IP POLICIES AND ISSUES IN ITALIAN UNIVERSITIES

IP POLICIES AND ISSUES IN ITALIAN UNIVERSITIES

ALBERT LONG HALLThursday, May 17, 2012

Mr. Alberto Camusso - Attorney-at-Law / PartnerJacobacci & Associati, Turin, Italy

“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY

IP Polices and Issues in Italian UniversitiesMr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy


SummaryAn Overview 1.Legal and regulatory framework

2.University spin-offs

3.Patenting practices and licensing issues

4.A look ahead & conclusions

1. Legal and regulatory framework

The University system



State Universities Different funding and

financing Same legal framework Different governance

Non-State Universities

Public research entities/centres (CNR)



State law → framework for university establishment and public funding

Governance through autonomy → By-laws/statutes

General legal framework


Law n. 297/1999 and subsequent decrees on spin-offs

Law n. 383/2001 → Section 65 of the Code of Industrial Property on IP ownership

IP legal framework



Researchers employed by universities / R&D centres

Independent researchers

Researchers …


Institutional / Developed within the scope of activities of the university

Developed within specific projects financed by private entities

… and research



The researcher is the exclusive owner of patent rights

Universities can establish the maximum amount of royalties due, provided that researcher gets at least 50% of revenues (70-50%)

If the invention is not exploited within 5 years, the university gets a free, non-exclusive, right to exploit the invention

Ownership and entitlement for institutional R&D (Sec. 65 CIP)




Non-employed researchers are normally treated as employed researchers, through university regulations

Patent rights belong to the university, if expressly agreed pass on to commissioning private entity

Ownership and entitlement rights under Sec. 64 CIP (for private companies) may apply


Ownership and entitlement for institutional R&D (Sec. 65 CIP)

2. University spin-offs



Entity established for the industrial/economic exploitationof the R&D results (“companies which evolve from universities through commercialization of IP and transfer of technology developed within academic institutions”)

Mixed public/private funding

University personnel/students/professors involved or employed

Governance rules bound to achieve institutional goals, ie providing a strategic link between universities and businesses and maximising the value of IP




24 spin-off companies

13 out of 21 participated by industrial partners or investors

over 60% achieving positive results

* Source: University of Milan

University of Milan Spin-off experience*




180 new inventions (constant growth since 1992)

exclusive ownership of 66% of the patent portfolio

co-ownership with universities and foreign research centres

transfer of 25% of patents (license/assignment agreements)

IP results of Milan University

3. Patenting practices and licensing



Patenting strategies are affected by budget (overall University patent expenses in 2010: 2,1 million Euro*)

Mainly Italian applications (over 80%), then EP (9%)and PCTs (US and Japan, 9%)*

Managing and exploiting IP → Spin-offs acting as either IP holders or IP (master) licensees

* Source: NetVal



Hence …

University spin-offs MUST licence, how?

Non-exclusive grants, at least for “umbrella” patents (ie nanotechnology)

Limited duration (3 – 7 yrs) Minimum royalties /lump sum, regardless of patent file

history Options for new products, extensions, divisional

applications Standing for legal actions on licensee

3. Patenting practices and licensing

4. A look ahead & conclusions



Patent strategies: quality v. quantity?

- 274 applications filed in 2010 (around 13,000 IT/4,000 EP/2,600 PCT applications)- 320 patents granted in 2010- over 2,600 patents in universities’ portfolio

Young patents being licensed, no mature technology → higher risks and less revenues in the short run

Technology transfer is a resource for Italian system: still under construction (first office for TT founded in 1999), yet over 170% increase since 2004



Sec. 65 CIP called for reform – is ownership key to successful exploitation?

Still poor resources to finance public reasearch

Potential for co-ownership and co-financed projects → careful legal handling

High potential for private-funded R & D activities Major increase of IP awareness and culture in the last 10

years

4. A look ahead & conclusions

Thank youAlberto Camusso

PartnerJacobacci & Associati

[email protected] www.jacobacci-law.com

Corso Emilia, 810152 Torino - ITALY



IP POLICIES AND ISSUES IN ITALIAN UNIVERSITIES

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