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© 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. university
industry
university knowledge
knowledge
money
money
Researchers (people!),
Faculties,
Administration,
etc.
Entrepreneurs
VCs
Productions
Marketing
Management
Stocks holders
etc.
TT
© Hagit Messer-Yaron, 2011
The Death Valley
Academia
Science
" Valley Death "
Products
Industry
© Hagit Messer-Yaron, 2011
Bridging over the “Death Valley”
Structured relations between
universities and industries:
R&D agreements
Licensing deals
New venture formation/Spin-offs
Other:
Individual entrepreneurship
© Hagit Messer-Yaron, 2011
The technology transfer process
Revenues IDF
Discovery &
Innovation Evaluation
Patenting &
Marketing
Strategy
R&D agreement
Or
Licensing deal
Or
Spin-off
Follow Up
on Contract
Academic Basic and
Applied Research
publications
To inventors
Individual entrepreneurship
To Industry
3 2
1
© Hagit Messer-Yaron, 2011
Academia
Science
" Valley Death "
Products
Industry
R&D agreements
Research and development
agreements
© Hagit Messer-Yaron, 2011
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 deals
Academia
Science
" Valley Death "
Products
Industry
Licensing deals
© Hagit Messer-Yaron, 2011
Example: Merz Pharmaceuticals and Tel Aviv
University Become Partners in Novel Drug Technology
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 /
Spin-offs
© Hagit Messer-Yaron, 2011
Example:
© Hagit Messer-Yaron, 2011
Individual entrepreneurship
Is 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 Private
Potential conflict of
interest
May be inefficient in the
longer term
=> Doable, but calls for coherent
policy and clear rules of operation
© Hagit Messer-Yaron, 2011
Issues to be considered
Ownership 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
of IP: anything IS a service invention
© Hagit Messer-Yaron, 2011
Weizmann’s pipeline:
50-70Patent applications/year.
20-30 Licensing agreements/year.
2-5 Spin-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 Transfer
© Hagit Messer-Yaron, 2011
Selected Weizmann Success Stories
QuantomiXTM | QX Capsule
Copaxone® | Teva
Rebif
® | Merck Serono
Encryption Algorithm | NDS
GeneCardsTM | XenneX
NanoLubTM | Nanomaterials
Dunaliella | Nikken Sohonsha
ErbituxTM | ImClone
Total sale of Weizmann based products €6 Bilion/year
© Hagit Messer-Yaron, 2011
With 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
Individual 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 Future IP
Once 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
Legal
Infrastructure
Policy Implementation
Personnel
What is needed for successful TT?
