universities and patents from open science to open innovation gilles capart chairman of proton...

Universities and PatentsFrom Open Science to Open Innovation

Gilles CapartChairman of ProTon Europe

Ethical Forum, November 22, 2005

Universities and Patents 2

Most pre-competitive R&D in Europe is performed by PROs

70% of all pre-competitive R&D is performed by PROs (Public Research Organisations)

70% of all US patents based on PRO results (probably less in Europe)

Only 5% of innovations are attributed to PROs in Europe

Knowledge transfer is not efficient in Europe



Public FundingEducation programs

Donations

IndustrySponsoring

InfrastructureScientists

RESEARCHDiscoveries

PUBLICATION

RESEARCH

INNOVATION

DEVELOPMENT

OwnershipOpen Science Model

The Open Science Model University does not retain any IP rights

(except citation and certain copyrights). No incentive to invest in applications of

discoveries because of lack of protection. Contribution to innovation is indirect only. Innovation rests entirely on Industry.



Should universities take an active role in innovation?

Growing pressure from the government authorities Most countries in Europe have adopted Bayh Dole like

laws encouraging patenting and licensing by universities An increasing number of funding programs are oriented

to possible economical applications (e.g. the FP programs of the EC, the IOF program in Flanders, the “Marshall” program in Wallonia, etc.

In the UK, the research assessment exercise will include knowledge transfer indicators.

This trend is there to last. The recognition and sustainability of the research function are at stake.



Public FundingEducation programs

Donations

IndustrySponsoring

InfrastructureScientists

RESEARCHDiscoveries

INVENTIONS

PROTECTIONIntellectual property

PUBLICATION

PROOF OF PRINCIPLECOLLABORATIVERESEARCH with

INDUSTRY

SCIENCEINCUBATORS

SPIN-OFFS &CAMPUS COMPANIES

SEEDCAPITAL

Public FundingEconomic Programs

EC FP

RESEARCH

INNOVATION

DEVELOPMENT

New ProductsNew Services

LicencesRoyalties

OwnershipOpen Science Model

The (Open) Innovation Model



The role of patents Discoveries and ideas cannot be protected by patents.

Only their technical applications (inventions) can be protected during 20 years. Disclosure must be enabling.

Patents serve 2 roles: Protect investments in the development of the applications Publish the inventions to permit improvements and

research (research exemption).

The registry of patents is the most useful and comprehensive source of technology



Why is patenting essential to innovation from universities?

Cannot rely on trade secrets. Must publish without delay to participate in

worldwide open science network Cannot exploit directly inventions, must

licence Most inventions are early stage and need

improvements to become economically attractive.

Patenting is the only way to reconcile publication with innovation



Conditions for using patents as instruments of knowledge transfer

1. Should increase the probability that the applications of a discovery be developed

2. Active search of licensees and license terms compatible with public benefit (diligence, exclusivity terms)

3. The returns must support innovation and knowledge transfer (motivation of inventors and of research teams)

4. The management of Intellectual Property and patents must be carried out professionally.



The overwhelming US Patent advantages for universities

First to invent concept, inventors rights are protected.

Grace period of 1 year in case of disclosure by inventors.

Continuations in part: improvements can be added w/o being opposed prior filings.

Provisional patent applications Inexpensive, with wide market coverage. Easier to enforce.

European universities would be better off filing patents in the US only!



Comparison between USA and Europe

Output per institution US (n=218)

2002

EU(n=107)

2002

EU(n=92)2003

Patents filed/yr 35.8 6.2 7.1

Active licensing contracts 120.2 17.1 12

Licence revenues (m€) 6,150.0 507.0 205

Spin-outs/yr 2.1 1.6 2.0

Source AUTM ITTE ProTon



The licence model Very successful in the US since Bayh Dole Act

(1980) & because of different environment License revenues for PROs and inventors New products New companies

Does not work well in Europe:1. Ownership of results by PRO not yet

recognized as best practice in most countries2. Patenting system much less efficient for

universities in Europe.3. Not enough uptake by European Industry, most

deals are with non-European licensees: does no support the European economy.



The interaction model Fosters Innovation through Interaction. Supports existing business models Uses other forms of IP, such as know-how

and research tools IP is used to leverage the research capability

of PROs Compatible with University mission when:

Contributes to Science University can capitalize on foreground Fair share of returns



Most results from Public Researchare melting down (published)

in the Ocean of Knowledge

IntellectualProperty available

for licensing

CollaborativeResearch

Opportunities

Ocean of Knowledge



The Spin-out Model Builds also on IP management and patents Background technology used as platform to develop

new business concepts Proof of principle by the researchers themselves Development housed in company structure funded by

seed capital and virtual capital (state aid) Contributes to rejuvenating the economy Contributes to regional development Slow process: more than 10 years for mature

companies Works in Europe, but can be improved



The two main routes of knowledge transfer in Europe

Interaction model Spin-out model

Existing business models New business models

Improve interaction with existing companies

Support creation of new “spin-out” companies

Responsible Partnering

Medium term development<10 Years

Long term rejuvenation>10 Years



The Innovation Model for PROs Knowledge Transfer from PROs in Europe can

be made effective only by the combination of 3 policies: IP management as common core Interaction with industry for medium term

development Creation of new companies for long term

rejuvenation of the economy. Consistent with Open Innovation From Licensing to Business Development Very complex to manage and entails the

development of the knowledge transfer profession in PROs.



From Open Science to Open Innovation

1. Universities are getting organized to manage their IP. First ownership of IP is becoming good practice in Europe.

2. Innovation process is becoming interactive and organized in networks. More outsourcing from Industry. IP is much more complex to manage.

3. Technology is overabundant, business model is becoming more important than technology lead.

universities and patents from open science to open innovation gilles capart chairman of proton...

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