types of intellectual property: trademarks, copyrights, patents, and trade secrets. The document provides details on what each type protects, requirements for obtaining protection, duration of protection, and examples. It emphasizes the importance of understanding intellectual property law and protecting intellectual property.
This document provides an overview of the process of licensing intellectual property from universities to industry. It discusses:
1) The typical technology transfer process where a university evaluates an invention, patents it if promising, and licenses it to interested companies.
2) Ways companies can find and access university technologies, such as through personal contacts with researchers or patent searches.
3) Potential issues in university technology transfer, including early-stage research, conflicts over secrecy, and financial concerns for small companies.
Entrepreneurship 101: Commercializing University / Hospital TechnologiesMaRS Discovery District
Speaker: Tom Corr, DBA, MBA, ADipC, Director of Commercialization, IT and Communications, at Innovations at the University of Toronto
An audio presentation can be accessed by going to
http://www.marsdd.com/ent101
and clicking on the October 17, 2006 session:
"Entrepreneurship 101 - An Introduction to Commercializing University/Hospital Technologies"
The document discusses the need for universities to shift their research orientation towards more commercially focused and market-driven approaches. It outlines some of the challenges with traditional university research models and how expectations have changed to focus more on potential applications and commercialization. Some key steps are proposed for universities to take such as adopting a market-driven research framework, focusing on multidisciplinary teams, and protecting intellectual property to facilitate commercialization.
This document discusses how intellectual property strategies and open innovation can establish platforms for collaboration in the wind energy industry. While companies initially patented and kept technologies private, many large players are now embracing open innovation by collaborating with universities, partners, and competitors. This allows companies to leverage external ideas and knowledge to accelerate innovation. Examples of companies using open innovation include GE, Novozymes, and Dong Energy. The document argues that no single company can develop all needed technologies internally, and that products benefit from compatibility with others, making open innovation a valuable model for the wind industry.
This document provides an overview of working with private sector funders for research funding. It discusses the different types of private funders, including corporations, industry associations, and research institutes. It outlines some key differences between the university and corporate perspectives on issues like intellectual property ownership, timelines, and goals. The document also describes various types of private funding models like philanthropic donations, contracts, technology transfer, and partnerships. It provides guidance on understanding the needs and drivers of private sector funders and identifying potential funding opportunities. Contact information is provided for the relevant university offices that can assist with philanthropic, contractual, or technology transfer funding.
Technology Transfer in an Emerging EconomyMarcel Mongeon
Presentation made on August 13, 2009 in Nairobi Kenya. Sponsored by the Institute of Economic Affairs, this presentation highlights the improtant of engaging in technology transfer to being the results of publicly-funded research into actual use. Tips and traps of the process were highlighted.
Leveraging IP with Research Teams_Bootcamp Bilbao.pdfVITALISEProject
This project received funding from the European Union's Horizon 2020 program to develop a virtual health and wellbeing living lab infrastructure. The document discusses intellectual property, noting that IP protection encourages investment in creative works and that leveraging IP through various methods like licensing and partnerships can help optimize the value of innovations. It also outlines potential benefits and challenges of different IP leveraging options for research teams.
The document discusses intellectual property (IP) and patents. It defines IP and the main methods of protecting IP, including patents. Patents provide a temporary monopoly on inventions and encourage innovation. The summary describes the patent process, including filing requirements, examination, opposition periods, and duration of typically 20 years. It outlines strategies for patenting, such as aggressively patenting everything or using patents defensively. The benefits of patents include exclusivity, monopoly pricing and licensing income. Infringement can result in injunctions or requirement to pay reasonable royalties or lost profits.
A crucial element of formulating a firm’s technological innovation strategy is determining whether and how to protect its technological innovation. Traditionally, economics and strategy have emphasized the importance of vigorously protecting an innovation in order to be the primary beneficiary of the innovation’s rewards, but the decision about whether and to what degree to protect an innovation is actually complex.
The lecture covers topics such as:
* Which is best - licensing or start-up?
* Who owns my invention?
* How do I work with my Tech Transfer Office?
More information: http://www.marsdd.com/Events/Event-Calendar/Ent101/2007/introcommercializing-20071107.html
Speaker: Tom Corr, Associate VP Commercialization, University of Waterloo Office of Research
Radiant Energy Vacuum (REV) has developed a new dehydration technology that can efficiently dry foods, liquids, and pharmaceuticals using less energy than traditional methods, and they are partnering with large multinational companies like Nestlé, Danisco, and Bimbo to commercialize the technology through licensing agreements and machine sales that could generate over $50 million annually per partner. REV aims to establish this new dehydration platform globally through strategic collaborations to test and refine the technology while building a portfolio of patents and royalty revenue streams.
Virginia Tech E-Club: John Geikler on Intellectual PropertyNathan Latka
This document provides an overview of intellectual property (IP) types including trade secrets, trademarks, copyrights, and patents. It discusses Virginia Tech Intellectual Properties' (VTIP) mission to license university technologies to help them become commercial products that benefit society. VTIP evaluates inventions for patentability, commercial potential, conducts market research, negotiates licenses, and has various example technologies available for licensing.
Semelhante a Industry - University IP Negotiations (20)
World IP Forum presentation on building an innovation system through intellec...Dipanjan "DJ" Nag
Building an innovation ecosystem in India through IP. Startups are at the heart of building value to through technology transfer. The challenge that India has is valuation.
Speaking at the World Intellectual Property Forum was a unique experience. After many years to come back to India and learn about the advancements was truly a pleasure. India is now the 5th largest economy in the world with $3.7T and by 2030 it is predicted to be the 3rd largest economy.
My talk focused on the need for increased number of startups which are more intensive on hashtag#intellectualproperty. Currently India ranks #2 in the world after the hashtag#unitedstates in the number of startups created. But the valuation is still lagging. We had a wonderful discussion around that topic and I will post the slides in a later posting soon.
What to know if it is your first rodeo in patent monetization?Dipanjan "DJ" Nag
What to know if it is your first rodeo in patent monetization
The top two monetization deals from universities have received more revenues than the combined revenues of technology transfer for all universities reporting to AUTM. Yet, patent monetization is often seen in a negative light. Corporate licensing relies heavily on patent monetization and a company like IBM produces close to two billion dollars in annual revenues year after year. There are certain nuances of patent monetization that a university should adopt, which can be regarded as ethical licensing. The cornerstone of ethical licensing is to ensure patents utilized in a monetization campaign are of the highest quality and that the university takes every precaution to preserve its reputation. If it is the first time that a university is considering patent monetization, certain best practices from the corporate side before launching a campaign. This panel of highly experienced patent monetization experts will discuss the financials, due diligence, public perceptions, and legal implications of carrying out a highly successful patent monetization program.
What to know if it is your first rodeo in patent monetization V2_19DN.pptxDipanjan "DJ" Nag
The top two monetization deals from universities have received more revenues than the combined revenues of technology transfer for all universities reporting to AUTM. Yet, patent monetization is often seen in a negative light. Corporate licensing relies heavily on patent monetization and a company like IBM produces close to two billion dollars in annual revenues year after year. There are certain nuances of patent monetization that a university should adopt, which can be regarded as ethical licensing. The cornerstone of ethical licensing is to ensure patents utilized in a monetization campaign are of the highest quality and that the university takes every precaution to preserve its reputation. If it is the first time that a university is considering patent monetization, certain best practices from the corporate side before launching a campaign. This panel of highly experienced patent monetization experts will discuss the financials, due diligence, public perceptions, and legal implications of carrying out a highly successful patent monetization program.
The document discusses various aspects of innovation monetization through patents. It provides statistics on university patenting and licensing in the US, showing billions in research funding leading to hundreds of thousands of invention disclosures and patent applications, and tens of thousands of patents and active licenses. Top earning US universities are listed by licensing revenue. Examples are given of large companies like IBM, Qualcomm and Nokia that generate significant revenues from patent licensing, in some cases over 20% of total revenues or profits. The document also notes that on average, only about 40% of a technology's value is typically monetized through patents or licenses.
The Office of Technology Commercialization at Rutgers University had a very successful year in 2009-2010 according to their annual report. Some key highlights include:
- Invention disclosures increased 60% to 134 due to increased research funding.
- 100 patents were filed, up from 94 the previous year.
- 80 licenses, options and agreements were executed to commercialize university technologies.
- Total licensing revenue increased to $8.7 million and 8 new startup companies were created, 7 located in New Jersey.
- New initiatives included increased staffing and partnerships with venture funds to support faculty entrepreneurs.
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[To download this presentation, visit:
https://www.oeconsulting.com.sg/training-presentations]
This PowerPoint compilation offers a comprehensive overview of 20 leading innovation management frameworks and methodologies, selected for their broad applicability across various industries and organizational contexts. These frameworks are valuable resources for a wide range of users, including business professionals, educators, and consultants.
Each framework is presented with visually engaging diagrams and templates, ensuring the content is both informative and appealing. While this compilation is thorough, please note that the slides are intended as supplementary resources and may not be sufficient for standalone instructional purposes.
This compilation is ideal for anyone looking to enhance their understanding of innovation management and drive meaningful change within their organization. Whether you aim to improve product development processes, enhance customer experiences, or drive digital transformation, these frameworks offer valuable insights and tools to help you achieve your goals.
INCLUDED FRAMEWORKS/MODELS:
1. Stanford’s Design Thinking
2. IDEO’s Human-Centered Design
3. Strategyzer’s Business Model Innovation
4. Lean Startup Methodology
5. Agile Innovation Framework
6. Doblin’s Ten Types of Innovation
7. McKinsey’s Three Horizons of Growth
8. Customer Journey Map
9. Christensen’s Disruptive Innovation Theory
10. Blue Ocean Strategy
11. Strategyn’s Jobs-To-Be-Done (JTBD) Framework with Job Map
12. Design Sprint Framework
13. The Double Diamond
14. Lean Six Sigma DMAIC
15. TRIZ Problem-Solving Framework
16. Edward de Bono’s Six Thinking Hats
17. Stage-Gate Model
18. Toyota’s Six Steps of Kaizen
19. Microsoft’s Digital Transformation Framework
20. Design for Six Sigma (DFSS)
To download this presentation, visit:
https://www.oeconsulting.com.sg/training-presentations
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Industry - University IP Negotiations
1. DR. TATIANA LITVIN-VECHNYAK
PROF. DJ NAG
Acknowledgment to Alan Naidoff, ex-Merck
2. KEY TOPICS FOR TODAY’S
DISCUSSION
General Philosophy
Who Owns The Foreground IP*
Rights to Background IP*
IRS Issues
Publication*
Patent Prosecution*
Patent Enforcement*
Research, Development & Commercialization*
Improvements*
Other Issues
Conclusions
3. GENERAL PHILOSOPHY:
INDUSTRY PERSPECTIVE
Looking to university/research institution for:
subject matter expertise;
special skills/equipment/research tools;
Increase resources
University provides Research, not Development (well, maybe not?)
IP among most strategic assets
Protect product development investment
Control competition, product differentiation
For many, without IP, you’re out of business
Proper Case Selection – Too proprietary, keep in-house.
Industry has competition
4. Pharma/Biotech
IP provides licensing
revenue and product
protection
If we pay for the
research, why don’t we
own it (results
and/or IP)
Exclusivity maybe the
key
Only 1 or a few patents
are possibly relevant
IT
IP provides defensive
protection
Due to cross-licenses,
may be little value in
owning patents even if we
pay for it.
Non-exclusive license is
all we need.
500,000+ patents are
possibly relevant
5. GENERAL PHILOSOPHY:
UNIVERSITY/RESEARCH
INSTITUTION PERSPECTIVE
IP is important to a Research Institutional (Bayh-Dole) but
is not essential or top priority as compared to industry. We
protect it when commercially viable or requested by an
industry collaborator
More important to publish, obtain grants and educate
students.
Protection of intellectual property to encourage
commercialization is an obligation under Bayh-Dole for
federally funded research and is increasingly a goal outside
of federal funding
Difficult for institution to carry unreimbursed IP costs for
long; thus the goal is to patent when partnership w/ industry
is likely.
6. WHO OWNS THE
FOREGROUND IP?
INDUSTRY PERSPECTIVE
IP among most strategic assets; goes to the core of industry
vitality and objectives
Possible licensing revenue; necessary for viable product
Pharma: If we pay for it, we need access?
IT: may provide more value to have school own it. Better
able to negotiate overhead fees (≈50-55% of funds).
Differentiate: new compound /
transferred material/research tool
Ownership vs. License Right (exclusive/non-exclusive)
vs. Option right
7. WHO OWNS THE
FOREGROUND IP?
UNIVERSITY/RESEARCH
INSTITUTION PERSPECTIVE
** Distinguish between Service Agreement, Sponsored Research
Agreement and Collaborative Research Agreement
Based on whose employees invented or created it
Rarely is IP developed by industry funds alone – Bayh Dole and
other implications
Research projects rarely reflect the entire cost, even when “full”
indirect costs are included
Government funds created the specialized research facility,
equipment and capabilities required for the project
Background IP
Government-owned inventions have additional considerations
Public domain is OK for some types of inventions
8. WHO OWNS THE IP?
UNIV./RES. INSTITUTION
PERSPECTIVE (CONT’D)
Other arrangements could affect university tax-exempt bond
status
Revenue Procedure 97-14
“safe harbor” for certain types of activities
“The sponsor must pay a competitive price for use.”
License fee must be determined at the time the resulting technology is
available for use
9. BACKGROUND RIGHTS:
INDUSTRY PERSPECTIVE
If we’ve paid for the research and can’t benefit from the
discoveries because of your blocking technology, is that fair?
Professor in position to contaminate new research with
background IP.
When we license something we expect to be able to use it.
10. BACKGROUND RIGHTS:
UNIVERSITY/RESEARCH
INSTITUTION PERSPECTIVE
Granting a sponsor an unfettered right to any and all
background technology
Ties up the technology
If free, gives sponsor un paid-for benefits
Can impact researchers who aren’t benefiting from the
sponsored research
Government-owned technology licensed separate from the
research agreement
Look to provide research-only licenses to others, as needed
11. IRS ISSUES: INDUSTRY
PERSPECTIVE
Industry recognizes the need for universities to protect tax-
exempt status
Rev. Proc. 97-14 is cited as reason for not giving preferential
treatment in licensing
Industry feels that tax issues may be used as a smokescreen
or shield in negotiations to block certain options
A non-exclusive license is not ownership
13. PUBLICATION: INDUSTRY
PERSPECTIVE
Industry understands university/research institution’s need
to publish
Industry may seek “reasonable” limitations on publication
right
Exclusion of confidential information
Exclusion of information that adversely affects patent rights
Post-AIA Changes
15. PATENT PROSECUTION:
INDUSTRY PERSPECTIVE
Industry usually more aware of competitive environment
and can direct prosecution accordingly; timing of filings,
countries, claim structures
Depending on exclusivity, industry usually pays for some or
all of patent prosecution.
Whoever owns or has exclusive license should control and
pay for prosecution.
16. PATENT PROSECUTION:
UNIVERSITY/RESEARCH
INSTITUTION PERSPECTIVE
We must control prosecution and counsel for our inventions
It’s our asset!
However, copies and allows (and encourages) comments from
industry partner (Licensee)
May also allow industry to choose patent counsel provided
counsel is acceptable and will recognize research institution as
client
Costs generally to be paid by exclusive licensee for any
commercialization agreements other than reagents
17. PATENT ENFORCEMENT:
INDUSTRY PERSPECTIVE
Industry in the business of protecting technology and using patent
litigation to protect competitive position
Industry pays for its own participation; damages may be split with
university/research institution depending on exclusivity, royalties and
university/research institution involvement
Standing to sue likely to require “substantially all rights” under the
patent.
Orange Book listing requires exclusive rights
18. PATENT ENFORCEMENT:
UNIVERSITY/RESEARCH
INSTITUTION PERSPECTIVE
Cautious approach to risk
Balance with exclusive Licensee partner
Funding of activity
Resource management
Non-exclusively licensed technology – litigation is a rarity
Not generally worried about being co-plaintiff, so long as
licensee pays but reputation is important
Wants a path to make life-saving drugs available in
developing countries
19. RESEARCH, DEVELOPMENT
& COMMERCIALIZATION:
INDUSTRY PERSPECTIVE
Industry will develop and commercialize if economically
favorable to do so; specific diligence obligations are
disfavored, unpredictable and often inconsistent with other
products
Funded product development program in lieu of milestones
Unrestricted territory and field of use
20. RESEARCH, DEVELOPMENT &
COMMERCIALIZATION:
UNIVERSITY/RESEARCH
INSTITUTION PERSPECTIVE
University/research institution has affirmative obligation to
bring technologies forward so that the public can benefit
“Putting it on the shelf” breaches this obligation
Must have due diligence obligations that allow them to find
another way if technology is not being moved forward by
company
Lab must be free to continue research & develop new or even
competing technology
Need to protect future careers of inventors from
infringement blockade
21. IMPROVEMENTS:
INDUSTRY PERSPECTIVE
Industry would like to have all future improvements made to
a sponsored research invention be made available
The improvement that is made by university should be
licensed under the same terms as the original invention
University should not “double dip” for the same kind of
invention
University should not work with competitors with the
original invention to create an improvement that may be
competitive to the sponsor
22. IMPROVEMENTS:
UNIVERSITY/RESEARCH
INSTITUTION PERSPECTIVE
Improvements covered by existing patents and/or funded by
Industry Partner vs.
Improvements NOT covered by existing patents (but closely
related) or NOT funded by Industry Partner
Research institution position is that improvements covered
by existing patents AND funded by industry partners follow
terms of contract. Everything else is a separate negotiation.
23. ADDITIONAL TOPICS FOR
DISCUSSION …
Faculty consulting – pitfalls / benefits; impact on
collaboration & relationship
Research tools/MTA – how is the distribution of research
materials handled?
Valuing the “outcome” of sponsored or collaborative research
– timing (before or after?); expectations and importance of
Statement of Work (description)
Preferences – how do universities/research institutions and
companies choose partners or collaborators?
24. Collaborative research provides universities
and industry (and society) with substantial benefits
The parties must be willing to strike a balance between
their often conflicting interests, especially regarding:
IP ownership and rights retained by the university or
granted to the research sponsor or collaboration
Handling (& licensing) co-owned inventions arising
from joint research projects
Right to the free publication of results
Making inventions available under conditions that
promote their effective development and utilization
Few issues cannot be resolved if the parties are
motivated to obtain the many benefits of sponsored or
collaborative research