NATIONAL CONFERENCE Intellectual Property Policies for Universities and Innovation dr. sc. Vlatka...

NATIONAL CONFERENCE Intellectual Property Policies for Universities

and Innovation

dr. sc. Vlatka PetrovićHead, Technology Transfer OfficeActing Head, Centre for Research, Development and Technology Transfer

University of National and World Economy Sofia, November 25 and 26, 2015

Regional Examples of Best Practices for Developing an Institutional IP Policy


and Innovation

University of Zagreb

www.unizg.hr

70 000 students50% of annual research production in Croatia

80% of annual research production of Croatian universities

4 500 researchers

29 Faculties3 Academies of Arts

University Centre for Croatian Studies


and Innovation

University Technology Transfer Office Regulation

Approved by the University Senate on 16. December 2008

RATIONALE• Enables a route for the commercialization of IP resulting

from R&D performed at the University Faculties (which are separate legal entities)

• Gives a mandate to the University level TTO • Based on the principle of voluntary participation by the

Faculties and researchers

3


and Innovation

University TTO Regulation - Procedure• FORMAL DISCLOSURE

Made by Researcher and Faculty Head (Dean)

• IP DUE DILLIGENCE IP ownership clarified

• ASSIGMENT OF IP TO THE UNIVERSITYFormal contract, signed by UoZ, Faculty and ResearcherUoZ agrees to evaluate the IP and commercialize if the

IP passes evaluation; UoZ to cover the costs of these activities

UoZ has the right to terminate the contract at any time


and Innovation

University TTO Regulation - Procedure• TTO EVALUATION

IP protection aspects – protection options Commercial potential - commercialization strategy Report delivered (max 90 days after Contract)

• UNIVERSITY DECISION Assessment Committee gives an Opinion (max 60 days after

Report) Rector makes the final Decision (max 30 days after Opinion)

Assessment Committee - at least five members appointed by the Rector + Vice-Rector for science and technology + Head of TTO


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University TTO Regulation - Commercialisation

• IP PROTECTION & COMMERCIALISATION Based on proposed strategy UoZ free to engage external experts to support the activity UoZ covers the costs

• REVENUE SHARE SCHEME Direct costs are subtracted from the revenues received Default revenue split:

40 (Researchers) : 40 (Faculties) : 20 (University) UoZ to invest it’s share in support and promotion of R&D and IP

commercialization


and Innovation

University IP Management - Handbook

http://cirtt.unizg.hr/o-nama/publikacije/

IP CreatorsIntellectual Property RightsCommercialisationIP in Research and Development

Model documents: • agreements (NDA, licensing,

commercialisation, R&D project collaboration...)• legal statements• IP management clauses (can be used in an

employment contract or IP policy)

March, 2015


and Innovation

UoZ, School of Medicine – IP Management Regulation

Approved by the School of Medicine Council on 14. July 2015

RATIONALE

• Stimulating IP commercialisation• Ensuring efficient translation of research results to users• Additional income for research activities


and Innovation

School of Medicine IP Regulation - Scope• intellectual creations that belong to the School (by law or thorough

contracts) + non-exhaustive list • employees, students and external associates provided there is a written

permission or contract

Collaboration with third parties - contract with IP provisions that address: right to use results for further research, right to publish

Biological materials – Material Transfer Agreement needed for release from the School


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School of Medicine IP Regulation - Procedure

Invention disclosure made to the Science and Technology Transfer Office => Ensuring the right to publish while addressing the need for patent protection; patent application filing in 60 days if required by publication schedule

STTO - technology assessment (due diligence, initial patentability assessment, initial market potential assessment) and IP protection and commercialisation strategy proposal => ReportCommittee for Intellectual Property – formal Opinion on further management of IP with cost assessment=> 5 months to final decision made by the Dean's Collegium (Dean + Vice Deans)

if the decision is negative, IP released to creators (if no obligations towards third parties)Rationale for the negative decision: low likelihood of successful commercialisation or associated costs exceed available funds


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School of Medicine IP Regulation - Commercialisation

Possible commercialization strategies - licensing, spinout company formation, charging for related services

Revenue sharing - revenue after deduction of direct costs and taxes

under 65.000 EUR (500.000 HRK)25% School of Medicine / 25% School of Medicine Intellectual Property Fund / 50% IP creators

over 65.000 EUR30% School of Medicine / 30% School of Medicine Intellectual Property Fund / 10% IP creators’ research costs/ 30% IP creators


and Innovation

UoZ, Faculty of Electrical Engineering and Computing – IP Management Regulation

Draft version – to be approved by the Faculty Council

RATIONALE

Clarifying IP management issues in teaching, research and commercialisation activities


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Faculty of Electrical Engineering and Computing IP Regulation - Scope

• Industrial property and computer programs - created under work contract or while fulfilling study programme requirements or using significant Faculty resources

• provisions obligatory for employees and students– external associates: contract needs to address IP issues

Teaching materials - Faculty may distribute and publish (restricted system) for teaching purposes without additional compensation to Faculty employees, non-exclusive 5 years license for Croatia;• additional written permission needed for release to students


and Innovation

Faculty of Electrical Engineering and Computing IP Regulation - Scope

IP in collaboration agreements - guidelines

• Faculty seeks to retain IP rights whenever possible• joint ownership possible - based on documented contribution• financial compensation to be negotiated for additional ownership or

exploitation rights Faculty will seek to retain the rights for research and teaching use and

the right to publish the results• background IP or any IP that is not part of the project goals is excluded


and Innovation

• Written notice to the Dean • Dean may request advisory assistance form the Committee for cooperation with

industry and innovation, other Faculty employees and bodies or external experts

• Dean makes the decision regarding further IP management => further steps may include: IP protection, proof of concept, market assessment, commercialisation

Faculty and Creators agree on the implementation plan which addresses financing and human resource needs

In case of negative decision or no decision within 60 days IP is considered to be released to the IP creators

Faculty of Electrical Engineering and Computing IP Regulation - Procedure


and Innovation

Revenue sharing – revenue after deduction of registration and commercialisation costs

• 20% Faculty of Electrical Engineering and Computing• 80% IP Creators

Faculty of Electrical Engineering and Computing IP Regulation - Commercialisation


and Innovation

Thank you for your attention

dr. sc. Vlatka PetrovićHead, Technology Transfer Office

University of ZagrebCentre for Research, Development and Technology transferE-mail: [email protected]: http://cirtt.unizg.hr/

http://technology.unizg.hr/

NATIONAL CONFERENCE Intellectual Property Policies for Universities and Innovation dr. sc. Vlatka...

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