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Benchmarking of the European, Eastern European and Central Asian RTDI Institutions from the field of Nano- Science/Nano-Technology Final

Review Meeting

Athens, June 18, 2012

Technology Transfer Activities

at the Institute for Physical Research

A. Papoyan

National Academy of Sciences of Armenia

Institute for Physical Research

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Motivation to strengthen intellectual property, innovation, and commercialization activities

• Insufficient financial resources and consequent problems:- low state budget funding (current and foreseeable);

- tendency of curtailment of international academic research grant programs;

- necessity of modernization of the Institute infrastructure.

• State concept for development of scientific research in Armenia:- strengthening the market-targeted scientific research, innovation activities and commercialization of scientific results.

• Sustainability needs:- necessity of diversification of activities;

- necessity of involvement of new forms of financing;

- intention to extend, deepen and legalize international collaboration;

- intention to exploit the scientific outcome of the basic research.

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Why we need an international support

• Low efficiency of National legislation and State regulation in the field of innovation and commercialization: - weak economy, insufficient measures to stimulate hi-tech production;

- lack of state approach in development of mechanisms to reduce the gap between the science and industry (both local and international);

- imperfections and limitations in regulations for scientific organizations (notably academic).

• Lack of commercialization culture:- insufficiently low level of contractual activities;

- absence of marketing, IP and legal services and specialists in the Institute;

- absence of proper legal regulations with cooperating parties;

- weak infrastructure and communication facilities;

- preconceived notion of academic scientists to market-oriented activity;

- underestimate of importance of the intellectual property by Institute employees.

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Intellectual Property Rights and Asset Inventory and Analysis

(IPRA)

for the Institute for Physical Research, NAS of Armenia,

Ashtarak, Republic of Armenia, 17-22 December 2007

by

Albert Gozal (ISTC, Moscow),

Paul Backer (Chef legal officer, ISTC, Moscow),

Judson Hightower (Oak Ridge National Laboratory, U.S.A.),

Tim Rubidge (Operations director, THOTH, NHS, U.K.)

The IPRA Agreement was signed by N. Jousten, Executive Director of ISTC,

and A. Papoyan, Director of the Institute for Physical Research

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IPRA: the issues addressed

The structure of the Institute, internal regulations Funding sources, international programs Copyright and other intellectual property Laboratories assessment Patents assessment Other findings (infrastructure, administrative, etc.)

Conclusions Ways of improvement

Presentations: Jud Hightower: “Forms of Intellectual Property” Tim Rubidge: “Moving to a commercial research culture” Albert Gozal: “ISTC support and resources”

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IPRA: conclusions

1. The commercial culture in the Institute is relatively poorly developed and their portfolio of intellectual property (patents) is slim. A great cultural reluctance to embrace commercialization. The Institute Director sees the need and opportunity to change the outlook of the Institute and the necessity of doing this in order to compensate for diminished central funding. However, it is not apparent that there is a strong impetus from Ministerial level to bring about changes in approach and commercialization.

2. All research Institutes, be they in Armenia or in the West will include individuals who see commercialization as to be at best secondary and more likely positively opposed to their scientific culture. This appeared to be especially so in the Institute for Physical Research.

3. A program of training and raising awareness of the benefits (or even necessity) of commercialization will be needed before changes can be made across the organization.

4. However, the enthusiasm and commitment of the scientists to their disciplines were obvious and harnessing these strengths will be essential as the Institute moves forward.

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IPRA: conclusions

5. The best initial opportunity for the Institute to introduce a commercial culture is to build on those strengths and to focus on selling research services.

6. First need to review all of capabilities, teams and facilities in detail and identify those where they are able to offer unique and strong services. That will require the gathering of a quantity of information about teams (if any) with similar capabilities internationally.

7. The restriction of patent protection to Armenia diminishes the commercial value of those patents almost completely. Additionally, for the Institute to be successful it will need to look beyond national frontiers and compete internationally. We identified a range of associations between the Institute and grant-awarding bodies (including ISTC), universities, other official agencies and commercial firms.

8. The Institute must review all their cooperation agreements and other contractual documents (both those for the future and those already in place) to ensure that they secure best value for the Institute – particularly with respect to arising IP generated during the delivery of the contract research services.

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IPRA: conclusions

9. Only in this way will they be able to build a valuable portfolio of exploitable IP in the future where protection is secured in key markets worldwide (i.e. not only in Armenia). The lack of access to legal advice (both commercial and with respect to patents) has been, and will remain, a serious shortcoming for the Institute in retaining and developing any portfolio of commercializable intellectual property. The Institute has not drawn upon legal advice in the past – either with respect to patent applications or with respect to commercial contracts. This will be essential in the future if they are to improve their commercial position and secure access to the Intellectual Property they generate. There are significant difficulties in the Institute paying for the required legal assistance. However, they should, perhaps, look to external bodies such as the ISTC helping facilitate such advice. Another approach might be to form an association with other Armenian government establishments so that resources can be pooled for mutual benefit.

10. Several important organizational changes will need to be put in place to achieve the changes in outlook and working methods (see next slides).

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IPRA: suggestions

These include (but are not restricted to) the following:

- Confidentiality and assignment provisions in staff contracts: these are needed to ensure that the Institute owns the know-how and intellectual property created by its employees and does not “leak away” with staff movement and through careless discussions with external partners and competitors.

- Templates for Non-Disclosure Agreements and Material Transfer Agreements: staff does not seem to be aware of the nature and function of such documents. There is therefore an uncontrolled risk that informal discussions and scientific collaborations are one-sided with information and intellectual property flowing away from the Institute.

- Appointing a single focus for managing Intellectual Property: there is no signal register of intellectual property across the Institute. This makes it impossible for the Directing staff to maintain an oversight of the intellectual property portfolio and to manage it coherently. A single individual should be appointed to identify, collect and manage the Institute’s intellectual property portfolio.

- Ensuring that only delegated officers can sign commercial contracts: this will ensure that all cooperation agreements, research and service contracts fall within an agreed Institute strategy

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IPRA: suggestions

- Securing access to legal advice: as discussed above.

- Improving the web-site: if the Institute is to develop its portfolio of intellectual property and develop commercial offerings in specialized research services, it is essential that the web-site presents a vibrant, informative and up-to-date picture of what the Institute has to offer.

- Building a brochure of commercial offerings: preparing a brochure describing the technical and research services that the Institute can offer is equally important compared to an improved web-site. Not only will such a brochure provide clear information to prospective clients and customers, it will constitute an important briefing document to raise awareness of commercialization culture amongst the research teams.

- Instituting a publication clearance process: ensuring that all publication drafts and other proposed external publications are screened to ensure that intellectual property (especially know-how) is not leaked before it can be protected (e.g. through patent filing) need not introduce overlong delays into the process of submitting papers to journals. The best individual to carry out this role might be the single focus described above for managing Intellectual Property.

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IPRA: Follow-up actions towards sustainability

Staff labor contracts:

New labor contract forms effective as of February 1, 2008. New issues suggested by the ISTC IPRA team have been added following discussions and approval at the Scientific Council of the Institute. The following items concerning intellectual property rights and non-disclosure (confidentiality) have been added:

# The right to receive patent (license) for professional invention, useful model, industrial sample created by Executor during execution of his professional duties or charge of Corresponding body, belongs to Corresponding body. Executor is obliged to guard confidentiality of professional invention, useful model, industrial sample before submittal of application.

# In the case of implementation of professional invention, useful model, industrial sample created by Executor (and co-authors), the amount, conditions, and order of royalties payment must be settled by a separate agreement between the author(s) and Corresponding body.

# Any publication (article, report, professional presentation, etc.) by the Executor, which contains full or partial disclosure of professional invention, useful model, industrial sample created in the Institute, must be pre-approved in advance by corresponding empowered body of the Institute.

# Any publication (article, report, professional presentation, etc.) by the Executor must reference the Institute.

# Executor acknowledges and recognizes that any sponsored (grant, agreement, etc.) research taking place at the Institute must be presented in advance to the Scientific Council of the Institute for approval; the Corresponding body has the right to recover the administrative, facilities and other costs related to these works.

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IPRA: Follow-up actions towards sustainability

Legal and IP issues, patenting:

We have hired a certified patenting officer with expert-skill knowledge of IP legislation for a part-time job at the Institute. The first year of his work in close contact with scientists was effective indeed: 5 Armenian patents as opposed to 5 for the period of last 15 years. Besides, he helps to introduce patenting culture in the Institute by elucidating IP issues and potential profits.

Marketing management:

A member of Institute staff who has a clear vision of Institute problems and needs, good communication skills, as well as aware of Institute R&D, has been assigned and authorized to manage marketing activities under supervision of Institute administration, in cooperation with patenting officer.

Compilation of Institute portfolio:

A standard template questionnaire / form is developed and offered to heads of laboratories for presenting their developments of possible commercial interest. We intend to organize a Technology Council led by director, involving 3 permanent members and invited members from Institute staff experts (for each particular consideration), which will evaluate every application and develop a follow-up suggestion on behalf of the Institute. The applications will be compiled in a concise brochure posted at the Institute web page.

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IPRA: Follow-up actions towards sustainability

Regulation of collaboration, agreements:

The foreign collaboration was mainly restricted to visit exchanges and personal contacts. Necessity to revise collaboration forms providing IP and administrative regulations. Individual agreements for each long-term scientific visit.

Agreements: - National Bureau of Expertises (Yerevan, Armenia)- Jagellonian University (Krakow, Poland)- L’Université de la Méditerranée (Aix-Marseille II) (Marseille, France) - Université de Bourgogne (Dijon) & Université Claude Bernard Lyon1 (France)

(CNRS LIA- International Associated Laboratory “IRMAS”)- Southern Federal University (Rostov-on-Don, Russia)

Paper clearance:

All the manuscripts to be submitted have to be reported at Institute seminars under attendance of authorized TT officers. The project proposals to be carried out in the Institute and major reports can be sent only after approval of the Institute director.

Concept of development:

The Institute administration has developed a Conception of Sustainable Development of the Institute, where all the key scientific, administration, and management issues and mechanisms of regulation are addressed. The document now is under consideration of the Scientific Council.

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IPRA: Follow-up actions towards sustainability

Modernization of communication facilities:

The ISTC Communication Support Program (CSP-052) was started on Dec. 31, 2008, aimed at drastic improvement of Internet connection (individual satellite equipment), internal networking, licensed programs & antivirus solution, web page.

Participation in exhibitions:

Director of the Institute participated at EOS Annual Meeting and OPTO-2008 Exhibition in Paris (the visit was supported by the ISTC); a poster describing Institute developments of professional commercial interest at the ISTC stand, numerous helpful discussions. Participation in “Health Service & Pharmacy Expo-2008”, Yerevan, with laser-acoustic medical equipment.

Public and professional discussions, talks:

The Institute officials actively participate in meetings and discussions where innovation and commercialization issues addressed (National Assembly of the Republic, National Academy of Sciences, Business-Science-State, etc.)

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Follow-up actions towards sustainability: Next steps

Cooperation with international organizations:

- Pre-Commercialization Programs- Advanced Matchmaking- Innovation Initiatives- Science Marketing Promotion Activities- Activities with FNG Invest- CIS Innovation Collaborative Projects

Establishment of a Technology Transfer Office

- Advise from WIPO, CERN, IAEA, … - Personnel training programs - “freeing hands” for scientists; - information support for scientists; - compilation IP portfolio of the Institute (structured questionnaire); - patenting, licensing; - individual approach to every IP; - individual promotion for particular developments; - “Technological Council” database