Joining Hands Around the Globe: Events
Article of the Month
 
Key Financial Building Blocks Of Licensing Agreements To Maximize Revenue And Protect Intellectual Properties
By Lewis Stark, CPA, CFE
LES Global News
les Nouvelles Articles
  • les Nouvelles - June 2019 - Full Issue
  • PDF, 3.08 MB
  • The Changing Face Of Knowledge Transfer: Background And Framework, A Review Of The Literature
  • Patrick Terroir
    The introduction hereunder intends to present the background and the new context of knowledge transfer and IP through the literature
    PDF, 816.25 KB
  • From Academia And Research Organizations To The Market: Ways And Means
  • Patrick Terroir and Koenraad Debackere
    The role of the university in economic development has been a core topic in innovation economics over the last decades.1 In 1957, Robert Solow wrote his seminal article, featuring the prominent role of technology in the aggregate production function,2 technology has come to the forefront as a premier production factor driving economic growth and development. Corporations are the engines transforming technology into business. The origins and growth of the corporate R&D function in the beginning of the 20th century mark the onset of the endogenous character of modern science and technology development. Following decades of research into the economics of science and innovation, the complementary nature and the dynamic interactions of large firms and young innovative companies along the innovation value chain have mobilized deep and diverse attention.3 The role of complementarities and interactions, however, is not limited to large firms and young innovative companies. Since the 1970s, the complementarities and the interactions between the worlds of science and business, i.e. the industry-science links, have come to the forefront of economic theories on innovation.
    PDF, 244.43 KB
  • From Idea To Impact: IP Management And Application—Problems And Causes Of Technology Transfer In Chinese Universities
  • Xiuqin Lin, Kaijie You and Lincheng Zhou
    Intellectual property systems, by granting exclusive rights to creators within certain boundary (time, region), play an irreplaceable role in promoting innovation. The exclusive right enables innovators to recover the cost of innovation, to get re¬wards and invest in subsequent innovation. As a consideration, creators will disclose their technical solutions, which allows the follow-up researchers to conduct innovative research “on the shoulders of giants.” By granting “protection” to creators in exchange for the “disclosure” of their innovation, intellectual property systems properly solve the problem of appropriation of innovation resources. This rationale is embedded in China’s patent law and copyright law.
    PDF, 143.45 KB
  • The Diffusion Of Research: Is It IP Compatible? A Practitioner’s Perspective
  • Henric Rhedin
    The authors perspective is based on solid know how from research, industry and technology transfer. Dr Rhedin has a long track record of participating in national and international networks. In his role as the current President of ASTP, the global Europe based knowledge transfer organization, he participates in the development of the knowledge exchange profession. He is also a founder of the Swedish national knowledge transfer network, SNITTS, and was Sweden’s representative for five years at the Board of HEPTech, the technology transfer network for high-energy physics.
    PDF, 99.43 KB
  • Intellectual Property Rights (IPR) In A Changing Landscape Of University-Industry Collaborations
  • Mirjam S. Leloux
    Intellectual Property Rights (IPR) are at the heart of each university-industry collaboration. As such, ownership of IPR resulting from the collaboration and open public dissemination of project results are important issues. As university-industry collaborations are evolving from the unilateral (“ transfer”) type towards bilateral (“ exchange”) types of knowledge transfer, the practical elaboration of these issues is challenging. In this paper we analyse and discuss potential conflicts of interest related to IPR occurring in a broad range of university-industry collaborations.
    PDF, 171.79 KB
  • Licensing Invention Patents: The Challenge Of TTOs
  • Gil Granot-Mayer, Katharine Ku and Laurent Miéville
    Universities, regions, and governments all over the world have become interested in university technology transfer because transferring the knowledge from basic research to industry is seen to be a key to developing an innovation economy. While to the outsider it may seem easy—“just find the gems and industry will grab them”—it is not that simple. Corporations have their strategic plans, and current/future products to help them determine which inventions to invest in. University licensing offices have curiosity-driven inventions created by diverse university faculty, researchers, students and staff. While there are too many challenges to discuss them all in this paper, we picked several that may be of particular interest to LES members.
    PDF, 104.34 KB
  • Different Models For Technology Transfer Offices: A Brief Review Of The Drivers, Goals And Expectations Of Technology Transfer Offices
  • Laura MacDonald
    There are many different visions as to what the role of university generated knowledge should mean for wider society. Within the context of university research activities, “Technology Transfer “is the name frequently used to describe a process which has evolved over several decades to assist the application or utilisation of this new knowledge. Over the past four decades, Technology Transfer Offices (TTOs) have been established under the direction of research institutions across the globe, and these TTOs are the subject of this article. It will attempt to provide some context to explain the current plethora of different TTO models which can be found. It also aims to provide some insight into the complex factors which affect the way in which the perceived successes of the TTOs are assessed.
    PDF, 119.72 KB
  • Beyond Function: Does Academia Contribute?
  • Bart Van Looy, Michela Bergamini & Xiao Yan Song
    During the last decades, the notion of ‘entrepreneurial’ universities has gained in terms of interest and importance. Whereas the second academic revolution connected educational activities of universities to research, the idea of the third mission stresses the societal impact of universities (for an overview and illustrations, see Rothaermel et al., 2007; Debackere & Veugelers, 2006; Van Looy et al., 2011; Audretsch, 2012).
    PDF, 227.31 KB
  • How To Achieve A Win-Win Situation In University-Industry Collaboration
  • Claudia Tapia, LL.M, Peter Ericsson Nestler and Anders Caspár
    Nowadays companies face tough competition in a globalised economy with rapid technological innovation and increasingly short product life cycles. On the other hand, universities, when teaming up with industry, may enjoy the necessary financial resources and input to deliver breakthrough discoveries. Through collaboration, both university and industry benefit from knowledge and technology exchange, fostering the welfare and competitiveness of a country. This paper will explore possible ways to strengthen and improve the cooperation while protecting intellectual property and know-how that is created prior to, during or after the collaboration to achieve a win-win outcome.
    PDF, 122.72 KB
  • Universities, User-Driven Competence Centres And Intellectual Property
  • Martin Meyer, Koenraad Debackere, Kevin Grant, Jari Kuusisto, Ortenca Kume and Tuan Yu
    This paper explores how university-based research is utilised via user driven competence centres. Those centres are truly “Triple Helix born” since they bring together academic and business research(ers) in structures co-funded with public money with the explicit mission engage in user driven Triple Helix activities. It more specifically looks at where challenges in terms of the management of intellectual property present themselves. Following a brief introduction of why the centres have emerged, we present an overview of their key features and draw on empirical examples to develop a better understanding of how they operate in practice. In the final section, intellectual property experiences of two of these centres are outlined. Potential solutions are discussed.
    PDF, 220.50 KB
  • Organizational And Psychological Issues In The Commercialization Of Research At Universities And Federal Labs
  • Donald S. Siegel and David A. Waldman
    In the 1980s, the U.S. Congress enacted two landmark pieces of legislation designed to facilitate technology transfer from universities and federal laboratories to firms. The first law was the Bayh-Dole Act, which applied mainly to research universities. The second was the Stevenson-Wydler Act, which applied to federal labs (e.g., Los Alamos, Livermore, and Sandia). Soon after enactment of this legislation, many universities and federal labs established technology transfer offices (henceforth, TTOs) to facilitate the patenting and licensing of federally-funded research. As a result, there has been a substantial increase in patenting, licensing, and startup creation at U.S. research universities (Grimaldi, Kenney, Siegel, & Wright, 2011) and federal labs (Link, Siegel, & Van Fleet, 2011). We have also seen a burgeoning academic literature on university technology transfer and academic engagement with industry (e.g., Balven, Fenters, Siegel, & Waldman, 2018).
    PDF, 107.09 KB
  • Commercializing Patented Technologies At Chinese Universities
  • Qinghong Xu
    Universities and other public research institutes (individually or collectively referred to as “universities”) are increasingly protecting their inventions, which would, in turn, help raising additional funding for research and spurring new start-ups. The general strengthening of intellectual property protection world-wide as well as the passage of legislation aimed at improving technology commercialization are additional factors that have facilitated the expansion of patenting in universities. In China, a dramatic increase of patent filings from universities has occurred in recent years, however, the rate for patent commercialization has been observed low. This short article examines the patent filings and commercialization in top Chinese universities and provides some recommendations for improvement.
    PDF, 196.52 KB
  • Heightened Expectations For National Universities As The Source Of Knowledge For Innovation
  • Mika Okada and Takeo Yoshimura
    I. Heightened Expectation for National Universities as the Source of Knowledge for Innovation 1. Expectations for University-Originated Venture Businesses and Issues Related to Collaboration In Japan, in the Japan Revitalization Strategy 2016 adopted by the Cabinet in 2016, the promotion of full-fledged industry-university-government collaboration was advocated as an “organization” to “organization” involving top executives of universities, national research and development (R&D) institutes, and enterprises. As a specific target of the Strategy, the public and private sectors agreed to make the amount of investments into universities and national R&D institutes from private three times by fiscal year 2025. As a result, investments in university-originated venture businesses (“UVB”s)1 and business alliances with UVB have been increasing.
    PDF, 111.27 KB
  • Technology Transfer In Singapore: SMEs And Publicly Funded Research
  • Audrey Yap/Aileen Chua
    Whilst Singapore’s economic recovery is beginning to gather pace in 2018 after the economic challenges thrown up in the last couple of years, Small Medium Enterprises (SMEs) are responding by pushing for top line growth through investing in productivity and technology innovation as well as international expansion, aided by the national government’s various policies, grants and initiatives.
    PDF, 127.84 KB
  • Overview Of Technology Transfer In Germany
  • Christian Czychowski
    The transfer of knowledge and technology from higher education institutions and higher education-related institutions to industry and vice versa in Germany is based on a highly differentiated system of different stakeholders. In addition to the universities themselves, there are three large clusters of non-university research institutions: Helmholtz Association, the Max Planck Society and the Leibniz Association with their respective institutes.
    PDF, 81.67 KB
  • Knowledge Transfer And Intellectual Property In The UK: The New Challenges
  • Angela Kukula
    The UK is one of the world’s highest ranking nations for research and innovation. While it has only 0.9 percent of the world’s population, it contributes 3.2 percent of global R&D expenditure, has 4.1 percent of the world’s researchers and publishes 6.4 percent of the world’s research articles rising to 15.9 percent of the most highly-cited articles.1 The UK ranks consistently in the top five nations globally for innovation.2 The reasons for this are undoubtedly complex, but have roots in: the longevity of the UK’s premier research universities,3 the UK’s leading role in the industrial revolution and the dominance of the British Empire in the 18th and 19th centuries.4 There is concern however that action needs to be taken for the UK to maintain this position, leading to the UK government’s stated aim of increasing expenditure on R&D from the current 1.7 percent of gross domestic product (GDP) to 2.4 percent by 2027.5
    PDF, 95.59 KB
  • SATTs At The Service Of Research And Industrial Innovation
  • Xavier Apolinarski and Hervé Ansanay
    France’s 14 SATTs (Technology Transfer Accelerator Offices) were created as part of the government-funded “Investing in the Future” program (https://www.gouvernement.fr/secretariat-general-pour-l-investissement-sgpi) to contribute to the exploitation of research. Their mission is twofold. First, they invest in innovation projects led by higher education and research institutions (ESRs) and national research organizations (ONRs) to transfer their results to the industry (start-ups, SMEs, large groups). In addition, they provide consulting services relative to research and innovation exploitation to ESRs and ONRs in priority, but also to public and private companies. These actions allow them to strengthen their research exploitation activity (detecting, raising awareness, promoting the technological offer among industries).
    PDF, 351.54 KB
  • Technology Transfer In Spain During The Last Fifteen Years
  • Jordi Reverter
    We will summarise in this article the main three modalities of technology transfer (TT) throughout the last fifteen years in Spain, from the universities and other public research organisations (PROs) perspective, including their features and results, i.e., contract research, collaborative research and Intellectual Property (IP) licensing or science push, as well as their contribution to the economy and productive system and the role of the Knowledge and Technology Transfer Offices (KTTOs) in the innovation process development.
    PDF, 101.34 KB
  • Technology Transfer And SME Access To University IP Assets: Pioneering Approaches In The Italian Landscape
  • Stefano Carosio, Fabrizio Dughiero and Andrea Berti
    There are two main drivers that foster technology transfer from university to industry: • The sharing of complementary resources in terms of knowledge, human resources and funding; • A relationship based on trust (normally built in prior experiences of collaboration), commitment, availability as well as shared objectives.
    PDF, 119.56 KB
  • Knowledge Transfer And Intellectual Property Rights In Scandinavia
  • Charlotta Dahlborg and Lilian Wikström
    The foundation of a successful knowledge-based economy is an effective educational system and research environment. Many international examples of valuable companies and intellectual property rights (IPR) originating from university researchers are available to exemplify this (Hvide and Jones 2018). There is general agreement on the value of university-based innovation, but countries have chosen different legislative paths, as there is no common view on how best to facilitate the transfer of university-based innovations to society. Many European countries have followed the example set by the US in 1980 when changing the law from researcher-owned (sometimes called Professor’s privilege or Teacher’s exemption) to university-owned IPR through the Bayh-Dole Act, with the aim to enhance technology transfer.
    PDF, 112.80 KB
  • Academia And Technology Transfer In The U.S.
  • Mihaela D. Bojin
    Universities have made a significant contribution to innovation in the U.S. University research is continuously translated into technologies with an enormous impact on the American economy and society. Technology transfer from 1996 to 2015 has contributed over $1.3 trillion to the U.S. gross industrial output and resulted in millions of new jobs. During the past 25 years, more than 400,000 inventions have been disclosed to over 200 academic technology transfer offices across the U.S., resulting in approximately 80,000 patents. In 2017, for example, universities and research institutions executed about 8,000 license and option agreements and contributed to the creation of 755 products [1]. The wide-ranging influence of technologies created at universities cannot be over¬stated: technologies such as life-saving therapeutics and medical devices, materials, the computer, the internet, GPS, 3-D printing, genome editing, and artificial intelligence were all originally developed at U.S. universities.
    PDF, 93.44 KB
  • Knowledge Transfer And Intellectual Property The New Challenges For Mexico
  • Hector Chagoya
    The history of the current intellectual property system of Mexico started back in 1991 in the context of the conformation of the World Trade Organization (WTO) and the intensive negotiations for the North American Free Trade Agreement prior to the enactment of the Agreement on the Trade Related Aspects of Intellectual Property Rights (TRIPS). The tradition in Copyrights law is undoubtedly larger, as the commercialization of artworks in general has been very active for years, particularly for literary and musical works.
    PDF, 76.79 KB
  • The Role Of Brazilian Universities In The Innovation Production Of The Country
  • Candida Ribeiro Caffe
    According to the Brazilian Ministry of Education, there are approximately 2,400 higher education institutions in Brazil (based on a survey made in 2016), but only 20 Brazilian universities—all of which are public institutions—were listed in the 1,000 best universities world ranking (2018/2019), published by the Center for World University Ranking (CWUR).
    PDF, 63.05 KB
  • Technology Transfer In South Africa
  • Madelein Kleyn and SJ de Wet
    TRIPS sets down the minimum standards for the regulation by national governments of the many forms of intellectual property (IP). The concept of technology transfer (TT) is one of the objectives of TRIPS.1 South Africa, as a member of TRIPS, have incorporated the objective of technology transfer into its national laws. In the South African institutional context, TT from publicly funded research organisations, such as universities, is framed by the Intellectual Property Rights from Publicly Financed Research and Development Act 51 of 2008 (The IPR Act). The stated objective of the IPR Act is that, “IP emanating from publicly financed research and development is identified, protected, utilised and commercialised for the benefit of the people of the Republic, whether it be for social, economic, military or other benefit.” The objective of the IPR Act resonates with South Africa’s stated policy intent to improve the regulatory environment for the identification and utilisation of IP, to improve the translation of research results for economic gain, and to improve the living standards of citizens—in line with the 1996 White Paper on Science and Technology, 2002 National Research and Development Strategy and 2007-2010 Year Innovation Plan, and the long-await¬ed National IP Policy approved in August 2018.
    PDF, 205.17 KB
  • Intellectual Property And Knowledge Transfer Between Universities And Industries In Africa: The Case Of Botswana
  • Sileshi Hirko and Jeremy de Beer
    As in other nations, knowledge transfer is central to the policy objectives of African countries. To this end, intellectual property (IP) is often mentioned as a strategy intended to facilitate the production and transfer of knowledge. As Africa is an enormous and diverse place, it is unwise to overgeneralize the situation across the continent. Nor is it practicable to canvass the practice in the continent within this piece. Hence, we have chosen Botswana as an illustrative country in Africa to examine IP’s relevance for knowledge creation and transfer between universities and industries. Given the major similarities in the situations of most universities in Africa and the limited role of IP for their contribution, our choice of Botswana is intended to reflect the dominant practice across most countries in the continent. Further, our analysis builds upon a prior study that explores the relevance of IP for universities in the country under consideration. Taking into account the contexts for collaborative innovation and knowledge transfer through the active role of universities, this article seeks to highlight Botswanan universities’ contribution to the stock of knowledge, the university-industry linkage for the knowledge transfer and the mode of the linkage in the country. In view of the analysis, the article concludes with relevant policy recommendations, including strategies for open collaborative innovation through university/industry partnerships
    PDF, 94.47 KB

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