an introduction to the university of vienna technology transfer office ingrid kelly technology...

An introduction tothe University of ViennaTechnology Transfer Office

Ingrid KellyTechnology Transfer Manager

Faculty of Chemistry, 25 April 2013

What is Technology Transfer ?

Purposeful transfer of the results of fundamental research from universities and research institutions into the economy via protection and out-licensing of intellectual property

2Faculty of Chemistry, 25 April 2013

Why Technology Transfer?

-Long-term revenue stream, feeds back into research

-Generate return on public funds invested in University

-Create commercial awareness among University staff, students and alumni - exposure to the “real world”

-Promote entrepreneurship

-Assist in economic development, job creation

-Fuel industry’s “pipeline”

- Move technology out of the ivory tower and into the marketplace for the benefit of society


Technology Transfer in Austria

- pre- 2002: “Professor’s Privilege”

- The turning point:Austrian Universities Law 2002 (in force since 2004)

§106 - University is an employer in the sense of the Austrian Patent Law and therefore owns inventions made by employees

<10 years of systematic University Technology Transfer in Austria


University of Vienna Technology Transfer Office (TTO)

D r. In g rid K e llyT e chn o lo gy T ran s fe r M a na g er

M a g . V iv ian S a lp iu s, L LML e g a l C ou n se l (a nd co lle a gu e s)

(D ra ft in g a n d re v iew o f a g re e m e n ts)

D r. L uca s Z in n erH e a d R e sea rch S e rv ice s & C a ree r D eve lo pm e nt

U n iv .-P ro f. M a g. D r. S u sa n n e W e ig e lin -S chw ie d rz ikV ice -R e cto r fo r R e se a rch


Our main areas of activity

-Educating University personnel in practical IP matters -upcoming patents workshop in November 2013

-Invention scouting/spotting

-Assessment of inventions made by University personnel

-Filing and management of University patents

-Marketing of University technologies

-Assisting and advising in establishing spin-off companies

-Review of contracts and agreements with IP provisions

Faculty of Chemistry, 25 April 2013 6

What is an invention ?

misconception that inventions

must be pioneering or revolutionary

many patented inventions are actually

only slight improvements on the prior art

-but can still be very valuable (e.g. Pharma formulation patents)

don´t be put off reporting a “minor” invention to your Technology Transfer Office


Copyright © The Economist Newspaper Limited 2013.

University Employee Inventions

-An invention made by an employee of the university, and therefore

falling under §11 of the Austrian patent law relating to employee

inventions

-Note that the law does not apply to students

unless they have an employment contract with the

University

-But the University may invite the student to assign

his/her share of the invention to the University in

return for a share in any income


Universities and the Austrian Patent Law

-The law (§ 12 PatG) states that employees are obliged to report their

inventions to the employer (i.e. the UniversityTech Transfer Office) without

delay. If they fail to do so they may be liable for any consequent losses!

-The University then has 3 months in which to assess the patentability and

potential commercial value of the invention. During this time both

employee and employer are obliged to keep the invention secret.

- Before the expiration of this time limit the University may either:

- Claim all rights to the invention, or

- Return the rights in the invention to the inventor(s), who may seek to patent and license the invention at their own cost


University declines invention

University declines invention

3 month time limit

University may file patent application

Inventors as owners may patent at own

cost

What is a (University) employee invention?§7 PatG

(3) Eine Diensterfindung ist die Erfindung eines Dienstnehmers, wenn sie ihrem Gegenstande nach in das Arbeitsgebiet des Unternehmens, in dem der Dienstnehmer tätig ist, fällt und wenn

a) entweder die Tätigkeit, die zu der Erfindung geführt hat, zu den dienstlichen Obliegenheiten des Dienstnehmers gehört oder

b) wenn der Dienstnehmer die Anregung zu der Erfindung durch seine Tätigkeit in dem Unternehmen erhalten hat oder

c) das Zustandekommen der Erfindung durch die Benützung der Erfahrungen oder der Hilfsmittel des Unternehmers wesentlich erleichtert worden ist.

So an employee invention qualifies as such because:-the invention was conceived during the normal duties of the employee, or -there was motivation from the workplace to create the invention, or-the use of workplace facilities/resources and experience facilitated the creation of the invention


Who qualifies as an inventor?

An inventor as defined under US patent law is someone who conceived the invention as defined in at least one claim of the patent/application

Who is not an inventor ?

e.g. a lab/group head who provided no more than general direction and guidance when the invention was being made

e.g. a lab technician who worked hard, but merely followed instructions from someone else to develop the invention

These individuals may however be contributors to the invention and named authors on a publication


Reporting an invention - what happens next ?

- The invention is reported to the Tech Transfer Office using the standard „Erfindungsmeldung“ form (available on our web-page). The form must be signed by all inventors

- On a case-by-case basis the invention is internally or externally evaluated to determine its potential value (patentability, market)

-Within 3 months the University must decide if it wants to claim the invention (otherwise it reverts to the inventors), and the Vice-Rector will inform the inventors accordingly.

-In the event that the invention was jointly made with another research institution or company, decisions on next steps are made in conjunction with the other owners


Employee Inventions reported to Uni Wien (as of April 2013)


What is a patent ?

- A form of “Intellectual Property” (IP)

-A legal monopoly right to an invention, granted by governments to encourage investments in innovation

- originator can recoup investments in R&D without competition

- Generally limited to a maximum of 20 years from filing date in a specific country

- extensions sometimes apply (e.g. to compensate for patent office or

drug regulatory delays)

- In legal terms a patent is an intangible right that can be transferred, licensed etc. like any other form of property


What kinds of things are patentable ?products, processes, uses

Devices (mechanical, electrical..)Chemical entities and their synthesesManufacturing processesBiological materials, including genes, proteins, antibodies, cell lines, microorganisms, vectors etc.Plant and animal varieties (other than those obtained by traditional breeding)Compositions or combinations of different substances (e.g. pharmaceutical compositions)Medical (therapeutic, surgical and diagnostic) uses of substancesApplications of mathematical algorithms or software in achieving a practical result


No patents allowed for:

X Discoveries, theories

X Software or algorithms per se (but copyright protection)

X Aesthetic creations

X Methods of surgery/therapy or diagnostic methods are excluded in many countries (i.e. no inhibition of doctors´ rights to practise)

X Plant or animal varieties (achieved by conventional breeding)

X The human body, or its elements, such as genes (except in isolated form)

X Methods of playing games, performing mental acts

X Methods of doing business (except in certain countries)


Filing and Management of Patents

The inventors work together with an external patent attorney to draft the patent application. The inventors continue to provide technical support when needed during subsequent patent procedures

Once the University has a claimed an invention it can - but is not obliged to - file a patent application on that invention. All patent costs are borne by the University Technology Transfer Office

The University has full discretion in its patenting strategy, selecting the countries in which to file, and deciding on when to abandon any patent rights.


The Priority Year The Priority Year

During the priority year:• search for prior art by patent office• further development of the invention • publications possible if Tech Transfer Office agrees• first attempts at finding a licensee for the technology• decision on countries for patent filings (“foreign filings”)• preparation of improved/extended/revised patent text for foreign filings

The priority year:• a period of 12 months in which the patent owner can take time to decide international patenting strategy , having established a first patent filing date for the invention (the priority date)• starts on the day of filing of the first patent application in (almost) any country in the world (priority application orUS provisional application)

Before expiry of the priority year the patent owner can:

• file national patent applications (e.g. US)

• file a European (EP) patent application

• file an international (PCT) patent Application

• file any combination of the above

What happens during the PCT procedure ?


0 12 18

SEARCH

t = 0: Filing of Priority Applicationt =12 months: Filing of PCT Applicationt < 18 months: Issuance of Search Report and Written Opiniont = 18 months: Publication of PCT Application with Search Reportt = 30/31 months: National phase entry

EXAMINATION

IPRP*PCT Chapter II

30/31

* International Preliminary Report on Patentability

PCT Chapter I

National Phase Entry

e.g. EP

e.g. CN

e.g. BRPriority Year

Patenting vs Publishing


Marketing of University Inventions

For a University, the goal of filing a patent application is to obtain commercial value from an invention

It is also possible to license out non-patented technology and know-how, or works protected by copyright (e.g. software).

Marketing of University technology is easiest when the inventors have existing contacts with companies in the field, especially if the invention arises in the context of a collaboration agreement with a company

In other cases there may be just a few potential licence-takers, and the TTO can approach them directly

Where the field of potential licensees is large or complex, the TTO may contract specialist technology marketing organisations to approach companies on behalf of the university


Return on Investment: A University Technology Licence

23

“License income is highly concentrated, with the top 10% of universities and research institutes earning approximately 85% of all license income.”

EU Knowledge Transfer Study 2010

Faculty of Chemistry, 25 April 2013

An Example of Successful Technology Licensing

In 2008 Prof. Lindner and colleagues (Analytische Chemie) developed zwitterionic ion-exchange materials for chromatographic separation of chiral molecules

The University of Vienna claimed the invention and filed a patent application

Chiral Technologies Europe (CTE) declared an interest, and were permitted to review the invention under confidentiality (CDA)

In 2010 the University successfully negotiated a licence with CTE, underwhich the University was granted a sales-based royalty

First commercial sales of chromatographic columns incorporating the inventive technology were achieved in 2012


Tech Transfer in the context of a Research Agreement

Prof. Veronika Somoza has a productive Research & Development agreement with the company Symrise AG in the field of food ingredients

Under the terms of the Agreement, certain inventions have to be offered to Symrise, who compensate the University with a lump sum payment for every invention accepted

Symrise file and prosecute patent applications on the inventions.

Prof. Somoza and colleagues are named as inventors on these patent applications.

To date 4 inventions have been claimed by Symrise


Spin-Offs

As an alternative to pure out-licensing, technology developed at the University may be spun-off in a new company dedicated to developing and commercialising the technology.

The University of Vienna has not established many spin-offs, but we are keen to encourage the next generation of entrepreneurs, whether current students, employees or alumni of the University

Funding and guidance for establishing Spin-Offs is available from the Austria Wirtschaftsservice (AWS), and INiTS, among other agencies


Inventor Remuneration

The legal obligation for employees to notify inventions to the University is coupled with the legal right to remuneration upon successful commercialization (= out-licensing)

The existence of a patent is not a pre-condition for payment of inventor remuneration

The employee continues to be entitled to receive remuneration for past inventions even after retirement or leaving the University

Income from a licence is paid to the University, which then assigns 1/3 to the research entity from which the invention originated, and 1/3 to the inventors/contributors as a group, which is then subdivided according to their contributions and paid to each inventor/contributor directly


Contracts and Agreements involving IP

The TTO Office reviews all types of contracts and agreements potentially concerning transfer of University technology, such as:

-Material Transfer Agreements (MTAs)-Confidential Disclosure Agreements (CDAs)/Non-Disclosure Agreements (NDAs)-Contract research agreements-Collaboration agreements-Consultancy agreements-IP or know-how licence contracts-Grant applications, especially when an industry partner is involved (FFG)


Review and Amendment of Contracts

Do not be tempted to sign an off-the-shelf contract or a contract presented to you by a third party without having it reviewed

All contracts involving IP clauses should be reviewed by the TTO before signature, even if:

There is no existing IP, or

It is not expected that any IP will be generated in the course of

the Agreement

Because:

The University should get a fair deal for its services, expertise,

creativity, knowledge and know-how

Having a clear and comprehensive contract avoids later conflicts and

confusion


Any Questions?


an introduction to the university of vienna technology transfer office ingrid kelly technology...

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