Expert Group Report Management of Intellectual Property in ... - KoWi

professionals of PRO transfer offices need be aware of those differences before deciding on applicable
law.
The straight licensing of IPR to existing companies or to new companies, without protracted
involvement of the PRO in the development of the potential applications, remains one of the main
forms of knowledge transfer. This process is relatively straightforward and several specific guidelines
are recommended to ensure that licence terms are consistent with the missions of the PRO, including
ultimate benefit to the general public. All stakeholders need to have realistic expectations about
the value of the IPR. As an alternative to up-front payments or royalty-bearing licences to spinout
companies, the PROs may consider receiving stock from or assigning title to spin-out companies.
Collaboration with industry may take many different forms that are potentially beneficial to both
parties and these should be encouraged. Many of these forms are already present in the Open Science
Model. Distinction should be made between contract research, wherein no IPR are generated or
retained by the PRO, and collaborative or sponsored research, wherein substantial IP is generated by
the PRO and may be retained as a basis for further research and collaboration with the same or other
partners. The further development of collaborative research on fair and equitable basis is one of
the essential components of the Innovation Model. It is one of the ways by which proof of principle
and demonstration of economic utility of PRO inventions and know-how can be funded with both
industry and public financial support, such as in the EC Framework Programmes. The report reviews
some of the practical issues faced by PROs when negotiating collaborative research and consortium
agreements with industry and makes some recommendations. Certain issues remain debatable and
should really be resolved on a case-by-case basis between the parties. The Group recommends that
mutually acceptable guidelines be developed by common agreement between representative
associations of industry and PROs with a view to arrive at recommendations of good conduct,
which will facilitate and expand collaborative research opportunities. A tentative set of guidelines
of collaborative research addressing the issues of ownership, use rights, access to background,
management of IPR and compensation is submitted as a starting point.
As we have seen from US experience over the last twenty years, rejuvenation of the economy and the
development of a knowledge-based economy, as envisioned by the EC, can be fuelled in part by the
creation of more new technology-driven companies. In addition to a strong technology basis from the
PROs, the US recipe contains a large domestic market, a strong entrepreneurship culture and strong
backing by venture capital. For these reasons, the creation of a large number of university spinout
companies has been almost spontaneous, without much active direct involvement from the PROs
themselves, beyond the conclusion of licence agreements. By contrast, in Europe, the spontaneous
creation of PRO spinout companies has occurred at a much lower pace. For the past ten years, several
European PROs have embarked upon ambitious programmes of assisting the creation of spin-out
companies involving a combination of several policies, including training of entrepreneurs, incubator
facilities, coaching, seed capital. The results support the opinion of the Group that the rate of creation
of spinout companies can be significantly increased. The Group recommends that the policy of
active involvement of PROs in the creation of sustainable spinout companies be further
encouraged at European level by a number of public policies and support, including
downstream support for these companies after they have left the nurturing environment of a
PRO. Recommended practices are reviewed.
Successful implementation of the Innovation Model of knowledge transfer in European PROs is a big
challenge. Why should European PROs embark on such a challenge? The main reasons are reviewed.
While generating additional revenues for the university may be useful, this objective should not be the
driving force behind adoption of such a proactive policy regarding IPR. Except in rare circumstances,
the policy will not be self-sustainable. Given that the mission of a PRO includes promotion of
socio-economic benefits to society arising from the research undertaken in the PRO, then such a
policy is essential. The Group considers that the active involvement of European PROs in
managing its IPR is not in conflict with its education and research missions, but will become a
viii