Transcript Role of IP in Benefiting from University-Industry Partnerships

Role of IP Benefiting from
University-Industry Partnerships:
Incubators and IP
Casey K. Chan
National University of Singapore
IP Academy of Singapore
New Paradigm
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labor intensive
high end manufacture
value added manufacturing
value creation
Investment Driven vs Innovation Driven
New Job Create
 15 million new jobs in the US
from 95 to 2000
 90%<50 employers
10000
10%
25%
50%
100%
Geek Index (Wired Aug 2001)
Number of PhDs…..
GE 0.83%-0.92%
1000
JPL Labs 32.00%
Genentech 6.66%-9.99%
Transmeta 12.50%
100
Red Hat 7.57%
Google 20.0%
Atheros 25.20%
Digital Fountain 10.59%
10
Longboard 3.30%
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1
10
100
1000
10000
Total Number of Employees
100000
1000000
Partnership
 Only the scientific and
technologically driven innovation
can power the economy to be
globally competitive.
 Close collaborative partnerships
in scientific research is critical to
sustain this innovation.
Corporations
 Increase shareholder value
 Servicing customers
 Financial bottom line
University
 Education
 Research
 Service
 ? entrepreneurship
Paradigm Shift
Can potentially create new problems
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No longer straight forward partnership
Ownership of and access to IP
Conflict of interest
Once-clear lines are now blurred
Academic Independence
 Bias observation and conclusion
 Confidentiality
 Publication right
 What is acceptable delay
 Right of review vs right to censure and
edit
Conflict of Interest
 Equity ownership vs royalty
 Clinical trials
 Paid consultant
 Benefit
 Founder
 Use of product in which one has a
royalty interest
Dr. Oliveri versus Apotex Inc
 deferiprone in the treatment of iron
overload in patients with thalassemia major
 drug lost effectiveness with long-term use
 drug might worsen hepatic fibrosis
 revised consent form
 drug trails were being terminated by Apotex
 published result in NEJM
 threat of lawsuit for violating confidentiality
agreement
Management of Conflict of Interest
 No exception school (MIT)
 Management school (others)
 Is there a conflict?
 Can it be manage?
 How to manage?
Warranty & Indemnification
 Does not warrant fitness for use or
merchantability
 Technology is usually early stage and
requires much additional
development
 University has no control over product
development
 Requires indemnification for product
liability
Reach through clauses
 For improvements
 For research tools
Reach Through Clause for
Improvement
 University general does not agree to
blanket improvement clause
 Exception: improvement is dominated
by base technology
 Terms of employment for academic
staff is different from that of
industrial scientist
Research Tools
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PCR
Vectors
Cre-Lox Recombinant
Stem cells
Possible obligation from the use of
research tools
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No obligation
No patenting
First rights of refusal
Royalty on derivative
Reach through clause for
Research Tools
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Pre-publication right
Rights of derivative material and IP
Typewriter analogy
Protest from the scientific community
Tragedy of the Common
 Great discoveries were available to all
but no one benefited.
 Bayh-Doyle – to promote the
economic development of the
products of federally funded research.
 Has the pendulum swung too far?
Benefits
 Real-world issues and practical
methods of problem solving
 Enrich the professional experience
 Widen the horizon of our staff and
students beyond the academic
frontier
 Enhancement of translational
research
 Alternate source of research funding
Mutually beneficial relationship when
carefully managed
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Detail is in the agreement
Work towards common goal
Understand each others’ objectives
Understand each others’ limitation
Academics need professional help in
negotiation