IPR Handling at a (mainly) Publicly Funded Institution in Switzerland

Transcription

1 IPR Handling at a (mainly) Publicly Funded Institution in Switzerland AIPPI-Forum Singapore, October 6, 2007 Silvio Bonaccio Head of ETH transfer Swiss Federal Institute of Technology, ETH Zürich ETH Zürich

2 Agenda 1. Switzerland s Challenges 2. Milestones in IPR regulations 3. Guidelines for research collaborations and handling of IPR at ETH Zürich 4. Conclusions 2

3 Switzerland Population: Area: km 2 Languages (2000): 63.7% German 20.4% French 6.5% Italian 0.5% Romansh 8.9% other GDP (2004): million CHF Swiss Federal Statistical Office

4 R&D Investment as % of GDP (2004*) 0% 1% 2% 3% 4% Sweden Finland Japan* Switzerland USA* Denmark Germany Government Private sector France UK* China* EU-25: 1.9% OECD: 2.3% * or most recent data Source: Eurostat/Swiss Federal Statistical Office, 2006) 4

5 Citation intensity (Citations per unit GDP) Comparison: Economic vs. Scientific Wealth Wealth intensity (GDP per person) (GDP per person) Source: Nature. Vol July

6 Global Growth Centres Development Until 2020 (Formula-G for 24 Economies) Türkei Irland Korea Mexiko USA Spanien Kanada Frankreich Norwegen Neuseeland Österreich Portugal UK Schweden Griechenland Dänemark Italien Belgien Deutschland Finnland Niederlande Australien Japan Schweiz Deutsche Bank Research February 9, Nr. 313 geschätztes Estimated Wachstum growth of des GDP BIP , OECD nur OECD only average annual growth of GDP [%] mittleres jährliches Wachtums des BIP [%] 6

7 Swiss Landscape of Tertiary Education & Research Swiss Federal Institutes of Technology (ETH s) Universities (Cantonal, Cantons = States) Universities of Applied Science (Cantonal) Research Institutes Students 359 Prof (FTE) Staff (FTE) Total Budget External funding Mio CHF 184 Mio CHF 7

8 Milestones in the Development of IPR-Handling at ETH Zürich 1927 / 1959 Ordinance concerning employment (government) Inventions belong to the government (resp. ETH) -> however, the reality looked different 1988 ETH ordinance (and internal guidelines) regarding research collaborations Distinction between Research Mandate and Research Cooperation 1991 / First ETH Law ETH Zürich receives the status of a Legal Entity Subsequently: first internal guidelines regarding the handling of IPR at ETH Zürich Financial independence of the ETH from the government -> all income from licensing / selling IPR remains with the institutions 2003 Comprehensive internal guidelines regarding research collaborations AND the handling of IPR at ETH Zürich ( Revised Law for the ETH and execution guidelines -> establishes a solid foundation and a clear set of rules; ref. next slide There There is is no no march-in right right by by the the government; but but up up to to about about the the year year the the Federal Institutes had had to to transfer 20% 20% of of their their IPR IPR income income to to the the government! 8

9 Revised ETH Law and new Decree on TT (version of December 9, 2003 and new Decree of July 1, 2004) gives ETH Institutions the explicit task to exploit their research findings (Art. 2f); clarifies the legal situation: ETH Institutions are owners of IPR created by their employees and faculty members and do have the right of commercial use of software (Art. 36.1); grants ETH Institutions the right of holding equity of public or private companies for the purpose of commercializing IPR (Art. 3a); (equity in place of cash upfront from start-ups exploiting IPR of ETH Institutions) obliges the ETH Institutions to share income with employees: employees and faculty members having created IPR shall be given an adequate share of any profits generated by commercialization of these research findings (Art. 36.3). Today, Today, the the Federal Institutions are are fully fully in in charge charge to to decide decide how how to to handle handle their their IPR! IPR! 9

10 (Partially) Privately Funded Research The Problem Ownership of IPR? After Project Support? Confidentiality? Warranties? Costs? Time horizon for a project? Do they speak my language? Whom do i talk to? Are they doing anything of interest for us? 10

11 Research Collaborations with ETH Zurich Most important aspects in all Collaboration Agreements with External Partners Full project costs consisting of Salaries including social costs; Consumables; Special equipment as applicable Infrastructure Overhead of 10% Publication Rights Freedom to use results (& resp. IPR) for research and education purposes, incl. further collaborations with third parties Balance between financial contribution from and IP-rights for industrial partner 11

12 (Partially) Privately Funded Research A Solution Project Type Implication for Partner IPR Collaboration WITH upfront acquisition of IPrights Collaboration WITHOUT upfront acquisition of IPrights Project paid wholly by industrial partner. IP-surcharge of 35% on total project cost. Project paid wholly OR in part by industrial partner (e.g. CTI-subsidized projects) No surcharge on total project cost. IPR resulting from the project owned by industrial partner. No royalties due later in case of commercial exploitation by industrial partner. Free license for ETH Zürich to use IP for educational & research purposes. Ownership of IPR resulting from a project defined according to contribution (e.g. sole or joint patents). First right of refusal for industrial partner for an exclusive license in the Field of Use; option valid for a certain time period. Royalties due later in case of commercial exploitation by industrial partner (if ETH Zürich is (co-) owner). Free license for ETH Zürich to use IPR for educational & research purposes in the Field of Use. ETH Zürich may use IPR in all other fields. 12

13 IPR from Publicly Funded Research - Excerpt from Guidelines Obligation to report ALL inventions and filed patent applications Work related inventions, inventions in the name of third parties (from collaborations) and private inventions with the utilization of ETH infrastructure Patents are ALWAYS filed in the name of ETH Zürich Generally, ETH Zürich will claim ownership on any IPR Patent applications are financed 100% by ETH transfer If interesting for ETH Zurich, a market and potential licensees existing, and the exploitation strategy agreed with ETH transfer Revenues from inventions are shared with inventors No No strict strict rules rules with with respect respect to to license license terms terms maximum flexibility. Possibility to to assign assign ownership to to licensee if if it it makes makes sense. sense. 13

14 IPR from Publicly Funded Research - Creating incentives for Researchers Distribution of revenues 1. Up to CHF 5000 to the inventors as an initial bonus 2. Cover external costs incurred 3. 1/3 Inventors (private), 1/3 Professorial Chair, 1/3 ETH Zürich Assignment of patents to inventors possible If ETH Zürich is not interested Spin-offs Intensive support for inventors who want to start their own company; licensing / assignment of intellectual property (under preferred conditions) 14

15 The 3 Problems with the IPR Owned by Universities 1. How to avoid missing the big opportunity? 2. So many patents what now? 3. Who pays the Bill? With this strategy we will catch a big one! Patent-Bills Please Dump Your Money Here Adapted from: Gary Larson AND: it still can take a long time from basic science to products (5-40 yrs) 15

16 Experiences & Conclusions Have clear guidelines in place Be transparent Publish them However, use a flexible and pragmatic approach Try to understand what your customer really needs ETH Zürich s Policy Do not unnecessarily restrict any potential future collaborations Make sure the technology is successfully transferred License income is an important aspect, but not the only one % of Funding 100% 90% 80% 70% 60% 50% 40% 30% 20% 10% 0% Third Party Funds Budget Funds Number of Spin-offs YTD Number New Patents New Tech Transfer 16