Introduction to

research valorisation

Frederik Leys, Ph.D.Research Valorisation Manager

Ghent University

Frederik.Leys@ugent.be

Ebramus - Spring School - 2012 - IPEM

Research Valorisation?

What?

The use of research results, financed by public authorities, for socio-economic purposes

+ all processes required to make this possible

Mainly refers to technology (hence also often called ‘Technology Transfer’),

but is in essence much broader, can cover all insights/expertise

Has evolved in past 10 years as the 4th core task of universities,

1) education

2) research

3) services to society

e.g. public debates, studies with actual societal-economic relevance

4) research valorisation

Research Valorisation: why?

Many good reasons….

1) For the benefit of society

Direct: new products/medication…, e.g. for rehabilitation

Indirect: support economy through innovation

� Porter

Porter

Europe

Research Valorisation Why?

Many good reasons….

For the benefit of society (remember, society invests a lot in you!)

Direct: new products/medication…, eg for rehabilitation

Indirect: support economy through innovation

To increase job satisfaction of researchers

To stimulate entrepreneurship among university students/post-docs

� See Porter, vertical axis

To create your own job perspectives � spin-off

Involvement with valorisation will improve your CV

….

& to make money? Yes and no…

Research Valorisation

So far, so good....

But…., only a small fraction of technology with intrinsic potential makes it to the market…

-Many spin-offs don’t make it � inadequate management, difficulty in finding

investors…

-Technology is not marketed in the right way to the right companies (license)

-Intellectual property behind the technology insufficient protected

-The potential for industrial valorisation was simply not noted….

Research Valorisation: Who?

you!

With support from Tech Transfer, business developers,….

Outline

Intellectual property

Patents

Valorisation routes

Marketing

The starting point:

‘Intellectual Property’ (IP)Is what?

….can be many things!

In principle every insight resulting from research, that is new

But also: ideas, concepts, designs, know-how, trademarks, copyright….

� ‘All novel creations of the human mind’

Examples of valuable IP

Based on EPO Patent teaching kit

The starting point:

‘Intellectual Property’ (IP)Is what?

….can be many things!

In principle every insight resulting from research, that is new

Ideas, concepts, designs, know-how

� All novel creations of the mind

� Covered by Intellectual Property Law

Property

….of whom? Who has rights on the IP?

Does the inventor also own his/her results?

Ownership: important but not always

straightforward

University Regulations on IPR (Belgium)

-By law, the university owns by default all IP obtained by its employees

Can be negotiated differently in individual contracts

-Employees have to report IP with potential for valorisation to the Tech Transfer unit

-The Tech Transfer unit has to make a decision

1) ‘the university’ believes in the potential , and supports the valorisation efforts

� ownerhip stays with university

2) ‘the university’ does not believe in the potential � no support

� ownership returns to the inventors, who can proceed as they choose

University IPR in Europe

From Aldo Geuna and Federica Rossi, Research Policy, Elsevier,Volume 40, Issue 8, October 2011, Pages 1068–1076

Financial return for inventors?

20% � university overhead

50% � lab (of promotor, not ‘department ’)

30% � inventors

At Ghent University :

How can one protect IP rights?

1) Document your findings!

Laboratory notebooks signed, and countersigned

-have legal value, often used in court!

-must be kept confidential!

Digital time stamps (iDepot in Belgium)

Meeting minutes, keep track of who said what, esp. in

brainstorms

…..

2) Secrecy, ‘trade secrets’ (not very useful for a university)

Example: The Coca-Cola recipe

3) Patents, Copyright, Trademark

Examples of ‘registered’ IP:Examples of ‘registered’ IP:

Patents:

Trademarks:

Designs:

Plant variety rights:

Examples ‘ automatic’ IP:Examples ‘ automatic’ IP:

Literature

Arts

Software

Music

Databases

Au

dio

vis

ua

l w

ork

Patents: what?

• A patent is a legal title granting its holder the right to prevent third parties from commercially exploiting an invention without authorisation.

• Is a national/regional right!

• Is a prohibitive right!

• Is a temporary right: 20 years from filing!

Why does a society want patents?

• To promote innovation (by offering protection) and to

give incentive to share knowledge so that people can

learn (by requiring the disclosure of invention).

• Is a contract between society (receives knowledge) and

the inventor (receives exclusive rights)

Today however….: Patent Wars!

Patents;

essential to innovation from knowledge institutes

Must publish without delay to participate in world open science network

Cannot rely on trade secrets

Cannot exploit directly inventions, must license out

Most inventions are very early stage and need further development to become

economically attractive

‘Patenting is the only way to reconcile publication with innovation’

So what are the official requirements

for something to be ‘patentable’?

1) Invention

2) Novelty

3) Inventive Step

4) Industrial applicability

Art 52 of the European Patent Convention (EPC):

‘European patents shall be granted for any

inventions (1), in all fields of technology,

provided that they are new (2), involve an

inventive step (3) and are susceptible of

industrial application (4)’

Inventions = Concrete, man-made

solutions to technical problem

Must relate to a technical field

Must concern a technical problem

Must have technical features in terms of which the matter for which protection is sought can be defined in the claim.

Guidelines for the examiners of the EPO

Are not inventions:

-Discoveries, scientific theories and mathematical methods

� Do not confuse good science with patentable results

-Aesthetic creations

-Schemes, rules and performing mental acts, playing games or doing business, and computerprograms

-Presentations of information

Novelty….

Prior-art

First patent, then publish! Prior-art is often found to be from the

inventor….First step of patent filing (provisional) can go quick

� don’t hesitate

But, not only publications count as disclosures!

Take care with

Brainstorms with external partners

Showing prototypes (from which the working principle can

be deduced) to your sister who is an engineer

Thesisses, abstracts of thesisses…

…

These things can be disclosed before patenting, but only if you have

a ‘Non-Disclosure Agreement’ in place (NDA), or sometimes

referred to as Confidential Disclosure Agreement (CDA)

Determining inventors

Contributed to initial conception of the complete and operative invention and/orcontributed to reduction of practice.

In other words: who is able to make a disclosure which would enable a skilledperson to construct or use invention without extensive experimentation.

Are not inventors:

Who merely suggests an idea, a goal, a research plan, an obvious variation

Who worked with skill and diligence under direction to reduce the invention to practice

Who provided a research tool necessary to reduce the invention to practice

Who heads the lab without contribution to conception or reduction to practice

Who should be rewarded for hard work

Personal friends, collegues...

Incorrect mentioning of inventors is a reason

to refuse or invalidate patents!

Inventorship is much more strict then authorship!

Filing a patent

�Average costs (incl. Taxes) :

�Drafting + filing priority application 5000 – 9000 €

�PCT (additional 20 months): 4000 – 7000 €

�National phases (depending on country): f.e. European patent: 40.000 – 50.000 € (granting + validation in 10 European countries)

�Average time: 4-6 years in Europe

(EP-PCT route)

Much information only available in patents

Published elsewhere Published

in patents

80% found only in patents!

Patents as source of information

A lot of information that is never published in scientific

literature

Patents are especially rich source of sequences

Data are reliable, due to exigency of sufficient disclosure

In principle, patent text should be sufficient clear so that

person skilled in the art can repeat the experiments

Where to search?

• Free databases from patent officesEspacenet, USPTO, JPO, WIPO, ...

• Free databases from otherGoogle patent search, ...

• Commercial databasesMicropatent, Delphion, STN, ...

• Request searches from patent officesBelgian office (DIE), EPO, Dutch PO, ...

Legal Right

What for?

How? How long?

Strenghts Weaknesses

Trade

secrets

Valuable

information not

known to the

public

Reasonable

efforts to keep

secret

Until it is

public

- If secret, perpetual

monopoly

- Any subject matter

- Less expensive

- No formal protection

- Reverse engineering

- Industrial spionage

Trademarks Distinctive

identification of

products or

services

Use and/or

registration

n x 10 y* - Not expensive

- Long time protection

if re-registered

- Easily enforceable

(registered)

- No protection for

underlying methods/

techniques/resources

Copyright Original

creative or

artistic forms

Exists

automatically

70 y from

death

author

- Enforceble

- Not expensive

- Long time protection

- No protection for ideas

and info (only creative

or artistic expression)

Patents New inventions Application

and

examination

20 y from

filing*

- Enforceble

- Can be broad

- 20 y

- Good trade asset

- Expensive

- Technical feature

required

- Long time procedure

Overview (for your reference)

* Upon fee payments

A key tool in IP protection; the NDA/CDA

Common practice (maybe too common…), but be very careful

� Always check with your Tech Transfer office (check for foreing law issues etc.)

� don’t disclose confidential information unless absolutely necessary

university has limited means to follow-up, proof infringements, sue….

� If you have disclosed important confidential information, pay attention to the follow-

up after the meeting � send within x days in writing what was communicated as

confidential information! Is almost never done….

� Determine in advance carefully what topic will be discussed (the NDA subject)

� Don’t let some one tell you what you already knew…, unless you can prove that

you knew it � lab books, (digital) time stamps

� If during a meeting, a risk for IP contamination comes up � Refuse information!

� Keep track of all the information you need to keep secret… � another reason not

have too many NDA’s,,,,

Valorising IP � 4 routes (or combination of)

Licensing

Research collaboration with industrial partner

Services

Spin-off

@ Ghent University

Is technology marketing necessary?

‘Does technology sell itself ?’

2010:

� Web of Knowledge: ~1.5 million new articles

� WIPO: 162.900 International patent applications

‘If you don’t tell them, they won’t know’

Marketing

What is marketing ?

‘Offering solutions to the problems of others’

‘Offering solutions to the problems of others’

• Problems: What are the market demands and opportunities ?

• Others: Who are the clients ?

• Solutions: What are we offering ?

What is my ‘USP’ (Unique Selling Proposition)

• Offering: How to communicate our solution?

Prepare an ‘elevator pitch’ � capture the essence in a

few sentences

Corolla Sedan 1,4l D-4D DPF 6M/T

What is sold here ? What does the customer buy ?

INTANGIBLE

AUGMENTED

ACTUAL

CORE

FunctionPrice

Features

Design

Packaging

Efficacy

Delivery

Advice

Pre-sale

service

Warranty

Post-sale

ServiceBrand

Corporate

Image

Quality

perception

Reputation

Value perception

Organisation

Basic benefits

Product:

Important differentiator when marketing technology of

research institutes !!: ‘Scientifically proven’ sells…

Get to know your Tech Transfer office

• To DISCLOSE and PROTECT an invention…

• To manage your information…

• To (e)valuate your technology…

• To assess marketability…

• To identify potential commercial partners…

• To negotiate partering Agreements that represent bestyour / WSU’s interests…

• To start an invention-related business…

Acknowledgements

Dr. Dominic De Groote

Everyone at Tech Transfer of Ghent University, with special thanks to

Dr. Philippe Jacobs, Dr. Steven Van Hoof,

Dr. Piet De Vos, Dr. Johan Bil

Everyone at IPEM, with special thanks to

Prof. Dr. Marc Leman, dr. Michiel Demey, Leen De Bruyn, Pieter

Coussement, Nuno Deniz, Katelijne Van Gaens, Katrien Debouck

Thank you!