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Academic Patenting in OECD Countries Mario Cervantes, OECD

Academic Patenting in OECD Countries Mario Cervantes, OECD. Today’s Themes. (1) Academic Patenting as Policy (2) Concerns about academic patenting (3) Evidence from the literature (4) Insights from OECD Survey on Academic Patenting 5) Lessons. Academic Patenting as Policy.

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Academic Patenting in OECD Countries Mario Cervantes, OECD

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  1. Academic Patenting in OECD Countries Mario Cervantes, OECD 2nd EPIP Conference - Maastricht

  2. Today’s Themes (1) Academic Patenting as Policy (2) Concerns about academic patenting (3) Evidence from the literature (4) Insights from OECD Survey on Academic Patenting 5) Lessons 2nd EPIP Conference - Maastricht

  3. Academic Patenting as Policy Before Bayh-Dole • 1920-1970s Ad hoc petitions by US universities • 1970s- Institutional agreements between Federal Agencies/Departments & Universities “ Success” breads emulation • Reforms to funding rules in Germany, Japan, Korea • Abolishment of professor’s privilege in Denmark, Germany Austria, Norway • Policies based on US “success” - and not on evidence of under- utilisation of IP by professor inventors 2nd EPIP Conference - Maastricht

  4. Academic Patenting as Policy (con’t) - What is success? • Patents and Licenses • Royalty Revenue • New Products • Spin-off companies • Good Jobs and Growth 2nd EPIP Conference - Maastricht

  5. Academic Patenting as Policy (con’t) - Stylized facts: • US universities held 270 patents in 1970 ; and 3,617 in 2000. • US universities earned $200 million in licensing revenue in 1991 and $1.2 billion in 2000 • 390 new firms by 2000. • Thousands of jobs, billions to economic development (MIT, AUTM reports) 2nd EPIP Conference - Maastricht

  6. The problem with success Success in Academic patenting does not happen in isolation • Need markets for technology • Need entrepreneurial academics • Need tacit knowledge • Need institutional structures that give TTOs independence and credibility vis-a-vis academia and industry • Need management and financial skills • Need luck - success is highly skewed 2nd EPIP Conference - Maastricht

  7. Concerns about Academic Patenting 1. Concerns with patents in general - scope, quality, patent strategy (to exploit, to defend), fragmentation of IP rights (anti-commons) 2. Concerns about the mission of universities - shift from basic to applied, impact on academic freedom, conflicts of interest, costs and benefits 3. Concerns about academic patents in particular- will they aggravate the shift? Will they block research? Will they stifle other forms of knowledge transfer? Exclusive vs. non-exclusive licenses 2nd EPIP Conference - Maastricht

  8. Evidence from the literature (Based on review by Sampat for OECD Working Paper Series, forthcoming, 2003) Shift to applied: Jensen and Thursby 2002- 48% of university inventions are “proofs of concept” Thursby and Thursby - 44% licensed inventions by firms (n=112) are “ proofs of concept. (Mowery/Sampat 2001) difficult to disentangle the cause as academic patenting increased in parallel to industry-science linkages 2nd EPIP Conference - Maastricht

  9. Evidence from the literature Shift to applied research? Hendersen, Jaffe and Trajtenberg 1998 found increase in academic patenting was accompanied by decline in quality of patents as measured by citations but not conclusive as to there was a shift towards applied research • Sampat, Mowery Ziedonis (2003) find no “quality decline” after Bayh-Dole. • Mowery et al 2001- based on bio invention disclosures find little evidence 2nd EPIP Conference - Maastricht

  10. Evidence from the literature (con’t) Does involvement in patenting “crowd out” publication activity ? • Agrawal and Henderson (2002) number of patents positively related to quality of patents as measured by citations • Stephan et al. (2002) based on NSF data find positive relationship between patents and publications • Involvement in post-licensing at the expense of basic research (David 1999, Thursbys,2002) • In summary : evidence is inconclusive 2nd EPIP Conference - Maastricht

  11. Evidence from the literature (con’t) Effects on secrecy, disclosure: • Blumenthal et al. 1997 found 20 of life science faculty delayed publications, nearly half of them in order to protect patentability • Campbell et al. 2002 found that 47% of academics in genetics were denied data requests resulting in delays in their publications or inability to replicate results 2nd EPIP Conference - Maastricht

  12. Evidence from the literature (con’t) Effects on research progress: • Eisenberg 1999 finds increased administrative burden and costs in accessing research tools • Walsh, Arora and Cohen (2002) - little evidence that research tool patenting and licensing have halted downstream research • Sampat (2002) finds increase in number and share of citations to non-patent literature in university patents since Bayh-Dole and since 1990 2nd EPIP Conference - Maastricht

  13. Evidence from the literature (con’t) Effects on research progress : Universities are patenting more upstream research Researchers that patent also publish more and hence could be citing more of their or peers’ research in their patents Effects on access are very dependent on claims and licensing practices 2nd EPIP Conference - Maastricht

  14. Evidence from the literature (con’t) SUMMARY - Most academic licenses involve embryonic inventions - There has not been a dramatic re-orientation from basic to applied - Evidence of a growth in secrecy and limits on disclosure - Universities are patenting inputs to research that were previously released in public domain - Need for more research as well as dissemination of safeguards 2nd EPIP Conference - Maastricht

  15. OECD Survey on Patenting and Licensing - background • To document the laws and regulations that affect the protection and licensing of innovations by PROs • To measure actual PRO IP activity • To assess nature of license agreements • To identify best practices for framework conditions and IP management, in an effort to balance PRO commercial objectives with research missions 2nd EPIP Conference - Maastricht

  16. Methodology • 2 surveys administered by participating countries • 1st to national governments on legal framework • 2nd (modelled on AUTM and national surveys) to PROs on patents and licenses • 13 countries administered questionnaire (‘00 or ‘01) Belgium, Canada, Denmark, Germany, Italy, Japan, Korea, Netherlands, Norway, Spain, Switzerland, Russia, USA • Questionnaire responses not directly comparable • Mix of univs and PROs dependent on country • Response rates range from 59% to 90 % but some questions not answered • Normalisation by PRO size or research intensity not possible • Australia and US used existing survey 2nd EPIP Conference - Maastricht

  17. A Focus on Licensing • No int’l comparisons of licensing income • Better commercial proxy than patents • Captures broader range of IP activity • License clauses reveal information about PRO public mission • License info helps create new indicators: efficiency, income skew 2nd EPIP Conference - Maastricht

  18. Legal Frameworks for IP at PROs are Complex Legal Frameworks Intellectual PropertyLegislation Employment Laws Law/rules on government research funding Contract Law 2nd EPIP Conference - Maastricht

  19. Do countries need a Bayh-Dole Act? • Emulation of Bayh-Dole - Japan; Germany; Korea • Reform of Employment Laws – abolishment of “Professor’s Privilege” at Universities - Austria, Denmark, Germany, Norway • - Issuance of National “Codes of Practice or “IP policy guidelines” - Canada, Ireland 2nd EPIP Conference - Maastricht

  20. Trends in regulations • IP policies are not well disseminated, including among faculty and students • Administrative or legal requirements to disclose inventions, protect and work inventions are lacking • Royalty sharing rules sometimes set nationally, but move to greater autonomy at institutions • Non-IP barriers remain: • Government limits to keeping royalty revenue • -limits against equity ownership by universities • Public pay-scales that limit hiring of tech-transfer professionals 2nd EPIP Conference - Maastricht

  21. TTO Organisation & Managment • Most TTOs are less than 10 years old • Most have less than 5 FTE staff • Most univ TTOs are integrated into the university but not dedicated to tech transfer • Informal relations are main channel of tech transfer (own or researcher contacts) • Licensing-in technology is less frequent than licensing-out 2nd EPIP Conference - Maastricht

  22. Most TTOs less than 10 years old, less than 5 FTE staff 2nd EPIP Conference - Maastricht

  23. Most TTOs are internal to the univ but not dedicated to tech transfer 2nd EPIP Conference - Maastricht

  24. Patent Data • Data refers to patents assigned to institutions • Stock of patents smaller at univs than at other PROs (<20) • Number of patents granted per year per PRO is <10 • Most patent applications are in health but others fields - energy, ICT, production technologies present 2nd EPIP Conference - Maastricht

  25. Stock of patents and renewal of portfolio 2nd EPIP Conference - Maastricht

  26. Licensing Practices • Great variability in number of licenses negotiated, IP type and technology sector • Licensees more often small than large firms, more often domestic than foreign • PROs uneven in their use of safeguards in licensing agreements • No consensus yet on what are good licensing practices 2nd EPIP Conference - Maastricht

  27. Average # of licenses negotiated per PRO: 1-24 per year 2nd EPIP Conference - Maastricht

  28. % of licenses negotiated by IP type 2nd EPIP Conference - Maastricht

  29. PROs do use safeguard clauses in licenses to protect mission, but do so inconsistently 2nd EPIP Conference - Maastricht

  30. Licensing Revenues • Gross license income per PRO varies from 10k - 10m Euros per year across OECD countries • Wide variety in the number of licenses at PROs that are earning income: 1-90 per PRO, median or 0-5 license earn income • In most countries, only 10% active patents in a PRO portfolio are ever licensed and earn revenue in a given year • Cost of patenting and licensing not well documented 2nd EPIP Conference - Maastricht

  31. In most countries, 10% active patents are ever licensed and earn revenue 2nd EPIP Conference - Maastricht

  32. Gross licensing revenue by type of PRO in (1 000s) 2nd EPIP Conference - Maastricht

  33. Lessons Learned • Legal action can stimulate tech transfer, but national context matters • A change in mindset is needed: more can be done to increase awareness of IP policies and rules at PROs • Monitoring of IPR activities at PROs is ad hoc and weak • Critical size of TTOs larger than present average • No one-size fits all model of TTO organisation • University vs. non-university PROs in most countries have taken very different approaches to tech transfer 2nd EPIP Conference - Maastricht

  34. Lessons Learned • IP protection and licensing differs by field/sector • Too much focus by policymakers on patents as outcome hides large variety of IP activity at TTOs • PROs are experimenting with different models of TTO (regional vs. sector) • Good licensing practices need better identification and dissemination 2nd EPIP Conference - Maastricht

  35. Ultimate Goal of Tech Transfer • Too much focus on patenting as opposed to spin-offs or other channels of tech transfer • Unpredictable nature of financial returns • Tech transfer capacity takes time and skills, not just money • Evaluation of short vs. long term benefits of tech transfer is necessary 2nd EPIP Conference - Maastricht

  36. How can governments support IP management at PROs? • Need to establish a clear and coherent IP framework for PROs • Need to provide incentives for PRO reporting and disclosure by inventors • Set example for conflict of interest rules – national research guidelines help • Mobilize National Patent Offices to disseminate information to universities; training to tech transfer professionals 2nd EPIP Conference - Maastricht

  37. How can governments support IP management at PROs? • Subsidizing Patenting and licensing costs at PROs - Denmark (8 million EUR over 2000-2003) - Germany (50 million EUR to develop TTOs) - Japan (exempt TLOs from patent fees) BUT avoid capture and dependency culture • TTO Networking Initiatives - UK (around hospitals) - Germany (regional networks) - Korea (sectoral) • Training & Awareness - United Kingdom - Leveraging Patent Offices (US, Denmark, Japan, UK) 2nd EPIP Conference - Maastricht

  38. How can governments support IP management at PROs? • Encourage data collection • International co-ordination of surveys is necessary, especially OECD-wide • Need follow-up work on effects of academic patenting 2nd EPIP Conference - Maastricht

  39. www.oecd.org From OECD Home Page: • Right bar – OECD Online Bookshop • Right bar – Source OECD 2nd EPIP Conference - Maastricht

  40. Thank you! • Mario.cervantes@oecd.org • Benedicte.callan@oecd.org 2nd EPIP Conference - Maastricht

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