Technology Transfer from Public Research Organizationsdocuments.worldbank.org/curated/en/... · strongest success in Technology Transfer, for example the USA, UK and Germany, have

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Technology Transfer from Public Research Organizations A Framework for Analysis

Anwar Aridi and Lisa Cowey

April 2018

Technology Transfer from Public Research Organizations

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Contents ACRONYMS .................................................................................................................................. 3

FOREWORD ................................................................................................................................. 4

I. OBJECTIVE AND TARGET AUDIENCE ........................................................................................... 6

II. ANALYTICAL FRAMEWORK FOR THE DIAGNOSIS ....................................................................... 8

Introduction and definitions ..................................................................................................................... 8

The importance and role of TT for economic development ..................................................................... 9

Forms of TT and Knowledge Exchange ..................................................................................................... 9

Measuring TT activities: Good practice policy regimes and associated indicators ................................ 10

III. ASSESSMENT FRAMEWORK ................................................................................................... 17

Overall effectiveness of the IP system .................................................................................................... 17

Clear and transparent IP ownership normative framework ................................................................... 19

Clear and transparent normative framework incentivizing and rewarding researchers to engage in knowledge transfer and for licensing IPR from the public to the private sector .................................... 20

Clear and transparent normative framework for establishment and financing of academic spin-offs . 21

Clear and transparent normative framework for conducting contract and collaborative research ...... 23

Clear and transparent normative framework for academic consulting activity ..................................... 24

Clear and transparent normative framework for engagement in a 'third stream mission' ................... 24

Safeguarding the public interest in transfer of publicly funded technologies ....................................... 25

ANNEX 1: INDICATORS OF TT ENGAGEMENT ............................................................................... 27

1. National and institutional regulatory environment ........................................................................ 27

2. Support to TT and research commercialization .............................................................................. 28

3. Indicators of patenting activity ....................................................................................................... 29

4. Indicators of spin-off/start-up activity ............................................................................................ 29

5. Indicators of contract and collaborative research .......................................................................... 30

6. Indicators of academic consulting .................................................................................................. 30

7. Indicators related to institutional, regional, or national commitment and state of development of the innovation ecosystem ....................................................................................................................... 30

ANNEX II: THEORY OF CHANGE ................................................................................................... 32

BIBLIOGRAPHY ........................................................................................................................... 33

USEFUL RESOURCES ................................................................................................................... 34

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ACRONYMS

Acronym Definition

3Ps Profit, People, Planet

BERD Business Expenditures on R&D

CoI Conflict of Interest

EPO European Patent Office

EU European Union

FTE Full Time Equivalent

GVC Global Value Chain

HEI Higher Education Institution

HERD Higher Education Research and Development

IP Intellectual Property

IPR Intellectual Property Right

M&E Monitoring and Evaluation

MoU Memorandum of Understanding

MS Member State

PCT Patent Cooperation Treaty

PRO Public Research Organization

R&D Research and Development

S&T Science and Technology

S3/RIS3 Smart Specialization Strategy

PPPs Public-Private Partnerships

TT Technology Transfer

TTO Technology Transfer Office

VAT Value Added Tax

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FOREWORD

Publicly funded research organizations (research institutes and higher education institutions [HEIs]) can play a significant role in national research and development (R&D) activity as part of a wider policy mix. Countries that are transitioning toward a market economy often struggle with the concentration of research activities in public research organization that have little economic impact, with the private sector taking a much smaller role. This concentration is frequently revealed by the relative size of business expenditures on R&D (BERD) and Higher Education Research and Development (HERD) for a country. In this situation, it is important that research outputs and research strengths can be transferred beyond the academic sector and used for wider impact, including for economic growth.

Framework conditions such as policies, procedures, regulations, instruments and infrastructure are known to play a key role in facilitating technology transfer (TT) from public to private sectors. Critical regulatory issues to be addressed in the external environment, in which both public and private sector players operate, include national legislation relating to ownership of inventions, particularly those stemming from a contract of employment or use of public research funds and intellectual property rights including enforcement of monopoly rights. As highlighted by Gutierrez and Correa (2012), “weaknesses in the IPR regime are a major impediment to commercializing R&D outputs” in part because “firms would be more reluctant to invest if the legal framework is unclear about the ownership and commercialization rights of innovations”. Additionally, Correa and Zuniga (2013) highlighted the importance of the internal environment at public research institutions. Two issues frequently emerge: the incentive regime under which scientists and PROs work and reducing the bias against their active involvement in TT activities. A key factor facing the incentive regime is “the regulation of intellectual property rights.” Correa (2014). Promoting institutional policies that will facilitate and not inhibit technology transfer has been a key role for WIPO for many years (WIPO 2010, 2012).

Following on from these earlier works, this report specifically focuses on the regulation of intellectual property rights (IPRs) at national and institutional levels as a precondition for effective TT as well as the normative regulatory frameworks in which researchers can act to independently or collaboratively create new and valuable knowledge. These include multiple mechanisms for technology transfer and ‘knowledge exchange’ ranging from collaborative and contract research through consulting and open access to equipment and facilities, to spinout and sale or licensing of IPR.

The rational for focusing on this aspect is that while policy drivers and instruments, including private sector innovation vouchers and Proof of Concept schemes will help increase the amount of TT ‘traffic’, conditions also need to be established that provide effective and uninterrupted highways and bridges for these vehicles. If policy drivers and enablers include recognition of innovation activity as part of academic career advancement, the introduction of ‘boundary-spanners’ (for example, TT intermediaries), provision of early-stage finance, and investment in the S&T parks (Correa and Zuniga 2013), then optimized IPR conditions and institutional Technology Transfer regulations can be viewed as removing barriers and bridging gaps by underpinning the transportation network.

Using a robust assessment framework to diagnose the ‘health’ of the technology transfer environment is a way to identify existing barriers or poor linkages and to improve legislation, regulation and policy. This framework needs to encompass the national environment as well as the local one as TT performance at institutional level is strongly influenced by legislation and government policy as well as the economic and social environment in which it is taking place. Developed economies whose PROs are demonstrating

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strongest success in Technology Transfer, for example the USA, UK and Germany, have aligned their legislation and academic rewards systems to incentivize and motive researchers in different ways (Lam A. 2011). They also tend to have a strong private sector that can both demand and absorb research from the public sector. These external factors need to be considered when interpreting the absolute results of a framework assessment, particularly when focusing on absolute performance of a PRO or its Technology Transfer Office.

This document focuses on framework conditions and specifically on the issue of the regulation of intellectual property rights and reducing the bias against active researcher involvement in TT activities. It is therefore highly focused on an area that remains critical for countries that are moving towards knowledge based economy and are still making significant changes to legislation, policy and institutional processes in order to deliver economic impact from research activities: a third-stream mission. Finally, while existing frameworks of reference ‘technology transfer’ (AUTM, ASTP-PROTON) tends to focus almost exclusively on patenting and licensing of IPR, the proposed framework in this note includes more modern ‘knowledge exchange’ activities e.g. individual academic consulting and Open Access to research infrastructure. These aspects can be particularly relevant for institutions that do not have a very strong technology pipeline that can yield IPR for licensing but who have some tradition of researchers using personal contacts to generate individual consulting and contract research opportunities. Legitimizing and regulating such activities can be an important step in widening the official mission of an HEI beyond teaching and research.

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I. OBJECTIVE AND TARGET AUDIENCE

The objective of this note is to facilitate a consistent and comprehensive approach in the analysis of intellectual property rights (IPRs) and normative regulations and conditions related to technology transfer from public to private sector. The primary purpose of such analysis is to help policy makers, practitioners, and individual institutions to improve their framework conditions for Technology Transfer within wider efforts to improve the overall national innovation system (NIS). Adopting an innovation ecosystems framework allows policy makers to identify missing links among and across innovation capabilities and institute relevant interventions that could correct market and system failures and ultimately yield better firm productivity and innovation. The diagnostic framework also allows performance benchmarking between technology transfer offices but in the context of the national regulatory environment in which they are operating.

The proposed framework is most relevant to countries that are in transition (or have recently made the transition) towards a knowledge based economy and who are in the process of adjusting their legislation and setting up or assessing the existing performance of actors supporting technology transfer. In the Innovation Paradox flagship report by the World Bank, this category of countries is defined as Stage 2 countries of Maturing NIS (Cirera and Maloney, 2017). Such countries are still in the process of building technological capabilities through introducing policies and incentivizing R&D performers, linking industry and academia, and improving research quality. By building on the innovation ecosystem framework, it is possible to address the innovation policy challenges in emerging ecosystems by introducing policy instruments that build the capabilities of the private sector and match the level of maturity of the ecosystem. Illustrated in the Figure below, Cirera and Maloney (2017) call this approach the ‘capabilities escalator’. A capabilities view emphasizes the alignment of policy support instruments and associated public resources with the specific capability needs of a given developing economy. Thus, it would be less relevant to introduce Stage 3 instruments in an underdeveloped ecosystem that lacks basics capabilities and resources to implement or absorb such support.

Based on this approach, the sequencing and complementarity of innovation support instruments—otherwise known as ‘the innovation policy mix’—is important for building private sector capabilities over time and expand its connection to knowledge providers. The diagnosis described herein attempts to identify the weaknesses and failures within the national, regional, and institutional IPR regimes of Maturing NIS for better targeting and alignment of the policy mix to improve PROs economic contributions and their linkages with the private sector.

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Figure 1. The Capabilities Escalator: Innovation Policy Mix

Source: Cirera and Maloney (2017). P. 148

Note: NIS = National Innovation System; NQI = National Quality Infrastructure; R&D = Research & Development; STEM = Science, Technology, Engineering and Mathematics.

The target audience for this publication is: (i) national and regional policy makers with responsibility for competitiveness and innovation, who need to better understand the issues to be reflected in revised legislation and policy or who wish to establish a monitoring and evaluation (M&E) system to allow them to reward the technology transfer performance of the most highly performing PROs; (ii) Intermediaries and PROs who are establishing TTOs for the first time or reviewing the performance of an existing one and trying to improve local framework conditions; (iii) Task Team Leaders at the World Bank and TT experts and practitioners who are supporting both policy makers and PROs and may not have a framework for analysis that is applicable in such an early stage environment.

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II. ANALYTICAL FRAMEWORK FOR THE DIAGNOSIS

The framework can be viewed as a layered onion structure with national level issues on the outside, institutional issues under the surface and TTO issues towards the core. The national (macro) level defines the overall framework conditions in which a PRO/TTO will operate (legislation and policy relating to invention ownership and monopoly rights for exploitation). The inner layers regulate how the PRO researchers are incentivized and rewarded to engage in Technology Transfer activities including through the mission, culture and policy of their academic employer; the core reflects the performance of the TTO in helping to transfer technology beyond the boundaries of the organization.

It is important to assess all three layers of the onion because most impact will result from not just aligning but coupling institutional by-law to national legislation and policy. A legislative barrier at national level for example, preventing academics from staring companies or carrying our consulting alongside their academic job or a policy approach that offers no rewards for such engagement in terms of career progression or financial gain, can have a significant impact on the wiliness and interest of a researcher to engage in TT activity which in its turn will affect TTO performance.

Figure 1. Analytical framework

Introduction and definitions

'Technology Transfer' (TT) is typically defined as the process of transferring scientific findings from one organization to another, frequently through the licensing of IPRs, for further development and commercialization. The term is now often used to encompass a wider range of activities, including those that are seen to be integral to a 'third stream mission' of universities, alongside their traditional activities of teaching and research. Used in this wider context, 'Tech Transfer' also encompasses 'knowledge

Core: TTO issues

Inside: Institutional issues

Outside: national framework contions

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exchange' including consulting, collaborative research, and contract research, as well as other forms of 'co-creation' of new knowledge. In this document, TT is used in this wider context.

The importance and role of TT for economic development

Knowledge created by public research organizations (PROs)as a result of publicly funded research and development (R&D) has the potential to benefit the economy, society, and the environment—the so-called 'triple bottom line' or 3Ps (Profit, People, Planet). However, transfer of tangible technology and tacit knowledge from a research organization does not happen spontaneously. Traditional, linear dissemination methods such as publication of peer review papers often have limited economic impact and researchers frequently lack incentives to engage in more complex transfer mechanisms that have wider impact on local economic development. This usually is referred to in economic literature as information asymmetries (related to the associated uncertainty and valuation of invention) and misalignment of interest between academic researchers and private firms. Private firms are more interested in immediate/short-term returns resulting from incremental innovations while researchers are occupied with teaching and publishing academic papers and advancing science and their own academic career. A clear gap between academia/research and industry is often present in countries and regions that have failed to modernize their innovation systems. In contrast, research shows measurable benefits to a knowledge-based economy in countries that have aligned incentives for TT, strengthened their IPR regimes, and incentivized their PROs to embrace a 'third stream mission' of innovation alongside teaching and research and invest in culture change, TT intermediaries, and associated infrastructure.

Forms of TT and Knowledge Exchange

Traditionally, academic research results have been disseminated through journal publications, seminars, conferences, and books. With the advent of more entrepreneurial universities, a wider spectrum of engagement methods has emerged that enables technology to be transferred and knowledge exchanged between the academic and commercial sectors. PROs have established specialized TT units and have proactively engaged in identifying, protecting, and licensing their technology to external enterprises, for example, through a license of IPRs and sharing commercial profits with the inventors and the institution. Increasingly, PROs also start and take an equity stake in their own 'spin-off' companies that take the commercialization forward and ultimately contribute revenue streams to the PRO through sale of a product or service based on the technology. Academic investors may work in the spin-off or offer consulting support to third parties. At the other end of the TT engagement spectrum are activities that promote ‘knowledge exchange’, for example, collaborative research, contract research using PRO facilities, and equipment and academic consulting. Figure 2shows the different forms of technology and knowledge exchange. It is important to note that the TT process is nonlinear (inventions do not necessarily translate into innovations) and, in some cases, unaccounted too—taking place in informal settings through personal contact and informal networks.

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Figure 2. The Spectrum of Entrepreneurial PRO Engagement in TT

Measuring TT activities: Good practice policy regimes and associated indicators

A number of useful indicators exist to help assess the environment for and level of TT and knowledge exchange in a country or organization. These indicators are outlined below, linked to the policy framework proposed in section III and listed as a check-sheet in Annex 1. Where possible, illustrative examples and Case Studies have been included to illustrate each issue.

The issues and indicators have been formulated like an onion with national policy and legislation at the highest, outer level followed by institutional policy and by-law related to different TT mechanisms and finally TTO activities and performance. Each layer of the onion is coupled to those above and below so all three levels should be considered. Assessing one level in isolation, for example the apparent performance of a TTO, will make insightful interpretation of the results difficult and may not lead to correct reformulation of policies.

The relevant indicators to be considered in the context of this diagnosis are related to following:

- National and institutional regulatory environment

- Presence of a commercialization unit and/or research services office

- Numbers of patents and similar IPRs applied for, granted, and then licensed

- Number of spin-offs/start-ups

- Number and value of research contracts (collaborative and contract)

- Consulting activity

- Indicators related to institutional, regional/national commitment

In addition to the indicators listed above, it is important to consider aspects affecting the research and innovation ecosystem more generally when interpreting results: trends and levels of public expenditures on R&D, the distribution of R&D performers (universities versus PROs, basic versus applied), and other research quality-related indicators (rankings, international publications, and so on). Demand-side private

PublicationsEducation

and trainingResearcher

MobilityCollaborativ

e R&DContract

R&DConsulting

Equipment hire/

material testing

IPR Licensing

Spin-off

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sector indicators such as business expenditures on R&D (BERD), innovative activities of firms, entrepreneurial activities (especially high-growth and science and technology (S&T)-based entrepreneurship), industrial composition of a country/region, export activities and engagement with global value chains (GVCs), and other firm-related indicators are also important to consider as they represent the pull factor for TT. Private sector-related factors are often overlooked causing overemphasis on supply-driven R&D-focused policies that fail to produce the intended commercial results in innovative products and services. Nevertheless, the focus of this note is more on the normative aspects that govern the IP and TT space in a given country or region. The sections below will discuss each of the indicators.

National and institutional regulatory environment

To successfully transfer the results of research between two parties it is necessary to unambiguously identify ownership and exploitation rights. Transferring technology without the permission of the rightful owner may create problems at a later date when due diligence is undertaken as part of a further transfer or when the rightful owner does not benefit from successful commercialization. Legal owners can also be held responsible under warrantee or guarantee actions, for example in a patent validity or infringement action.

Modern national level legislation clearly assigns ownership of research results from publicly funded research. This may be to the government as the paying party, the PRO as the researcher’s employer, or the researcher himself/herself as the industrial inventor or artistic creator of the rights.

Institutional ‘IP Policy’ typically provides clarity on who can claim the ownership of the results of the research undertaken as part of an employment contract or as part of a wider collaboration with external entities, for example, as part of collaborative or contract research. It may also make provision for ownership of results that have been generated in a researcher's 'own time' or that did not make use of 'significant' PRO resources. Institutional intellectual property (IP) Policy must not conflict with the national law regime governing claim to ownership of results, for example, if national law makes researchers the legal owners of IP resulting from their research, so-called ‘Professors Privilege’, then institutional policy must recognize this.

A benefit or revenue-sharing scheme is often part of an ‘IP Policy’. It states the percentage split of licensing profits (after tax and commercialization expenses) that will be shared between different parties, for example, the academics/researchers, their institute, and other involved groups. Although ‘IP Policies’ traditionally only covered issues related to IPR and patent licensing they have increasingly been extended to cover a much wider range of Technology Transfer activities including consulting, and spinoffs.

The World Intellectual Property Organization (WIPO) has undertaken significant work to help PROs and HEIs in different countries to develop IP Policies that reflect Good Practice and local framework conditions (for more information consult the Bibliography and Resources sections).

It is important to explore the existence, application and enforcement, of IP law at the country level and IP Policy at the institutional level (for ownership, revenue-sharing scheme, collaborative research, and contract research, and so on). Sometimes national laws and institutional policies to unambiguously assign ownership of rights do not exist. In other cases, they do but some of the provisions might be ambiguous or contradicting. In cases, the laws and policies exist but are poorly enforced. Researchers are also not always aware of national legislation and institutional by-law and assume that any research results that they generate will be their own to claim and exploit.

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Case Study: Professors privilege vs. Institutional Ownership: The case of Sweden and Croatia

Under Swedish national law, researchers are able to claim the rights to research results that they create as part of their regular employment contract with their university of research institute. This is often known as Professors privilege. In contrast, Croatian national law makes it clear that research results that are generated as part of a contract of employment are owned by the employer. In Croatia most researchers are employed by their faculties and so the faculty is the legal owner of their research results. Because this situation is written in to the national law in Croatia, it does not have to be reproduced in the contract of a researcher. Because they do not see ownership clarified in their employment contracts, many researchers in Croatia erroneously believe that the situation is unregulated and that they can claim informal Professors Privilege.

This example illustrates why it is important to examine national law and institutional regulation as well as to investigate the understanding and awareness of the research community on the issue of ownership. Such aspects will affect the performance of a TTO.

Presence of a commercialization unit and/or research services office

One or more units are often established to support different aspects of TT. The name of the unit can vary widely (Centre for Technology Transfer, Innovation Office, and so on). Most important is the mission and specific activities of these units, for example, responsibility for managing IPR-related activities such as disclosures, patent filing, and patent licensing, as well as managing research contracts. The size of the unit is also an important indicator, for example, the number of people employed to support TT for a given size of PRO. Other factors such as the years of operation of the unit, the experience and skills set of the staff, and the unit budget are also relevant indicators to consider.

Case Study: External vs. internal TTO: Imperial Innovation plc UK vs. Krakow University of Technology Poland

Imperial College in London has an extremely strong, industrially focused research base that yields high value IPR. The university has a long tradition of working on applied and industry directed research and this is reflected in their Mission and culture. Krakow University of Technology in Poland is a much smaller university with limited potential for producing research results with commercial potential. The University is strongly focused on teaching and the more traditional approach to its mission is reflected in the research culture where academic publications are still a much higher priority to researchers than patenting activity.

The TTO for Imperial College is Imperial Innovations plc – the first Technology Transfer Office to have successful floated on a stock market. It employs individuals with a background in venture capital, banking and management of large technology based companies. Performance based salaries are in-line with private sector rather than public sector norms. The internal culture is strongly ‘private sector’. The TTO for Krakow University of Technology is the Centre of Technology Transfer (CTT). This is an internal department of the University. Staff at the CTT are strongly engaged on ‘projects’; direct technology commercialization (patent licensing) plays a much smaller part of their role and responsibilities. Salaries at the CTT are broadly in-line with academic norms. The internal culture is strongly public sector.

Both ‘TTOs’ are perceived to be performing well for their parent organizations. They are accepted by their research communities. They use slightly different metrics to assess their performance. It is likely that

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trying to change either model would result in a reduction of performance. These examples illustrate that, when selecting a model for a new CTT, it is important not to simply copy a model that is seen to be producing ‘good results’ elsewhere, without a strong analysis and comparison of internal and external conditions.

Numbers of patents and similar IPRs applied for, granted, and then licensed

The number of patent applications and granted patents is an important indicator of innovativeness at the country/regional and institutional levels. Internationally granted patents usually indicate stronger technology (quality) than national patents but these indicators are also strongly influenced by funding available for pursuing applications via the PCT (Patent Cooperation Treaty) and similar 'international' or regional patent applications. The number of patents applied for and assigned to PROs can also be strongly influenced by independent patenting activity by individual researchers. Thus, patent-related indicators should be considered with caution as they can be misleading. The number of licensed patents and agreements on the other hand is a more meaningful indicator of TT activity at the institutional level.

Case study incentivizing patenting activity by researchers: Patent recognition for academic advancement in Poland

Traditional career advancement for academic researchers comes through authorship of peer reviewed papers. While academics may have the promise of financial rewards from successful patent commercialization they are also intelligent enough to assess the likelihood of such a success, the effort needed to support commercialization and the timescales involved. In this situation they may prefer to invest time and effort in to their publication list. In this situation, introducing patents to the metric system for academic career advancement has been shown to have a significant effect on both academic patenting and associated TT activities.

Poland included IPR related activities in to its career progression for academics in 2010 along with funding to enable professional drafting and persecutions of patent applications. Prior to 2010 PROs did not appear at all in the statistics for IPR applications and grants, published by the State Intellectual property Office. Post this introduction PROs made a very strong contribution to the national filing statistics: in 2010, of a total of 3203 total applications, 1577 (lose to 50%) originated from universities and other institutions from the science sector. A similar pattern followed in 2012 and subsequent years. In addition, the 15 domestic entities that filed the greatest number of patent applications in 2010 were all PROs as were ten of the top 15 entities having their patents granted. This trend towards dominance by the PROs in filing and grants was repeated in 2011 and the trend has continued in subsequent years.

As a result of this enhanced patenting activity, the Polish TTOs are seeing an associated strengthening of their technology pipeline.

Overall, the example of Poland suggests that introducing IPR activity in to career progression for academics and making funding available as part of a research grant to enabling patenting drafting and filing to take place can have a very significant impact on the potential for commercialisation of publicly funded research and innovation projects.

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Number of spin-offs/start-ups

The terms spin-off (or spinout) and start-up are often used loosely and interchangeably to indicate a company that clearly has its roots in a PRO, for example, because it exploits technology that was developed in the PRO or because it employs researchers who have come from the PRO. It is helpful to distinguish between companies where the PRO has an equity stake and those where the PRO has no ownership. Some PROs distinguish among these two types by using the terms 'spin-off' and 'start-up', respectively. Student or graduate start-ups are usually not considered to be spin-offs. Both researcher start-ups and student starts-ups provide an important measure of the independent entrepreneurial culture of a PRO. Nevertheless, spin-offs are more accounted for as they are recorded by the PROs as such while start-ups by researchers are usually difficult to count/monitor.

It is helpful to identify whether the PRO has a spin-off policy that covers issues such as the initial equity split between institution and researchers and /or associated policies such as ones dealing with academics working in/consulting to a spin-off and conflicts of interest (CoIs) provisions.

Case Study Equity stakes in spinoffs: Oxford University UK vs. Harvard University USA

Oxford University launches a number of equity based spinoffs each year based on University IPR. Oxford policy is that the University normally takes 50% of the equity at formation. The other 50% is shared between the research team. The university has established a small group of experienced professionals whose job it is to take a proactive role in managing the spinoff and looking after the university investment. This proactive involvement in the investment has been a clear policy decision from the University.

Harvard University has a clear policy of encouraging ‘start-up ventures’ that license IPR from the University. Harvard avoids taking an equity stake in the company. When they do, it is typically less than 15% and the university looks to sell or dilute its stake very quickly. Only 10% of total new companies emerging from Harvard involve an equity stake. Harvard has made a decision not to become involved in managing equity based companies and to focus their efforts on to licensing their IPR.

Number and value of research contracts (collaborative and contract)

Research contracts between the PRO and companies provide a good indicator of knowledge-exchange activities. These arrangements can be 'collaborative' or 'contract’ research. It is important to note that, in developing and less advanced economies, not all contract research activities are reported, especially ones conducted by individual researchers for private firms.

Collaborative research is characterized by the shared responsibility for defining the work plan, individual tasks, and a separate budget for each partner, and the shared risk of the uncertainty of outcomes. The party that performed the research task that resulted in an IP is typically the owner of the resulting IPR.

Contract research is characterized by the ordering and paying party defining the work plan and bearing the risk for the outcomes while the PRO undertakes the R&D 'to order' and is paid against agreed deliverables, for example, documented data analysis, results, and conclusions. The ordering party is typically the owner of the IPR generated through the 'contract research'. Contract research often requires access to specialized research infrastructure and facilities, for example, test labs and equipment.

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It is useful to look for evidence of how a PRO regulates contract research, for example, by making faculties and department declare when they use equipment for non-academic purposes.

Case Study Open Access to research infrastructure in Lithuania: monitoring contract research at Kaunas Technical University (KTU)

Lithuania invested very heavily in research infrastructure using ‘Structural Funds’ from the European Union. Lithuanian Universities must now find ways to maintain and repair their equipment in an environment where there is very little government money available for such activities. The Universities are allowed to sell services that use the equipment to the private sector or to other HEIs but this must be done in accordance with rules relating to commercial use of equipment purchased with public sector funds. This requires the HEI to monitor use very closely and report to the Ministry. This requirement has caused tension as some research groups and even individuals have been used to selling research services to industry in a non-transparent way and for personal gain.

KTU has introduced a system whereby time on all equipment must be booked in advance. Different user categories have been defined and different users are then billed either internally from a research grant or eternally if it is a private customer. The TTO provides a point of contact for external customers and help manage the associated contract and billing. This approach has enabled KTU to comply with Ministry regulation on commercial use of research infrastructure and also to generate sufficient income to maintain and repair the equipment.

As indicated earlier, it is important to explore the 'norms' of IP ownership at the country and institutional levels for both collaborative and contract research. It is also important to count both the number and value of contracts that a PRO has with external enterprises. It is also helpful to distinguish between domestic and international contracts and to try and assess whether the contracts support long-term strategic relationships or whether they are one-off engagements. Finally, it is important to remember that results can also be influenced by the presence of internal support for contracting (a Research Services Office) or policy support that has laid the ground for facilitating contracting between firms and PROs (see the UK Lambert Agreements below).

Case Study: Dealing with IP ownership issues in collaborative and contract research – the UK Lambert Agreements

Collaborative and contract research partnership between private and public sector organizations can stall when the issue of ownership of IPR and associated exploitation rights and confidentiality and dissemination (publication) rights are encountered. The issues can be particularly difficult for SMEs who do not have access to internal legal advice to help them draft a contact that addresses the issues to the satisfaction of both parties.

The UK Government addressed this problem through a set of 5 contract research templates and an associated decision guide. Although originally intended for UK SMES, the ‘Lambert Agreements’ have now been adopted by large international research companies including GlaxoSmithKline. A survey undertaken by the UK University Research and Industry Links found the over 70% of those consulted believed Lambert had simplified contract formation and saved them money.

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Consulting activity

Consulting activity focuses on the expertise of an individual and often does not require access to specialized research facilities and equipment. It typically requires an individual to apply his/her own knowledge to collect information and provide a written analysis. Consulting can also cover training activities. Some PROs limit the number of annual consulting days permissible under an employment contract, for example, to 30in order to balance legitimization of the activity with concerns that too much time is being spent on consulting and not on contractual teaching and research activities. It is important to take such limits into consideration when reviewing statistics on consulting activities.

Indicators related to institutional, regional/national commitment

Often the rhetoric and agenda of TT and commercialization of research is absent from a PRO’s strategies and leadership priorities. Thus, it is important to consider whether this agenda is supported and prioritized at the institutional (PRO’s/department’s mission and strategy), regional (Regional Development Plans, Industrial Policies), and national (Research and Innovation Strategies, and so on) levels. Considering the availability and effectiveness of TT and commercialization support instruments at the regional and national levels could give a real sense of the commitment of the authorities to support this agenda.

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III. ASSESSMENT FRAMEWORK

The following analytical framework is intended to facilitate the diagnosis of factors affecting successful knowledge transfer and commercialization of publicly funded technologies. The framework covers aspects related to the existence of an IP system, its clarity to the main stakeholders, and its enforcement and implementation. The factors shaping the knowledge transfer and research commercialization space are listed in table 1. The dimensions are then linked to the indicators outlined above and the checklist in Annex 1.

Table 1: Dimensions of an IP and TT Assessment Framework

1. Overall effectiveness of the IP system

2. Clear and transparent IP ownership normative framework 3. Clear and transparent normative framework incentivizing and rewarding researchers to engage in

knowledge transfer and for licensing IPR from the public to the private sector

4. Clear and transparent normative framework for establishment and financing of academic spin-offs

5. Clear and transparent normative framework for conducting contract and collaborative research

6. Clear and transparent normative framework for academic consulting activity 7. Clear and transparent normative framework for engagement in a 'third stream mission'

8. Safeguarding the public interest in transfer of publicly funded technologies

The team conducting the following diagnosis is expected to deploy a mix of methods and use different data sources to answer some of the articulated questions below. In addition to analyzing recent literature, publications, and publicly available data, the diagnosis would tremendously benefit from original survey data and qualitative interviews with a representative sample of ecosystem stakeholders (public sector, private sector, PROs, and intermediaries).

Overall effectiveness of the IP system

Introduction to the factor

The prerequisites for any national policy framework that aims to facilitate the transfer of technology from academia to industry through the use of IPRs are:

1. The existence of an effective IP system, comprising modern legislation in the field of patents, trademarks, copyright, industrial designs, and trade secrets;

2. An intellectual property office in charge of examining and registering/granting IPRs;

3. The availability of qualified IP professionals (for example, attorneys, agents, and licensing professionals) who assist PROs throughout the patent lifecycle, including, in particular, the application process, the negotiation of licenses over patented technology, and the settlement of disputes over IPRs;

4. A clearly effective enforcement system that enables rights holders to enforce their monopoly and offers confidence to investors; and

5. A communication and dissemination system that educates inventors, investors, and funders about their rights and how they can be used.

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This framework is summarized in Figure 3 below.

Figure 3. Aspects of an Effective Tech Transfer Regulatory System

Questions to be addressed

• Does the system outlined above exist and how well is it functioning?

o Is the legislation recent, in-line with international norms and clear (none-ambiguous, none-contradictory)?

o Is there a perception and evidence that the legislation is being enforced? e.g. by patent infringement and invalidity cases being brought and won in the courts by both national and non national plaintiffs?

o Are individuals and organizations well informed about the system? e.g. in information about the system easily assessable and does commonly held knowledge accurately reflect the legislation?

• Who are the main actors and who has the responsibility for different parts of the system?

• How might the system be improved?

• What changes would have to be introduced to improve the effectiveness and/or what resources are currently missing?

Typical sources of information/verification to be consulted and referenced

• National legislation relating to registering and protecting different forms of IPRs

• National-level IP office and associated annual report

• IP law firm offices and professional networks

• IP units co-located at PROs

Dissemination

Awareness raising Education Training

Enforcement

Rule of law Perception of effectiveness

Modern Legislation

Clarity Comprehensiveness Consistency

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Indicators to be considered

• See Annex 1 sections 1 and 3

Clear and transparent IP ownership normative framework


Clear and transparent rules covering the ownership of any IP developed within public universities or funded with public resources are critical for TT. Different countries have legislated on this matter in different ways, ranging from provisions in patent legislation or in employment legislation to specific legislation dealing with university IP and TT. In addition, government research funding agencies may also have their own rules that are specific to any research conducted with such funding. PROs themselves increasingly develop their own 'IP Policies' that provide clarity on who can claim IPRs from research results generated by research staff employed under standard research and teaching contracts as well as students, technical staff, and visiting researchers and results that are generated from sponsored research and collaborations, and so on. In Europe, such IP Policies increasingly reflect the Commission Recommendation on the management of IP in knowledge transfer activities and the Code of Practice for universities and other PROs.1 These EU guidelines as well as a WIPO Good Practice IP Policy are now being adopted as Best Practice across a much wider geographical area including South America, the Africa and Asia2.

Regardless of the way in which the issue is addressed, there is a strong case in favor of having a nationwide policy that clearly establishes issues of ownership of IPRs developed by researchers from PROs using public funds. This not only enables clear and unambiguous assignment and transfer of rights but also facilitates joint research between different institutions.


• Does the country have an overarching policy and associate legislative framework that addresses the claim to ownership of IP resulting from publicly funded research?

• Do individual PROs have their own bylaws to clarify claim to ownership of results created in the course of research at the PRO. How extensive are these in covering different individuals and situations?

• How well are the policies, bylaws, and frameworks functioning? Could they be improved? If so what steps would have to be taken and by which institutions?


• National legislation relating to ownership of results and inventions of employees, for example, Law on Employment, Law on Innovation, and Law on Patents.

1 See http://ec.europa.eu/invest-in-research/pdf/download_en/ip_recommendation.pdf 2See http://www.wipo.int/about-ip/en/universities_research/ip_policies/

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• Institutional-level bylaws at PROs ('IP Policy' and Professors Privilege)

• Discussion with main stakeholders and industry practitioners (to examine the perceptions)


• See Annex 1 section 1

Clear and transparent normative framework incentivizing and rewarding researchers to engage in knowledge transfer and for licensing IPR from the public to the private sector


The ability of public research systems to benefit from the dissemination and transfer of knowledge generated by researchers depends not only on the incentives for researchers to carry out R&D and innovation activities but also on their incentives to

1. Disclose their own research results whether of commercial interest or not, in a way that can be accessed, used, and reused by future researchers as well as by technology transfer offices (TTOs) and industry; and

2. Use the knowledge provided in teaching, further research, or for the benefit of the economy, society, and the environment (3Ps).

The role of disclosure incentives should not be considered as being limited to technology disclosure alone, but also to knowledge disclosure (for example, data sharing).3

Policy makers, agencies responsible for academic incentives, and TTOs need to consider a range of variables and interests and in particular support for commercialization of research needs to be rewarded in ways that do not only reflect financial motivators as these are often not the primary ones for researchers. There are a variety of mechanisms, nonmonetary and monetary, that can be used to influence invention disclosure and commercialization support behavior by researchers, for example, by developing an assessment framework for institutions and individuals that values use of the IPR system alongside the traditional knowledge dissemination route of publishing as well as time invested in working with enterprises, including spinouts, and assessing the wider impact of so-called 'third stream Mission activity’, for example, activity that goes beyond the traditional activities of teaching and research.


• Does the country have a legislative framework that defines the benefits that should come to inventors if their inventions are commercialized, for example, the minimum percentage of revenue that should come to them personally from a royalty-bearing licensing deal?

3 Seehttp://www.wipo.int/edocs/pubdocs/en/intproperty/928/wipo_pub_928.pdf

http://www.wipo.int/edocs/pubdocs/en/intproperty/928/wipo_pub_928.pdf

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• Do individual PROs require their employees to report ('disclose') research results, for example, as part of their employment contract or under an internal IP Policy bylaw, so that they can be protected by the institutions?

• Are researchers also required to make reasonable efforts to support the commercialization process?

• Does a national law or an institutional bylaw provide financial incentives for commercializing research, for example, through a benefit or revenue-sharing scheme linked to licensing royalties?

• Do further incentives/rewards exist in the national or institutional metrics used to evaluate research activity and promote staff, for example, patenting activity being assessed alongside journal publications or engagement with enterprises and wider impact of research activities contributing to career progression?

• How well is the current system working and how could it be improved? Who would need to be involved and supportive? Do specific barriers exist to change? What resources would be needed to create change?


• National legislation relating to rights of inventors to profit from their inventions, for example, a Law on Innovation/Invention

• Employment contracts setting out the responsibilities of researchers to disclose research results

• Institutional-level bylaws at PROs ('IP Policy') setting out the responsibilities of researchers to disclose results and a 'benefit'- or 'revenue'-sharing scheme that rewards them for their efforts

• National and institutional M&E (Monitoring and Evaluation) systems used to evaluate research performance and promote researchers to higher positions


• See Annex 1 sections 1, 2, and 3

Clear and transparent normative framework for establishment and financing of academic spin-offs


Creation and financing of academic spin-offs is an important pathway for commercialization of publicly funded technologies. Such companies typically license-in IPR owned by the PRO in return for an equity stake in the new company. Academic founders may also take an equity stake based on their past contribution to developing the technology and the future commitment to growing the enterprise. Researchers may join the new company as full time or part time employees or on a secondment. Additional support for the new company may come through consulting (see section 'Clear and transparent

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normative framework for academic consulting' below). If the company generates revenue, then some of this may find its way back to the founders through a royalty-sharing scheme under the IP Policy. The situation can be complex and leaves scope for CoIs where researchers and PROs are involved in publicly and privately funded activities that are linked together.

Public policies with respect to creation of academic spin-offs often address issues such as:

1. State-owned PROs/higher education institutions (HEIs) owning equity in the spin-offs; and

2. Circumstances under which researchers may participate in creating spin-offs and work in them.

Similar regulations and guidelines may exist at the institutional level. These often extend to address CoIs and the issue of benefiting from both royalty and equity rewards. They also often extend to formalizing and regulating the relationship between the spin-off and the PRO if the new entity needs access to resources from the PRO (people as well as equipment and facilities); this often takes the format of a Memorandum of Understanding (MoU).


• Do national policy and/or legislation exist to regulate spin-off from PROs? If so, describe the existing framework for engagement.

• Is the present policy situation acting as an inhibitor or a catalyst for spin-off? How might it be improved? Who would need to be involved?

• Do policy and regulation relating to spin-off exist at institutional (PRO) level? If so, what are the relevant regulations and documents and how do they regulate the situation? Are they adequate? Are some issues not being addressed? Could the framework be optimized to act more as a catalyst?


• National law regulating activities of a PRO

• Employment law and employment contracts of researchers

• PRO spin-off policy/guidelines setting out the situation with regard to equity holding benefit from royalty income for shareholders including academic founders and employment in the new company

• MoU for spin-offs using PRO resources (including consulting the spin-off and use of facilities)

• Collaboration policy



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Clear and transparent normative framework for conducting contract and collaborative research


Undertaking collaborative research is typically the first step taken by a PRO as it widens its core research activities. Collaboration may start with other PROs and then extend to public-private partnerships (PPPs) using ‘triple helix’ measures (public grants to encourage collaboration including European Union [EU] level schemes such as Horizon 2020). Contract research is also being encouraged through triple helix schemes including innovation vouchers.

Although collaborative and contract research activities are often less regulated than consulting and commercialization activities, they share commonalities in a need to regulate IP ownership as well as dissemination and exploitation rights. They are also subject to State Aid Rules designed to avoid distortion of the market and in the case of contract research undertaken with equipment bought with EU funds, there may be additional restrictions on use linked to the terms and conditions of the original grant agreement including value added tax(VAT) payment and a ‘monitoring and recall’ requirement.


• Does the PRO have in place any internal regulations related to research results produced under ‘sponsored’ research?

• Does the PRO have in place any M&E processes related to the use of equipment and facilities for contract research to ensure compliance with State Aid Rules including those related to past grants to invest in equipment, faculties, and research infrastructures?


• Institutional IP Policy regulating ownership of results produced in sponsored research

• Institutional processes related to monitoring the use of equipment, facilities, and other research infrastructure

• National government and Donor grant agreements

• Guidelines from the ministries and agencies responsible for administering funds for R&D



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Clear and transparent normative framework for academic consulting activity


Consulting is now a clear part of the wider TT area and forms a key part of knowledge exchange. Academic consulting is often an important element of successful technology commercialization through a spin-off company.

Many PROs have bylaws/internal regulations to deal with consulting activity as well as with the CoIs that can subsequently arise. This can include the number of days that a researcher can spend per year on consulting, secondments to a spin-off, and anticipating, managing, and minimizing CoIs.


• Do PROs have a clear policy with regard to consulting activity by their research staff? If not, would such a policy improve the environment for consulting, for example, by legitimizing it?

• In the case of a spin-off using consulting support from the parent PRO, is the activity and relationship formalized, for example, through the use of a MoU or similar document? If not, could the present situation be improved through the use of some sort of policy and regulation?

• Is there evidence of any CoI related to consulting to a spin-off? Is this anticipated, minimized, and managed, for example, through a CoI policy. Again, could the present situation be improved?


• National-level legislation regulating the time that researchers can spend on consulting activities or on activities that might be seen to conflict with the core business of their faculty

• PRO Consulting Policy as well as any regulation or guidelines on consulting activity

• PRO CoI policy



Clear and transparent normative framework for engagement in a 'third stream mission'


Teaching and research are established missions for HEIs and other PROs. Supporting the wider impact of research through spillovers and interactions between PROs and the rest of society is increasingly seen as their third mission. It is often expressed using a range of terms including innovation, knowledge transfer, community service, community engagement, or just 'the third stream’. A third stream mission and

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associated third stream activities are still relatively new to some countries/regions. In areas where this third mission is not embraced, it could be very hard to achieve critical mass in TT activities or to realize the impact from research beyond scientific publications.

Questions to be asked

• Does the responsible ministry or regional government/authority promote and support a PRO’s third stream mission and recognize/reward involvement?

• Does the PRO formally recognize its third stream mission?

• Does the PRO independently recognize and reward engagement in third stream activities?

• Does the university leadership (president/rectors) regularly articulate support for collaboration with industry, entrepreneurial community, contributions to the local community, and so on?

• Does the university allocate support to the TTOs or equivalent unit?


• Law on Higher Education/Research Activity

• National Strategy for Research/Innovation and industrial strategies.

• Regional economic development plans/strategies, research and innovation strategies

• PRO Mission Statement/PRO Strategy/PRO Innovation Strategy

• PRO career advancement/reward M&E metrics

• PRO newsletters/annual report



Safeguarding the public interest in transfer of publicly funded technologies


The main aim of public policy toward transfer of publicly funded technologies is to ensure that the public benefits from public investment. To achieve this goal, some countries allow for some limitations of IPRs. For example, some countries have public policies that determine a period during which the PRO must exercise their ownership rights. If the PRO fails to do so, the ownership title reverts to the government or the funding agency that can then seek to transfer the technology for economic, social, or environmental benefit.

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Similarly, in some countries the government reserves so-called 'march-in' rights, which permit the government to ignore the IPR holder’s right to exclusivity and grant licenses to third parties or to itself. March-in rights are powerful but rarely used. In the United States of America, for example, their use normally indicates that there has been a failure by the PRO to exclusively license a patent to take ‘effective steps to achieve practical application of the subject invention’ or a failure to satisfy ‘health and safety needs’ of consumers.

Some governments also reserve the right to prevent the export or licensing abroad of 'dual use technologies'—that is, technologies that could be used for both civil purposes and military applications.

In addition, national policy may require or encourage licensing to local industry or require domestic manufacturing of products developed from publicly funded IP to ensure that the local economy benefits from the licensed technology.4

A similar situation is seen with EU-funded research where the IPR holder must attempt to transfer and commercialize the technology within the EU Member State (MS) before exclusively licensing abroad, for example, to the United States of America. This restriction aims to ensure that money from EU funds benefits EU citizens.

It is important to note that such restrictions and safeguards should be rare and the exception rather than the norm. Particularly in countries with a weak legal system there could be room for abuse of such safeguards.


• Does the national policy framework set out specific restrictions on the transfer and commercialization of IPRs that could affect commercialization of research from PROs, allow for 'march-in rights', or restructure the transfer of dual use technologies? If so, describe the framework including restrictions, processes, and timescales involved.

• Does the industry believe there is an abuse of the government’s right?


• National legislation on IPR and trade

• EU regulation of trade in dual use items

• Discussion with government representatives and industry practitioners



4Seehttp://www.wipo.int/edocs/pubdocs/en/intproperty/928/wipo_pub_928.pdf.

http://www.wipo.int/edocs/pubdocs/en/intproperty/928/wipo_pub_928.pdf

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ANNEX 1: INDICATORS OF TT ENGAGEMENT

Indicators of TT infrastructure and engagement are listed below for the seven dimensions outlined in the main document. In some cases, a yes/ no indication of the indicator will be sufficient followed by a narrative comment, for example, the name of a law. In other cases, a value or figure will be useful if it can be obtained. Units for figure must always be given, for example, the number of years to which a figure for patent filing refers (annual or total accrued). Not all indicators will be available; some may simply not be collected while others may not be published. Evaluators should use discretion when deciding if an indicator is highlighting framework conditions or not, when they decide how much detail to collect. These tables are not conclusive in coverage but they are meant to assist evaluators in their quest for information and analysis of the tech transfer conditions.

1. National and institutional regulatory environment

Indicator Present

National and Institutional Regulation Value

National law setting out a clear and unambiguous framework for modern IPR

Presence of a national office for IP registration

Evidence for professional support to the IPR system (patent drafting, filing, prosecution, and litigation)

Presence of IP units at PROs

Documented evidence for effectiveness of the enforcement regime (number of infringement/ invalidation cases brought and won).

Comment on the effectiveness of the national law regime

National law making clear the ownership of IP from publicly funded research results

Ownership with institution

Ownership with researchers (Professors Privilege)

Others (describe) National law regulating any inventor’s share of profits from successful

commercialization

Comment on national law regime situation

Institutional IP Policy regulating ownership of rights created by

Researchers during their work hours and/or making significant use of institutional facilities

Researchers in their own time and not making significant use of institutional facilities

Results created under a grant agreement/as part of a sponsored research

PhD students

Undergraduate students

Visiting researchers

Others (specify)

Comment on institutional IP Policy situation

National law and institutional IP Policy aligned

Comment on the alignment between national law and institutional IP Policy

Documented process of commercialization including

Processes

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Indicator Present

National and Institutional Regulation Value

Disclosure

Protection

Transfer

Other

Stage gates

Decision points

Decision-making bodies

Time lines

Others (specify)

Comment on documented process of commercialization

Benefit/revenue-sharing schemes including

Inventor/institutional split

Rewards for other recognized stakeholders

Others

Comment on benefit/revenue-sharing scheme

2. Support to TT and research commercialization

The indicators below should be applied to units linked to an institution. These might be internal departments or even external limited liability companies, owned by the PRO. Apply the indicator framework to all relevant units.

Indicator Present

Support to TT and Research Commercialization Value

Presence of a commercialization unit (TTO) and/or research services office

Number and name of support units

For each unit:

Clear mission

Patenting budget

Responsible for

Managing disclosure process

Licensing IPR

Starting spin-offs

Contract research

Other (describe)

Size of unit (number of full time equivalents (FTEs))

Skill set (comment)

Number of years established

Track record (comment)

Others (describe)

Comment on mission and performance, for example, alignment of PRO mission and TTO mission. Comment on any obvious performance inhibitors, for example, unit under resourced, lack of relevant experience, qualification, and skills. Note any drivers, for example, performance/key performance indicator-based remuneration or reward schemes.

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3. Indicators of patenting activity

The indicators below can be applied at the national or institutional level. It should be clear which level they are being applied to. Also, supply-relevant time frames, for example, annual or 10-year accruals and, where possible, useful denominators for benchmarking, for example, number of patents/head of population/100 researchers.

Indicator Present

Evidence for patenting activity Value

Reliable statistics available on patenting activity (State relevant years in all cases)

Number of national patent applications

Number of granted national patents

Number of PCT applications

Number of PCT-approved applications

Number of ‘regional’ applications e.g. EPO and ASPEC

Number of ‘regional’ granted patents e.g. EPO and ASPEC

Number of patents licensed to national (domestic) enterprises

Number of patents licensed to non-national enterprises (international TT)

Comment on patenting performance, for example, note where patenting may be inhibited by lack of a patent fund or enhanced by recognition of patenting in academic career progression. Also comment on evidence for patenting by academic inventors taking place outside the formal institutional process.

4. Indicators of spin-off/start-up activity

When gathering indicators on spin-off and start-up activity it should be ensured that the terms are clearly defined, for example, to differentiate between companies where the PRO has taken an equity stake in return for an IP license and companies where no formal link to the PRO can be found including companies started by students. Ensure timeframes are made clear, for example, total accrued spin-offs started in the last 15 years versus average annual numbers.

Indicator Present

Indicators of spin-off/ start-up activity Value

Clear PRO definition of spin-off

Total accrued number

Average annual number launched Presence of a ‘spin-off’ regulation

Starting point for equity split

Other Clear CoI policy for spin-off activity Requirement to enter into an MoU when spin-off uses PRO facilities Regulation on academics working in/consulting to spin-off Clear PRO definition of start-up

Total accrued number

Average annual number launched

Comment on researcher spin-off/student start-up environment including presence of supporting units and activities (seed fund, incubator, accelerator program, business plan completion, training activities).

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5. Indicators of contract and collaborative research

Indicator Present

Contract Research Value

Institutional policy or regulation on undertaking contract research Monitoring system for compliance with State Aid ‘ancillary’ use

Total number of contracts (state timeframe)

Number of domestic contracts

Total value of contracts

Value of domestic contracts

Indicator Present

Collaborative Research Value

Institutional policy/regulation on engaging collaborative research

Total number of collaborations (state timeframe)

Total value of collaboration (for example, total grant)

Value of award to the PRO

Total number of international collaborations

Total value of international contracts

Value of award to the PRO from international collaborations

Comment on contract/collaborative research environment, for example, presence of inhibiting factors such as attempts to keep use to ancillary levels (≤20%) and low adsorption capacity of domestic enterprises or enhancing factors such as availability of national grants and vouchers to support enterprise use and success in H2020 projects.

6. Indicators of academic consulting

Indicator Present

Consulting Value

Institutional policy on consulting

Restrictions on consulting activity

Number of days (or similar) permitted per year

Regulating document, for example, contract of employment

Type of consulting activities observed

Training

Data analysis

Expert opinion

Other (specify)

Comment on environment for consulting activity, for example, presence of inhibiting or enhancing factors such as contract of employment or institutional policy limiting or legitimizing engagement. Comment also on the degree of perceived ‘gray’ activity, for example, undocumented and unreported and to what extent this is accepted as the norm.

7. Indicators related to institutional, regional, or national commitment and state of development of the innovation ecosystem

Some of the following indicators may be useful in highlighting relevant aspects of the environment for TT. Evaluators should exercise their own judgment in the number and type of indicators collected.

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Indicator Present

Institutional, regional/national commitment and state of development of the innovation ecosystem

Value

Percentage of GDP invested in R&D

BERD

Higher education research and development (HERD)

Country-level R&D ranking (name ranking system)

Institutional-level ranking (name ranking system)

Research productivity (make clear the unit) Institutional mission embracing ‘third stream activities’ Institutional innovation strategy (or equivalent) Regional-level strategies promoting TT (S3/RIS3, regional development plans,

industrial policies). List below.

National-level strategies promoting TT (research and innovation, and so on). List

below.

Comment on institutional, national, and regional environment and ecosystem for TT. Consider indicators such as those listed above as well as demand-side indicators to be found in the Global Competitiveness Index and Global Innovation Index that illustrate the demand side of TT.

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ANNEX II: THEORY OF CHANGE

Overall objective

Inputs Actors Roles per actor Outputs Expected outcomes

Conducive environment for research commercialization and TT

R&D funding Legislating bodies

➢ Accurately codifying national policy into law ➢ Enabling great impact from public research

Research collaboration

Increased confidence and usage of the IPR system; More technology and knowledge being transferred from the public sectors and validated for the benefit of the economy, society, and the environment

National IP office ➢ Securing inventors rights ➢ Contributing to an accurate state-of-the-art record

Enforcement agencies

➢ Reducing infringement, counterfeiting, and pirated goods ➢ Protecting the economy

Contract research

IP attorneys ➢ Putting the legislative framework into practice ➢ Protecting client interests

Researchers, students, skilled workers

Researcher/inventor

➢ Securing research recognition, career advancement, and financial rewards

➢ Playing an active role in the commercialization process

PROs ➢ Improving impact from research activities ➢ Enhancing reputation ➢ Attracting highest quality students and researchers ➢ Incentivizing researchers to disclose ➢ Diversifying funding streams ➢ Improving perceptions in the commercial sector as a strong

collaborative partner (actively protecting IP and enforcing rights)

Consultancies

Research Infrastructure

TTO ➢ Implementing PRO third stream mission ➢ Increasing licensing and spin-off activity ➢ Serving academic customer base ➢ Attracting more industry collaborations

Access to research infrastructure

Spin-offs, start-ups

➢ Securing a competitive advantage from an IP monopoly right ➢ Attracting risk finance on the basis of intangible assets ➢ Hiring academic consultants, gaining clear access to research

infrastructure and expertise

Licensing

Enterprises ➢ Improving capabilities and adopting technology and knowledge developed by PRO partner

➢ Improving competitiveness through an enforceable monopoly right

Spin-offs

Risk investors ➢ Providing risk capital and mentorship to early-stage ventures

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BIBLIOGRAPHY

Correa, Paulo. 2014 “Public Expenditure Reviews in Science, Technology, and Innovation: A Guidance Note.” World Bank No. 93176 2014.

Correa, P., and P. Zuniga. 2013. “Public Policies to Foster Knowledge Transfer from Public Research Organizations.” Innovation, Technology and Entrepreneurship Global Practice No. 90534.

Gutierrez, Juan Julio, and Paulo Correa. 2012“Commercialization of Publicly Funded Research and Development (R&D) in Russia Scaling up the Emergence of Spin-off Companies.” Policy Research Working Paper No. 6263, The World Bank Europe and Central Asia Region Financial and Private Sector Development Department.

Cirera X. and Maloney W.F. The Innovation Paradox Developing-Country Capabilities and the Unrealized Promise of Technological Catch-Up 2017

Lam A. What motivates academic scientists to engage in research commercialization: ‘Gold’, ‘ribbon’ or ‘puzzle’?; Research Policy; Volume 40, Issue 10, December 2011, pp 1354-1368

Migun Ogada T.P. Methodology for the Development of National Intellectual Property Strategies, WIPO 2016

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USEFUL RESOURCES

WIPO:

Model Intellectual Property Policy for Universities and Research Institutions 2012

Development of an IP Strategy in Countries in Transition 2012

Management of Academic Intellectual Property and Early Stage Innovation in Countries in Transition

2010

European Commission:

Commission Recommendation on the management of intellectual property in knowledge transfer activities and Code of Practice for universities and other public research organizations EUROPEAN COMMISSION 2008 ISSN 1018-5593

AUTM (USA):

Annual Survey and resources including template agreements and manualhttps://www.autm.net/resources-surveys/

Case studies and Good Practice examples:

Case studies on Best Practice in Technology Transfer, Progress TT 2017 available at http://www.progresstt.eu/best-practice-library/

http://www.progresstt.eu/best-practice-library/

Documents

Technology Transfer from Public Research Organizationsdocuments.worldbank.org/curated/en/... · strongest success in Technology Transfer, for example the USA, UK and Germany, have