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Dennis S. Karjala
Jack E. Brown Professor of Law
Sandra Day O’Connor College of Law
Arizona State University
dennis.karjala@asu.edu
• Universities exist to create and transmit • By “knowledge,” we mean not just science and technology but also the humanities – literature, art, history, philosophy, and • All universities want more money, but in seeking it we must not lose sight of our • Much useful, and sometimes economical y valuable, technological knowledge is developed at universities • A number of universities have participated in the development or licensing of these technologies (TT) and have received significant income therefrom • Many universities are hoping to duplicate these results and are establishing technology transfer offices (TTOs).
• Profit to subsidize university operations, and perhaps further research, is clearly a • Getting knowledge usefully implemented for the betterment of society is also within • A less recognized goal can be new and • Many do not make money – even lose money• Conflicts with traditional dissemination of • Overemphasis on science and technology vis a • Overemphasis on “practical” science and • Dependence on an established income stream • Total annual revenue to US universities from TT has been estimated at $1.5 billion • 10% of the universities accounted for 42% • University of California $100 mil ion• Stanford $50 mil ion• MIT $33 mil ion 156 US Universities Ranked in Order of Net Licensing Income FY04 (after Legal Expenses, but not even accounting for Operating Expenses) $65,000,000
$55,000,000
$45,000,000
(i.e., patent costs alone
$35,000,000
$25,000,000
$15,000,000
$5,000,000
-$5,000,000
* Note that NYU is $107M net income per annum (not shown to scale), Columbia is ~$100M net income (not shown to scale) Successful TTOs Driven By “Blockbusters” $120,000,000
$100,000,000
Granulocyte colony stimulating factor (G- $80,000,000
$60,000,000
Stem cell technology (will dominate in the $40,000,000
$20,000,000
ta at. in rd
sp g all) Y
an U esearch
etterin C
R U ake F ig
Cisplatin and carboplatin – cancer drugs Worth noting: many commercial industries also driven by blockbusters (pharma, biotech, music, pu blishing, venture capital, etc) Number of Licenses at 156 US Universities: FY2004 icen 15,000
ber of L 10,000
Active Licenses
Total Licenses
at Universities
Generating
Generating
Licenses ('04)
$>1M annually
Source: AUTM data, contains 96% of top 100 Research Universities responses (2004 is the most recently published data) • Private universities with a medical school • Public universities with no medical school • Public universities with a medical school and private universities without one seem roughly equal (Bulut & Moschini 2006) • Higher royalty shares for faculty members have been associated with higher licensing income and more effective TT • Rates of start-up company formation have been associated with faculty quality (measured by publications) and expenditures on IP protection • In 1980 there were some 25 TTOs at US universities – primarily major research institutions like MIT, Columbia, and Stanford • In 2006 there were over 300 university TTOs, including virtually every university that does research and (apparently) even some that do no research • TTOs in 2003 averaged about 10 ful -time- equivalent (FTE) employees, roughly double the size in 1996 • Obtaining a single patent costs over $100,000• Many TTO activities do not generate revenue – such as reviewing material transfer and sponsored research agreements • No one wants to miss a “blockbuster,” but they are rare and universities should be realistic about the chances of winning the patent “lottery” • 1) Maximize long-term upside by patenting and marketing aggressively, be willing to wait as much as 10 years for payout – improves chances of hitting the “blockbuster” • 2) Minimize annual costs, patent only when certain of return, invest less in marketing • 1) More chance of hitting “blockbuster,” higher operating and patent costs, larger TTO operation • 2) Less chance of losing money in any given year, higher chance of losing the “blockbuster” in the long run • The policy gives the University all rights in IP developed in “University-assigned” and • “University-assisted” projects are those that make “significant use of university resources” and purports to cover even IP • Use of office space, library resources, or personal computers is not “significant” use • However, “assistance of support staff; use of telecommunication services; use of university central computing resources; use of instructional design or media production services; access to and use of research equipment and facilities, or production facilities” purports to be a significant • Faculty keep the copyright in traditional academic works (textbooks, articles, class notes) and artistic works (music, dance) • Academic software is excluded unless put • On-line courses are considered on a case- • Each employee/creator of IP must disclose any creations to the appropriate University official • The University then must decide whether to promote the IP or release it to its creator • If the University decides to keep the IP, it pays al the costs of obtaining and maintaining the • Employees are asked to “consider” delaying publication until the IP is ful y evaluated by the University, to maintain worldwide patent rights • Creator of the IP gets 50% of the first $10,000 in “net income” from the IP and • “Net income” is gross revenues minus maintaining the IP (e.g. cost of patenting) • One major difference seems to be that IPRs arising from government-funded projects belong to the government • The US Bayh/Dole Act (1980) gave the right to obtain and implement patent rights to government-funded research to the research institutions • Before that, the were no IPRs in the fruits of • Reporting requirement and 1/3 revenue • Who should own the IP – the university or – In general, faculty members are not wel equipped to exploit and promote inventions – So, regardless of who owns it, it is likely that most inventions will be assigned to the appropriate TTO for development – The big question is which approach has the lowest likelihood of missing the “blockbuster” • The ASU Foundation is a separate legal entity that handles al charitable gifts and contributions (shareholder) of a limited liability company called Arizona Science and Technology Enterprises • AzTE operates as the exclusive intel ectual property management and technology transfer • It has a managing director, a legal team (two), a VP for venture development, a life sciences team (three), and a physical sciences team (three); six people work in operations and finance • It also claims it has supported a number of • Perusal of the ASU Foundation’s Annual Report (June 30, 2008) suggests about $1 • AzTE itself apparently had $4 million in • The issue of preferencing science and technology over the humanities, as well as “practical” over more basic research, has already been mentioned and has been discussed at some length in the literature • A lesser known noneconomic aspect of having a TTO is pedagogical – students can receive important practical education – The Technology Ventures Legal Clinic (TVLC) consists of law students certified to render “pro bono” legal services and supervised by – Technology Ventures Consulting (TVC) consists of business, science, engineering, • TVLC and TVC work together to provide services to Arizona entrepreneurs and smal businesses as wel as TT professionals • This year 35 students are participating and assisting 26 clients in technology start-up and commercialization efforts • Annual budget is about $200,000, including ful - nondisclosure agreements, patent searches, licensing agreements, trademark and copyright consulting, employment agreements and the like • TVC assists in technology assessment, market research, ownership structures, strategy formation, implementation plans, and similar activities • TVSG accepts only projects from AzTE, “community partners” (e.g., law firms and • Unique educational experience for students• “Free” support for AzTE plus a pool of specifical y trained students for placement as interns or ful -time employees • Community partners show themselves as supporters of innovation in Arizona, have access to a pool of specially trained students, participate in TVSG referral network, and capture tax advantages from contributing to ASU • TT and TTOs are “hot” topics in the US• The majority of universities do not make • But al hope for the “blockbuster”• Too heavy a focus on “bottom line” earnings from TTOs can cause universities to lose their • Done properly there can be noneconomic advantages even where net income is low or

Source: http://www.mruni.eu/mru_lt_dokumentai/fakultetai/socialines_informatikos_fakultetas/Renginiai/Karjala/VilniusPresentation5-7-09.pdf

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