© Hagit Messer-Yaron, 2012 Prof. Hagit Messer-Yaron President, OUI [email protected] Baku, October 24, 2012

© Hagit Messer-Yaron, 2012

Prof. Hagit Messer-Yaron

President, OUI

[email protected]

Baku, October 24, 2012



Universities asUniversities as“Intellectual and “Intellectual and EconomicEconomic Engines” Engines”

––Calls for Academia-Industry Calls for Academia-Industry

Partnership Partnership


University vs. Industry- University vs. Industry- Contrasting Cultures:Contrasting Cultures:

University Social responsibilities Basic, curiosity driven

research Create new knowledge Freedom of research Publications & collaborations Sharing of material Open, global community and

sharing of research results

Corporate Shareholders responsibilities Applied research Develop new products Specific objectives, product

focused Ownership and secrecy Control of material Aiming to global market


The Death ValleyThe Death Valley

Academia

Science

"Valley Death"

Products

Industry


Bridging over the “Death Valley” –Bridging over the “Death Valley” –WHY?WHY?

Better exploitation of knowledge to the benefit of the public (e.g., new drugs, environmental technologies, alternative energy).

A natural source of innovation.To foster knowledge-based economy;

direct contribution to short term growth.“Fair” and efficient use of public support.


Bridging over the “Death Valley” – Bridging over the “Death Valley” – HOW?HOW?

Modern relations between universities and industries:New venture formation/Spin-offsR&D agreementsLicensing deals

Traditional:Teaching and students

practiceIndividual entrepreneurship


Industry, university, governmentIndustry, university, government

industry

universityknowledge

knowledge

money

money

Researchers (people!),Faculties,

Administration,etc.

EntrepreneursVCs

ProductionsMarketing

ManagementStocks holders

etc.

Technology/knowledgeTransfer

Government


The Role of GovernmentsThe Role of Governments1. Financial support for academic, basic

research. Public support is essential for academic freedom.

2. Intervention programs for “bridging the gap”.

3. Legal infrastructure: intellectual property rights (IPR) laws, Taxations, innovation law, etc.

IPR


The case of ISRAELThe case of ISRAEL ISRAEL is an R&D state - the expenditure on civilian

research and development (R&D) as a percentage of the gross domestic product (GDP) is the highest in the world:

Source: ISRAEL CBS


Israel: Recent Nobel LaureatesDan Shechtman ,Chemistry, 2011 -

TechnionAda E. Yonath, Chemistry, 2009 -

Wiezmann Inst.Robert Aumann, Economics, 2005 - HUJIAaron Ciechanover, Chemistry, 2004 -

TechnionAvram Hershko, Chemistry, 2004 -

TechnionDaniel Kahneman, Economics, 2002 -

HUJI


Lessons from IL experience –How to maintain top level Science

ANDsuccessful High-Tech Industry?


Higher Education in Israel -Higher Education in Israel -Expanding systemExpanding system

1989/90: 21 HEI (8 universities + 13 colleagues), 88,800 students.

2010/11: 67 HEI, (8 universities + 36 academic colleagues, 23 pedagogical colleagues) 297,800 students.

All HEIs are independent legal entities; All but NBC are heavily supported by the government.


The 7+1 universities:The 7+1 universities:

•The TechnionThe Technion•The Hebrew University in JerusalemThe Hebrew University in Jerusalem•Tel Aviv UniversityTel Aviv University•Bar Ilan UniversityBar Ilan University•Ben Gurion University in the NegevBen Gurion University in the Negev•Haifa UniversityHaifa University•The Weizmann InstituteThe Weizmann Institute

•The Open UniversityThe Open University


University vs. ColleagueUniversity vs. Colleague

Teaching:

Undergrad

Teaching & research:

Faculty,

Graduate students

Research:

Grants,

TT ,

Facilities,

Inst.

PRO HEI


Technology Transfer Partners: Technology Transfer Partners: Academia: The Researchers The University The TTO/TTC

Industry: Entrepreneurship Investment Production

The GOVERNMENT


In Israel:In Israel:Government’s involvement mainly by intervention

programs.Each university decides on its own policy and

regulations independently. However, they share common principles.

Each university has its own TTC.TTCs are for-profit companies, own by the universities.TTCs are handling universities IP and are responsible

for commercialization, following the university’s policy.


IP legislation (and more) in IsraelIP legislation (and more) in IsraelThe patent law (1967) defines “service invention” as one which

has been invented by an employee as a result of his/her service to the employer.

The law doesn’t cover many aspects of academic life, as: students, visitors, sabbaticals, retired stuff, etc.

Thus, universities had to regulate it internally.No legislation w.r.to industrial R&D projects done in

universities. It is up to the parties to agree on the conditions.In general, government doesn’t claim ownership of publicly

sponsored research.



The rules – main common principles:The rules – main common principles: Researchers must disclose to the university any research of

commercial potential. Universities own the IP of “institute inventions” (service

invention). Institute inventions are discoveries of employees and others,

related to the university. Institute inventions are commercialized solely by the TTC. Commercialization revenues are shared by the inventors (40-

50%; 50-60%) and the university. If the TTC chooses not to file for patent, the inventors can do

it at their own expense.


Weizmann Institute Yeda 1959

Hebrew University Yissum 1964

Tel Aviv University Ramot 1973

1980’s 1990’s 1998

TTCs in Israel


Tech. Transfer Company (TTC) mission

Identify research results with commercial potential.

Actively seek interested commercial entities and sign licensing agreements or establish spin-off companies.

Collect royalties.

File for patents and other propriety rights.


Different Different InstitutionalInstitutional TT strategies, TT strategies, all managed by the TTCall managed by the TTC

Research and development agreementsLicensing dealsNew venture formation / Spin-offs


InstitutionalInstitutional TT (1) TT (1)

Academia

Science

"Valley Death"

Products

Industry

R&D agreements



Academia

Science

"Valley Death"

Products

Industry

Licensing deals



Academia

Science

"Valley Death"

Products

Industry

Spin offs


The technology transfer process The technology transfer process at TAUat TAU

Revenues40-20-40

IDF

Discovery &Innovation

EvaluationPatenting & Marketing Strategy

Business Development

Follow Upon Contract

Academic Basic and Applied Research

“Bridging the Gap” Sponsored Research

publications

To inventors


Example: the Weizmann Inst.Example: the Weizmann Inst.

Responsible technology transfer*Responsible technology transfer*


Example (cont): the Weizmann Example (cont): the Weizmann Institute - PolicyInstitute - Policy



Lipimix | Tubilux Lipimix | Tubilux

Exelon® | NovartisExelon® | Novartis

Doxil ® | J&J Doxil ® | J&J

Cherry Tomatoes | BonTomCherry Tomatoes | BonTom

Periochip | DexcelPeriochip | Dexcel

Selected TT Success Stories: Yeda, Yissum & Ramot (2009)

Selected TT Success Stories: Yeda, Yissum & Ramot (2009)

QuantomiXTM | QX Capsule QuantomiXTM | QX Capsule

Copaxone® | TevaCopaxone® | Teva

Rebif ® | Merck Serono Rebif ® | Merck Serono

Encryption Algorithm | NDSEncryption Algorithm | NDS

GeneCardsTM | XenneXGeneCardsTM | XenneX

NanoLubTM | NanomaterialsNanoLubTM | Nanomaterials

Dunaliella | Nikken Sohonsha Dunaliella | Nikken Sohonsha

ErbituxTM | ImCloneErbituxTM | ImClone

Total sale of Weizmann based products €6 Bilion/year


Univ. of California system 297Fraunhofer-Gesellschaft 182CNRS 146MIT 131

Univ. of Texas 96California Inst. Tech. 84Johns Hopkins 76Univ. of Michigan 74Columbia Univ. 68Riken 67Univ. of Florida 67Hebrew Univ. 56Weizmann Institute 54Stanford 54

Academic institutions with more than 50 PCTs/year (2004)


Licensing Income Survey 2006 top 10 Universities *

# Institution Licensing Income ($M)

1 Univ. of California System 193

2 NYU 157

3 Stanford Univ. 61

4 Wake Forest Univ. 60

5 Univ. of Minnesota 56

6 MIT 43

7 Univ. of Florida 42

8 Univ. of Rochester 38

9 Northwestern Univ. 29

10 Harvard Univ. 20

* Source: AUTM Licensing Survey 2006

Licensing Income of top 10 US universitiesLicensing Income of top 10 US universities


Government’s involvement in Government’s involvement in university-industry relations university-industry relations

Under the responsibility of the office of the Chief Scientist at the ministry of Industry, Trade and Labor (OCS).

Different intervention programs for university-LOCAL industry collaboration.

Restrictions on internationalization of knowledge created under these programs.


Intervention Programs Intervention Programs

KAMIN100%

90%

60%

60%


Summary Summary Most Israeli Universities had Technology Transfer

policy and programs before the BDA of 1980.The government has not been involved in the

universities TT policy and/or implementation.IL TT policy is (was) VERY successful, with top

universities leading both in academic achievements (e.g., the Shanghai ranking) and in TT revenues.

The key for success is a RESPONSIBLE RESPONSIBLE technology technology transfertransfer policy and implementation.


Commercialization of academic Commercialization of academic research results – all win???research results – all win???

Commercialization of academic research results is here. It has different forms and different mechanisms,

depending mainly on the discipline and on the regulatory system.

It is generally considered as a desired goal. Advancing of the commercialization of research results is the policy of governments all over the world.

Apparently, it serves the interests of all partners involved: the industry, the individual researchers, and the universities.


Turning technology into goldTurning technology into gold

NATURE| VOL 426| 11 DECEMBER 2003


Making money in the UKMaking money in the UK

The Scientist, November 13, 2003

Making money in the UK Signs that British universities are doing better at

generating cash from inventions By Stephen Pincock

Universities in the United Kingdom are getting better at commercializing their intellectual property, a survey of the university technology sector showed on Thursday (November 13).


The Bayh-Dole ActThe Bayh-Dole ActThe Bayh-Dole Act is "perhaps the most inspired piece

of legislation to be enacted in America over the past half-century," according to The Economist. "Innovation's Golden Goose," an opinion piece published in the Dec. 12, 2002, edition the respected publication, states: "Together with amendments in 1984 and augmentation in 1986, this unlocked all the inventions and discoveries that had been made in laboratories throughout the United States with the help of taxpayers' money. More than anything, this single policy measure helped to reverse America's precipitous slide into industrial irrelevance."


Echoes of Bayh-Dole?Echoes of Bayh-Dole?

Gr egory D. Gr aff, Research Economist, PIPRA, U.S.A., and Visiting Research Fellow, Department of Agricultural and Resource Economics, University of California, Berkeley, U.S.A.


BUT: Warning signs in TTBUT: Warning signs in TT

Institutional changes: may change the direction of faculty research.

Restrict dissemination of research results Increase dependency of science on governance –

regulation, support. Institutional as well as individual freedom of

research are in risk. Potential conflict of interests and conflict of

commitments (institutional and individual).



The Costs of Commercializing Academic Research

Does university licensing impede life science research and development? By Ted Agres

The ScientistVolume 17 | Issue 16 | 58 | Aug. 25, 2003



Research tool patents debatedSupreme Court appeal could limit licensing income for research tool makers | By Alison McCookApril 22, 2005

The US Supreme Court heard arguments this week from both sides of a 10-year debate that essentially pits the interests of the research tool industry against those of drug developers.The case tests the limits of an imprecise federal law, which states that researchers conducting experiments reasonably related to new drug approvals do not have to pay licensing fees to use proprietary products. One side argues that if extended to cover too many experiments, the exemption could hurt the research tool industry, which depends on licensing fees. However, as it stands, those fees may be limiting drug development, the opponents note.The debate has divided the life sciences industry, with large pharmaceutical companies and patient advocates lending support to drug developers and tool makers throwing their hats in the ring for the research tool industry.



Commercialization of research Commercialization of research results – not “all win”results – not “all win”

Why YES Direct contribution to short

term growth. “Fair” and efficient use of

public support. Improves exploitation of

knowledge to the benefit of the public (e.g., new drugs).

Why NO Risk the base of the

academic culture: openness, freedom of research, diversity of topics, etc.

May hazard innovation and therefore growth in the long run.

Calls for Calls for RESPONSIBLERESPONSIBLE TT TT


Technology Transfer NowadaysTechnology Transfer NowadaysUnder the Bayh-Dole Act (BDA), the duty to

commercialize is put on the universities.

Following the BDA, In most of the developed countries, universities are responsible for TT.

As in Israel, in most cases universities have proven to perform RESPONSIBLE technology transfer.


Guidelines offered for responsible Guidelines offered for responsible technology licensing by: technology licensing by:

CalTech Cornell Harvard MIT Stanford UC U of Illinois, Chicago U of Illinois, Chicago,

Urbana-Champaign

Univ. of Washington Wisconsin Alumni

Research Foundation Yale AAMC (Assoc. of

American Medical Colleges)

March 2007


In the Public InterestIn the Public Interest: : Nine Points to Nine Points to Consider in Licensing University TechnologyConsider in Licensing University Technology

1. Universities should reserve the right to practice licensed inventions, and to allow other nonprofit and governmental organizations to do so.

2. Exclusive licenses should be structured in a manner that encourages technology development and use.

3. Strive to minimize the licensing of "future improvements."

4. Universities should anticipate and help to manage technology transfer related conflicts of interest.


In the Public InterestIn the Public Interest (cont.) (cont.)

5. Ensure broad access to research tools.

6. Enforcement action should be carefully considered.

7. Be mindful of export regulations.

8. Be mindful of the implications of working with patent aggregators.

9. Consider including provisions that address unmet needs, such as those of neglected patient populations or geographic areas, giving particular attention to improved therapeutics, diagnostics and agricultural technologies for the developing world.


Major US Universities - 2006 Major US Universities - 2006 ($ Million)($ Million)


Main points in responsible TTMain points in responsible TTOwnership of IP : The IP generated by a university

team is owned by the University, irrespective of sponsorship or where it was conceived. The IP is licensed, not sold.

Open vs. close license : The license is limited to certain patents and field of use, the results of a sponsored research, and well defined know-how, and does not cover any other un-sponsored research performed by same or other University researchers, past, present and future.


Main points in responsible TT (cont.)Main points in responsible TT (cont.) No shelving : The essence of the license is the

introduction of licensed products by the licensee to the market. The licensee is obliged to develop the product under agreed upon program, else the license is terminated. No shelving of the technology, for any reason.

The right to publish : the right of the researchers to perform research within the license perimeter and the freedom of publication of the research results is guaranteed.

Liability : Licensor does not provide any warranty as to the applicability of the licensed technology, the enforceability of the patents, or obtaining certain results thru the research.


The ProblemThe Problem

Public support to universities is decreasingTuition is regulatedDonations are limited.

How to get more income???


The DilemmaThe DilemmaUnlike other universities’ financial adventures, technology

transfer is considered as a desired goal, in line with the interests of the private sector, the governments, and the individual researcher.

Apparently*, the main source for compensation of the decreased public support is from commercialization of research results.

Under need for money:

Self regulation responsibleresponsible TT – is it sustainable???

________________________* On the average and for most universities, TT is loosing money….


Self regulation or what?Self regulation or what? Regulation by governments? No. Governments should

be kept away from universities. Regulation by market forces? No – since all sides

(industry, university, researcher) win financially from successful TT, the market forces do not guarantee the public interest in the long run.

Self regulation by universities? Risky. Under direct and indirect pressure of the private sector and governments to enable and to ease technology transfer, the challenge to the university in self regulation is huge.


Mixed regulation?Mixed regulation? A possible solution may be that governments

dictate TT guidelines, under which universities should operate, including:

1. IPR ownership

2. No shelving

3. Free publication


Thank You!Thank You!

[email protected]

Documents

© Hagit Messer-Yaron, 2012 Prof. Hagit Messer-Yaron President, OUI [email protected] Baku, October 24, 2012