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© Hagit Messer-Yaron, 2011 Prof. Hagit Messer-Yaron [email protected] Novi Sad, Oct. 12, 2011

© Hagit Messer-Yaron, 2011 Prof. Hagit Messer-Yaron [email protected] Novi Sad, Oct. 12, 2011

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© Hagit Messer-Yaron, 2011

Prof. Hagit Messer-Yaron

[email protected]

Novi Sad, Oct. 12, 2011

© Hagit Messer-Yaron, 2011

Technology Transfer in Countries in Transition: Policy and Recommendations

 1. Introduction, background and implementation

1.1 What is Technology Transfer and who benefits from it?

1.2 Metamorphosis of an invention – from scientific research to a product. 

2. Best Practice Examples: Technology Transfer in Israel

2.1 National and institutional policy

2.2. Bridging the "Development Gap" – providing proof of principle

2.3 Technology entrepreneurship in a research university

3. In the Public Interest: Guidelines for Commercializing University Technology in Countries in Transition

3.1 Case study on technology transfer in countries in transition

3.2 Guidelines and recommendations

© Hagit Messer-Yaron, 2011

Industry vs. universityIndustry vs. university

industry

universityknowledge

knowledge

money

money

Researchers (people!),Faculties,

Administration,etc.

EntrepreneursVCs

ProductionsMarketing

ManagementStocks holders

etc.

TT

© Hagit Messer-Yaron, 2011

The Death ValleyThe Death Valley

Academia

Science

"Valley Death"

Products

Industry

© Hagit Messer-Yaron, 2011

Bridging over the “Death Valley”Bridging over the “Death Valley”

Structured relations between

universities and industries:R&D agreementsLicensing dealsNew venture formation/Spin-offs

Other:Individual entrepreneurship

© Hagit Messer-Yaron, 2011

The technology transfer process The technology transfer process

RevenuesIDF

Discovery &Innovation

EvaluationPatenting & Marketing Strategy

R&D agreement R&D agreement OrOr

Licensing dealLicensing dealOrOr

Spin-offSpin-off

Follow Upon Contract

Academic Basic and Applied Research

publications

To inventors

Individual entrepreneurship

To Industry

32

1

© Hagit Messer-Yaron, 2011

Academia

Science

"Valley Death"

Products

Industry

R&D agreements

Research and development Research and development agreementsagreements

© Hagit Messer-Yaron, 2011

Example: ’s 4X technology Example: ’s 4X technology SanDisk's Press Release:

Milpitas, Calif., Oct. 13, 2009 - SanDisk Corporation (NASDAQ: SNDK), the global leader in flash memory cards, today announced it has begun production shipments of flash memory cards based on the company's advanced X4 flash memory technology. This innovative new technology holds four bits of data in each memory cell, twice as many as the cells in conventional multi-level cell (MLC) NAND (2-bits-per-cell) memory chips.

Tel Aviv University (TAU) had provided a significant contribution to the X4 advanced error correcting and digital signal processing technology, which was licensed exclusively to SanDisk by Ramot at Tel Aviv University Ltd., TAU's technology transfer company. "X4 took five years of development at SanDisk, and the finished product is a testament to the hard work and collaboration of the parties involved," said Dr. Ze'ev Weinfeld, Ramot's CEO. "Once we created the basic approach, SanDisk brought this to fruition by developing its advanced X4 controller and matching it with its advanced 43nm, 64Gb X4 memory thus making full X4 product implementation possible. This highlights the benefit commercial companies may gain from cooperation with TAU, building on our pool of talent and expertise.“

http://www.sandisk.com/about-sandisk/press-room/press-releases/2009/2009-10-13-sandisk-ships-world%E2%80%99s-first-flash-memory-cards-with-64-gigabit-x4-(4-bits-per-cell)-nand-flash-technology

© Hagit Messer-Yaron, 2011

Licensing dealsLicensing deals

Academia

Science

"Valley Death"

Products

Industry

Licensing deals

© Hagit Messer-Yaron, 2011

Example:Example: Merz Pharmaceuticals and Tel Aviv Merz Pharmaceuticals and Tel Aviv University Become Partners in Novel Drug Technology University Become Partners in Novel Drug Technology

Development for Treatment of Alzheimer's Development for Treatment of Alzheimer's

“ Tel Aviv, Israel/Frankfurt am Main, Germany – July 10, 2007. – A novel drug technology to treat Alzheimer's disease developed by Prof. Ehud Gazit and his team of researchers at the George S. Wise Faculty of Life Sciences at Tel Aviv University (TAU), Israel, was licensed to Merz Pharmaceuticals GmbH by Ramot at Tel Aviv University Ltd., the University’s technology transfer company. The worldwide exclusive license deal includes an upfront fee and milestone payments as well as royalties on future sales.”

© Hagit Messer-Yaron, 2011

Academia

Science

"Valley Death"

Products

Industry

Spin offs

New venture formation / New venture formation / Spin-offsSpin-offs

© Hagit Messer-Yaron, 2011

Example:Example:

© Hagit Messer-Yaron, 2011

Individual entrepreneurshipIs there a room for Individual entrepreneurship

of university professors, outside the structural technology transfer process?

Is there a need for Individual entrepreneurship of university professors, outside the structural technology transfer process?

Can it be done?

© Hagit Messer-Yaron, 2011

Individual entrepreneurship

Why YES The researcher feels

responsible and is more motivated

More efficient knowledge transfer to the industry.

Why NO Public to PrivatePublic to Private Potential conflict of

interest May be inefficient in the

longer term

>= >=DoableDoable, but calls for , but calls for coherent coherent policy policy and clear rules of operationand clear rules of operation

© Hagit Messer-Yaron, 2011

Issues to be consideredIssues to be consideredOwnership of IP: service inventions? If YES – set up an agreement between all parties

to reflect freedom of operation vs. obligation. If no – consider the statues of future IP.

Conflict of interests, conflict of commitment: Set up clear rules regarding the use of university

resources, researcher own time resources; involvements of students.

© Hagit Messer-Yaron, 2011

Example #1: Weizmann Inst. Rules Example #1: Weizmann Inst. Rules of IP: anything IS a service inventionof IP: anything IS a service invention

© Hagit Messer-Yaron, 2011

Weizmann’s pipeline:

50-70Patent applications/year .

20-30Licensing agreements/year.

2-5Spin-off companies/year.

Team of 17 employees with an annual budget of €2.3M. More than €1M are spend on patent filing and prosecution.

Successful Technology TransferSuccessful Technology Transfer

© Hagit Messer-Yaron, 2011

Selected Weizmann Success StoriesSelected Weizmann Success Stories

QuantomiXTM | QX Capsule QuantomiXTMQX Capsule |

Copaxone® | TevaCopaxone® | Teva

Rebif ® | Merck Serono Rebif ®Merck Serono |

Encryption Algorithm | NDSEncryption Algorithm | NDS

GeneCardsTM | XenneXGeneCardsTM | XenneX

NanoLubTM | NanomaterialsNanoLubTM | Nanomaterials

Dunaliella | Nikken Sohonsha DunaliellaNikken Sohonsha |

ErbituxTM | ImCloneErbituxTM | ImClone

Total sale of Weizmann based products €6 Bilion/year

© Hagit Messer-Yaron, 2011

With THE BEST ScienceWith THE BEST Science

MONDAY, JULY 4, 2011

Weizmann rated best academic workplace outside US

The 150,000-square-meter leafy, landscaped campus of the Weizmann Institute of Science in Rehovot has again been named in The Scientist magazine’s annual survey as the “best place to work in academia” outside the US.

© Hagit Messer-Yaron, 2011

Example #2 – TAU’s policy regarding Example #2 – TAU’s policy regarding Individual EntrepreneurshipIndividual Entrepreneurship

As in the Weizmann inst., the default is that a researcher’s invention is a service (university) invention.

A claim that the invention is not DUE to his/her “service” and it is NOT a university invention is studied and an invention can be defined (by the university) as a non-service invention

* => The researcher has a complete freedom of operation (subject to NO COI/COC)

With a service invention, there are cases where the University decides that it is not interested in commercialize the invention, and the IP is assigned to him/her with an obligation to share with the university 20% of his/her income.

* => The researcher has a complete freedom of operation (subject to NO COI/COC)

© Hagit Messer-Yaron, 2011

Dealing with Dealing with FutureFuture IP IPOnce freedom of operation (FOO) were given to an

individual researcher, based on existing IP, the main challenge is dealing with future IP created by the researcher.

The policy should leave FOO together with the rights of the university w.r.to its IP.

In TAU, a specific regime where FOO is guaranteed has been formally defined, with on obligation for full disclosure to the University, and sharing revenues from activities outside this regime.

© Hagit Messer-Yaron, 2011

© Hagit Messer-Yaron, 2011

LegalInfrastructure

PolicyImplementation

Personnel

What is needed for successful TT?What is needed for successful TT?