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Industry’s Perspective on Industry-University Intellectual Property

Explore the benefits of industry-university research projects, different intellectual property scenarios, steps for commercialization, and other important issues for successful collaboration. Understand the importance of intellectual property and its impact on competitive advantage. Consider the roles of industry and university in providing goods and services, educating society, and staying on the leading edge. Discuss various IP arrangements and factors to consider in negotiations. Determine the best-suited party for filing patents and address other relevant issues for successful collaboration.

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Industry’s Perspective on Industry-University Intellectual Property

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  1. Industry’s Perspective on Industry-UniversityIntellectual Property External Research Directors Network Industrial Research Institute, Inc. April 17, 2001

  2. Agenda • Benefits of Industry/University Research Projects • Intellectual Property Scenarios • Commercialization Steps • Other issues • Conclusions

  3. Industry Competitive Advantage Source of Employees Long Term Short Term Research Results Extension of technical competencies Cutting edge research University Relevant sponsored research projects Funding Equipment Donations Student and professorial employment Consulting Shared Knowledge Benefits of Industry/University Relationships

  4. Industry Provide goods and services Capitalize on new ideas Provide employment opportunities Make a profit University Educate our society Train new scientists and engineers Continue to be on the leading edge Offer modern equipment and facilities Graduates that are sought after Valuable Research Publication General dissemination of knowledge Major Roles There is much common ground between the two parties.

  5. Value  To be a successful relationship, there needs to be an increase in value from the relationship for both parties. From the viewpoint of industries, that translates into “Competitive Advantage” as the major driving force.

  6. Industry Perspective Allows for potential competitive advantage Can be used as building block for additional IP Is a part of the overall company strategy from concept to sales Is part of a portfolio University Perspective Potential future compensation to the University/Faculty based on patented information Prestige Potential spin off companies Importance of Intellectual Property

  7. 5 IP Arrangements 1) Industry owns the IP generated as a result of the collaborative research. 2)Industry owns the IP but allows the University to continue with development for research purposes only. 3) The University owns the IP but industry has exclusive rights. 4) The University owns the IP but the business has exclusive rights in a narrow field of use. 5) the University owns the IP but offers the technology non-exclusive, royalty free. Increasing Number of collaborative opportunities

  8. The Industrial Model Intellectual property Proprietary position Competitive advantage Unique product Innovation Acceptance in the Market place

  9. CommercializationCosts/ Revenues/Risks

  10. Issues to be Considered in Negotiations • Which party initiated the idea? • Who is contributing financially? • Money, Equipment, Feedstocks, Supplies • Who is contributing technically? • Cost of the overall development program? • Cost to bring it to market? • Risks --> Who pays for the failures?

  11. Industry Full time experienced staff Focused on market segments Can select the proper foreign filing Works with the people who are developing the use and market Knows where the technology can be applied to similar opportunities. University Has experienced staff but is spread thinly Communications between the scientists and IP personnel is more distant Scientist is not connected to the market Do not foreign file due to costs, - limited protection Their market is industry Who is Best Suited to File for Patents? We Think Industry is best suited.

  12. Other Issues • Patents • Need to balance publication timing with IP requirements • Costs who pays, who owns, who maintains • How can industry be kept informed of status • Foreign Filings • Background rights • Important for commercializing a product • May be as important as technology developed

  13. Conclusions • Benefits of universities, industry and society working together: • Sponsored research projects: funding, equipment and resource donations • Shared knowledge • Source of employment • New idea generation • Industry’s main driving force is competitive advantage. • Industry should have strong ownership rights when they pay for the research. • The overall road to commercialization is a long , twisted and risky experience. • Patents, Maintenance, and Patent strategy should be done by industry. • Timing of publications should consider the overall IP requirements.

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