Industrys Perspective on IndustryUniversity Intellectual Property

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Industrys Perspective on Industry-UniversityInte
llectual Property

• 2002 ERC Summit
• February 24, 2002
• External Research Directors Network
• Industrial Research Institute, Inc.

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Agenda

• Benefits of Industry/University Research Projects
• Intellectual Property Scenarios
• Commercialization Steps
• Other issues
• Conclusions

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Benefits of Industry/University Relationships

• Industry
• Competitive Advantage
• Source of Employees
• Long Term
• Short Term
• Research Results
• Extension of technical competencies
• Cutting edge research

• University
• Relevant sponsored research projects
• Funding
• Equipment Donations
• Student and professorial employment
• Consulting
• Shared Knowledge

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Major Roles

• Industry
• Provide goods and services
• Capitalize on new ideas
• Provide employment opportunities
• Make a profit

• University
• Educate our society
• Train new scientists and engineers
• Continue to be on the leading edge
• Offer modern equipment and facilities
• Graduates that are sought after
• Valuable Research
• Publication
• General dissemination of knowledge

There is much common ground between the two
parties.
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Value

• ? To be a successful relationship, there needs to
  be an increase in value from the relationship for
  both parties. From the viewpoint of industries,
  that translates into Competitive Advantage as
  the major driving force.?

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Importance of Intellectual Property

• Industry Perspective
• Allows for potential competitive advantage
• Can be used as building block for additional IP
• Is a part of the overall company strategy from
  concept to sales
• Is part of a portfolio

• University Perspective
• Potential future compensation to the
  University/Faculty based on patented information
• Prestige
• Potential spin off companies

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5 IP Arrangements
1) Industry owns the IP generated as a result of
the collaborative research. 2)Industry owns the
IP but allows the University to continue with
development for research purposes only. 3) The
University owns the IP but industry has exclusive
rights. 4) The University owns the IP but the
business has exclusive rights in a narrow field
of use. 5) the University owns the IP but offers
the technology non-exclusive, royalty free.
Increasing Number of collaborative opportunities
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The Industrial Model
Intellectual property
Proprietary position
Competitive advantage
Unique product Innovation
Acceptance in the Market place
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CommercializationCosts/ Revenues/Risks
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Issues to be Considered in Negotiations

• Which party initiated the idea?
• Who is contributing financially?
• Money, Equipment, Feedstocks, Supplies
• Who is contributing technically?
• Cost of the overall development program?
• Cost to bring it to market?
• Risks --gt Who pays for the failures?

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Who is Best Suited to File for Patents?

• Industry
• Full time experienced staff
• Focused on market segments
• Can select the proper foreign filing
• Works with the people who are developing the use
  and market
• Knows where the technology can be applied to
  similar opportunities.

• University
• Has experienced staff but is spread thinly
• Communications between the scientists and IP
  personnel is more distant
• Scientist is not connected to the market
• Do not foreign file due to costs, - limited
  protection
• Their market is industry

We Think Industry is best suited.
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Other Issues

• Patents
• Need to balance publication timing with IP
  requirements
• Costs? who pays, who owns, who maintains
• How can industry be kept informed of status
• Foreign Filings
• Background rights
• Important for commercializing a product
• May be as important as technology developed

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Conclusions

• Benefits of universities, industry and society
  working together
• Sponsored research projects funding, equipment
  and resource donations
• Shared knowledge
• Source of employment
• New idea generation
• Industrys main driving force is competitive
  advantage.
• Industry should have strong ownership rights when
  they pay for the research.
• The overall road to commercialization is a long ,
  twisted and risky experience.
• Patents, Maintenance, and Patent strategy should
  be done by industry.
• Timing of publications should consider the
  overall IP requirements.