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IP POLICIES AND ISSUES IN ITALIAN UNIVERSITIES

“ IP M a n a g emen t @ Universities ” Istanbul, May 1 6 to 1 8 , 201 2 • A lbert L ong H all, B OGAZICI U NIVERSITY. IP POLICIES AND ISSUES IN ITALIAN UNIVERSITIES. ALBERT LONG HALL Thursday, May 17, 2012. Mr. Alberto Camusso - Attorney-at-Law / Partner

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IP POLICIES AND ISSUES IN ITALIAN UNIVERSITIES

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  1. “IP Management @ Universities”Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY IP POLICIES AND ISSUES IN ITALIAN UNIVERSITIES ALBERT LONG HALL Thursday, May 17, 2012 Mr. Alberto Camusso -Attorney-at-Law / Partner Jacobacci & Associati, Turin, Italy

  2. “IP Management @ Universities”Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY Summary An Overview Legal and regulatory framework University spin-offs Patenting practices and licensing issues A look ahead & conclusions IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy

  3. “IP Management @ Universities”Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY Legal and regulatory framework The University system State Universities  Non-State Universities  • Different funding and financing • Same legal framework • Different governance Public research entities/centres (CNR) IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy

  4. “IP Management @ Universities”Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY 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 IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy

  5. “IP Management @ Universities”Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY 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 IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy

  6. “IP Management @ Universities”Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY Legal and regulatory framework Ownership and entitlement for institutional R&D (Sec. 65 CIP) • The researcher is the exclusive owner of patent rights • Universities can establish the maximum amount of royalties due, provided that researcher gets 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 IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy

  7. “IP Management @ Universities”Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY Legal and regulatory framework Ownership and entitlement for institutional R&D (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 IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy

  8. “IP Management @ Universities”Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY 2. University spin-offs • Entity established for the industrial/economic exploitationof 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 IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy

  9. “IP Management @ Universities”Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY 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 • * Source: University of Milan IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy

  10. “IP Management @ Universities”Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY 2. University spin-offs 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) IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy

  11. “IP Management @ Universities”Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY 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 IP → Spin-offs acting as either IP holders or IP (master) licensees • * Source: NetVal IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy

  12. “IP Management @ Universities”Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY 3. Patenting practices and licensing • Hence … • University spin-offs MUST licence, how? • 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 IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy

  13. “IP Management @ Universities”Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY 4. A look ahead & conclusions • Patent strategies: quality v. quantity? • - 274 applications filed in 2010 (around 13,000 IT/4,000 EP/2,600 PCT applications) • - 320 patents granted in 2010 • - over 2,600 patents in universities’ portfolio • Young patents being licensed, no mature technology → higher risks and less revenues in the short run • Technology transfer is a resource for Italian system: still under construction (first office for TT founded in 1999), yet over 170% increase since 2004 IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy

  14. “IP Management @ Universities”Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY 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 IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy

  15. “IP Management @ Universities”Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY Thank you Alberto Camusso PartnerJacobacci & Associati acamusso@jacobacci-law.com www.jacobacci-law.com Corso Emilia, 810152 Torino - ITALY IP Polices and Issues in Italian Universities Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy

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