IP POLıCıES AND ISSUES ın ITALıAN UNıVERSıTıES

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Ferdinand Black
7 years ago
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1 IP POLıCıES AND ISSUES ın ITALıAN UNıVERSıTıES IP policies and issues in Italian universities

2 Summary An Overview 1. Legal and regulatory framework 2. University spin-offs 3. Patenting practices and licensing issues 4. A look ahead & conclusions

3 1. Legal and regulatory framework The University system State Universities Different funding and financing Same legal framework Different governance Non-State Universities Public research entities (CNR etc.)

4 1. Legal and regulatory framework General legal framework State law framework for university establishment and public funding Governance through autonomy By-laws/statutes IP legal framework Law n. 297/1999 and subsequent decrees on spin-offs Law n. 383/2001 Section 65 of the Code of Industrial Property on IP ownership

5 1. Legal and regulatory framework Researchers Researchers employed by universities / R&D centres Independent researchers and research Institutional / Developed within the scope of activities of the university Developed within specific projects financed by private entities

6 1. Legal and regulatory framework Ownership and entitlement for institutional R&D (Sec. 65 CIP) The researcher is exclusive owner of patent rights Universities can establish the maximum amount of royalties due, provided that researcher get at least 50% of revenues (70-50%) If the invention is not exploited within 5 years, the university gets a free, non-exclusive, right to exploit the invention

7 1. Legal and regulatory framework Ownership and entitlement for R&D upon commission (Sec. 65 CIP) Non-employed researchers are normally treated as employed researchers, through university regulations Patent rights belong to the university, if expressly agreed pass on to commissioning private entity Ownership and entitlement rights under Sec. 64 CIP (for private companies): may apply

8 2. University spin-offs Entity established for the industrial/economic exploitation of the R&D results ( companies which evolve from universities through commercialization of IP and transfer of technology developed within academic institutions ) Mixed public/private funding University personnel/students/professors involved or employed Governance rules bound to achieve institutional goals, ie providing a strategic link between universities and businesses and maximising the value of IP

9 2. University spin-offs University of Milan Spin-off experience* 24 spin-off companies 13 out of 21 participated by industrial partners or investors over 60% achieving positive results * Data from University of Milan

10 IP results of Milan University 180 new inventions (constant growth since 1992) exclusive ownership of 66% of the patent portfolio co-ownership with universities and foreign research centres transfer of 25% of patents (license/assignment agreements)

11 3. Patenting practices and licensing Patenting strategies are affected by budget (overall University patent expenses in 2010: 2,1 million Euro*) Mainly Italian applications (over 80%), then EP (9%) and PCTs (US and Japan, 9%)* Managing and exploiting IPs Spin-offs acting as either IP holders or IP (master) licensees * Data from NetVal

12 3. Patenting practices and licensing Hence University spin-offs MUST find licensees Non-exclusive grants, at least for umbrella patents (ie nanotechnology) Limited duration (3 7 yrs) Minimum royalties /lump sum, regardless of patent file history Options for new products, extensions, divisional applications Standing for legal actions on licensee

13 4. A look ahead & conclusions Patent strategies: quality v. quantity?, applications filed in patents granted in over 2,600 patents in universities portfolio Technology transfer is a resource for Italian system, still under construction (first office for TT founded in 1999), yet over 170% increase since 2004 Young patents being licensed, no mature technology higher risks and less revenues in the short run

14 4. A look ahead & conclusions Sec. 65 CIP called for reform is ownership key to successful exploitation? Still poor resources to finance public reasearch Potential for co-ownership and co-financed projects careful legal handling High potential for private-funded R & D activities Major increase of IP awareness and culture in the last 10 years

15 THANK YOU Alberto Camusso

To License a Patent or, to Assign it: Factors Influencing the Choice

To License a Patent or, to Assign it: Factors Influencing the Choice Philip Mendes Partner Innovation Law Level 3, 380 Queen Street Brisbane, QLD, Australia philip@innovatiuonlaw.com.au Introduction Other