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Legal Tools to Stimulate IP Creations in Academia

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Legal Tools to Stimulate IP Creations in Academia Legal tools to stimulate IP management in Academia Dariusz Kasprzycki 博士 Jagiellonian University, CIPnet The 4th EU-China IP Academic Forum 22.10.2019 Do we need to regulate IP management? What should be regulated? On which level? Do we have any evidence which regulatory steps are effective? The model solution - Bayh-Dole Act 1980 • Rationale • Solution applied o University ownership • Unquestionable success (?) o Contribution to GDP (591 billion USD) and gross industrial output (1,3 trillion USD) from 1996 to 2015 o Increase in patenting o Incentives for spin-off creation o Basic research affected? o The effect of increasing commercialization or the cause? • The effect of emulation of leading solution o Bayh-Dole alike regulations across the world IP management • Creating opportunities • Evaluation • Awareness building • IP protection • IP identification • Exploitation • Evaluation • Protection • Transfer • Monitoring/Enforcement Possible points for the regulation Raising IP awareness eg. obligatory IP courses for students and/or academics IP Identification eg. obligatory notification Evaluation eg. compulsory valuation IP protection eg. entitlement/ownership fees reduction Transfer eg. obligatory / recommended commercialization routes benefit sharing rules Fundamental issue to be settled - ownership of the research results • Professor’s privilege vs. institutional ownership • Europe •No change: •Bayh-Dole-like legislation: United Kingdom, Spain, Turkey, Belgium •Professor’s privilege: Sweden •Switch to institutional ownership •from a professor’s privilege system (e.g. Germany, Austria, Finland, Denmark) •from a (partly) state ownership of IP from publicly funded research (e.g. Poland, Hungary) •Switch to professor's privilege •Italy •World • China, South Africa, Japan, Brazil, Singapore, Mexico, Russia… How the institutional ownership affects knowledge transfer? Influence on patenting and commercialization Need to analyse university-owned patents and university- invented patents Need to assess patent quality (value) Comparison between university-owned patents and university invented patents • HEI ownership is negatively associated with the likelihood of selling the patent and creating an academic spin-off; • university ownership positively affects the patent's licensing uses. Study based on sample of 858 university European patents between 2003 and 2005 across 22 countries Paola Giuri, Federico Munari & Martina Pasquini (2013)：DOI: 10.1080/13662716.2013.824195 The impact of national legislative frameworks on the higher education sector’s contribution to innovation • Unique survey • Cross country analysis • Countries with different IPR regulation stories o Sweden ‘Professor’s privilege’ legislation since 1949 o Spain Institutional IP ownership legislation since 1986 o Germany Institutional IP ownership legislation since in 2002 o Poland Institutional IP ownership legislation since 1993 with IP management reform started in 2005 Two university cases universities that share as many characteristics (size, type and disciplinary and subject coverage) as possible but exhibit differences in IP practices • The data collected in two rounds in 2006/2007 and 2012/2013 University patenting and technology commercialization – legal frameworks and the importance of local practice Dagmara M. Weckowska, Jordi Mola-Gallart, Puay Tang, David Twigg, Elena Castro-Martínez, Izabela Kijenska-Dabrowska6, Dirk Libaers7, Koenraad Debackere8 and Martin Meyer Findings • University IP ownership is conducive, but not necessary • „the cross-country comparisons suggest that the shift to Bayh-Dole-type legislation may stimulate the development of local practices for IP management and exploitation, which in turn stimulate academic patenting, but it is not always sufficient, and definitely it is not always necessary” • The development of supportive local practices are possible before legislative changes and even without them • Isomorphism of IP management and exploitation practices • Collected data proved that at the range of local practices for IP management and exploitation was very similar across countries. • Legal advice, IPR counselling and management, market analysis, IP marketing, financing, company formation expertise and incubation services. „It’s an exciting time, but a confusing one, too.” On which level IP management regulation should be introduced? • Statutory regulations (fundamental principles) • Internal level (the substance) • Customs / micro regulations /tools and processes daily routine / assistance from technology transfer office National regulation – Polish example ▪ Duty to regulate ▪ rights and obligations of universities, employees, students and doctoral students in context of the protection and use of copyright and industrial property rights, ▪ rules for remuneration offered for creators (including principles of revenue sharing) ▪ rules and procedures of commercialization ▪ rules for making use of university’s property for commercialization purposes and the performing (provision of) R&D services ▪ terms of use of research infrastructure of the university (what could be adopted in the separate regulation) ▪ Established on statutory level (public universities) ▪ rules and procedures for notification of the research results by employees, students and doctoral students ▪ rules and procedure of informing employee about the decision on commercialisation ▪ Commercialization paths ▪ rules and procedure of benefit sharing Conclusion • Prevailing solutions • Adapted to specific conditions • Supported by flexibility • Soft law o EU recommendation o WIPO IP Policies (new 2019 edition!) • Specific programmes stimulating IP management o CIPnet China Intellectual Property Management Project China Intellectual Property Management Network The 4th EU-China IP Academic Forum Alicante 22.10.2019 Dariusz Kasprzycki 17 18 Overall objective of CIPnet • To promote the modernisation and harmonisation of Intellectual Property Management practices in the higher education system in China, with a view to enhance university-industry collaborations and contribute to economic and social development. Indicators: • Increased innovation culture in CN HEIs • Improved TT&IP measures, practices and structures in Chinese HEIs. 19 Specific objective • To establish a National Higher Education IP Network as a learning platform to foster the modernisation, harmonisation and strategic planning of Intellectual Property Management practices and regional integration in Higher Education of China CIPnet network IP management good TT&IP policies platform practices Bottom-up approach Networking focus 20 Main activities Analysis of level of IP Benchmarking of TT&IP IP Management 01 awareness and use of 02 good practices 03 experts database IP tools within HEI • TT&IP good practices that could be replicated by the • Compilation of the • A survey on IP & TT members of the network. TT&IP relevant within Chinese HEIs • Good practices Guide for experts TT&IP management in HEIs 04 Capacity building 05 Networking • Face-to-face • CIPnet platform trainings events • CIPnet Contact Points • Online trainings • Roundtables and cooperation • Regional replication with local stakeholders workshops • Strategy for development and sustainability 21 REPORT ON THE LEVEL OF TECHNOLOGY TRANSFER AND INTELLECTUAL PROPERTY AWARENESS AND TRAINING NEEDS • First outcome of the project • Questionnaire based survey • Questions on: implemented (or not) IP Policies, incentives mechanism, commercialization indicators ; TTOs establishment and role • researching the needs of Chinese universities • 180 interviews conducted , 86 universities • Main findings • overall demand for the different kind support • the need for the creation of the network 22 • Detailed information – activities, publications, objectives, partners • News & Events – trainings, roundtables, dissemination activities, conferences • On-line learning platform • Resources, publications • Contact information TECHNOLOGY TRANSFER FOR SUSTAINABLE DEVELOPMENT - CONTRACTS AND THE TRIPLE HELIX Law School of Nankai University, 7-8 November 2019 23 IP International Conference “Knowledge Sharing & IP Management Strategies for China” • The current and future challenges on TT&IP for CN HEIs • Discussion and roundtables of CIPnet network members, stakeholders, IP&TT professionals, private sector representatives • Presentation of „Blueprint for innovation & IP strategies for China” • Shanghai, September 2020. 24 谢谢 25.
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