Building International University- Building International University Business links Systemising the TLO/TTO business model including Systemising the TLO/TTO business model, including its sustainability 10 January 2012 British Embassy Tokyo British Embassy , Tokyo Robert Kneller Robert Kneller University of Tokyo, RCAST, and Stanford Medical School www kneller asia kneller@tt rcast u tokyo ac jp www.kneller.asia , kneller@tt.rcast.u-tokyo.ac.jp
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Building International University-Building International UniversityBusiness links Systemising the TLO/TTO business model including Systemising the TLO/TTO business model, including its sustainability
10 January 2012British Embassy TokyoBritish Embassy, Tokyo
Robert KnellerRobert KnellerUniversity of Tokyo, RCAST, and Stanford Medical Schoolwww kneller asia kneller@tt rcast u tokyo ac jpwww.kneller.asia, [email protected]
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But studies by Kanama & Okuwada (2008) and Takahashi & Carraz (2009) show:and Takahashi & Carraz (2009) show:
Prior to 2004 and even 1998, many university 4 99 , y yinventions were being patented by individual faculty or by companies to which they had y y p yassigned their inventions: Here are approx avg # of university inventions patented
per year by individuals or by company assignees
1995‐1997 2001‐2003 2005 2006
Tohoku U. 230 325 391 155
Hiroshima U. 53 95 148 51
Tsukuba U. 28 62 79 66
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6
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Invention disclosure form 発明等の届出書Little oversight over who are named as co-inventors by the PI and main industry scientist
Current situation: 10 Jan. 2012R Kneller UK Embassy
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Current situation: Collaborative research is the dominant
h i f t h l t f d mechanism of technology transfer and TLOs play a secondary rolep y y
• ~50% of all patented university inventions are attributed to joint research
• ~75% of all patented university inventions actually transferred to industry are joint research inventions on which university and company apply jointly for patents
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Under Japanese Patent Law §73:Co ownership of university patents Co-ownership of university patents gives partner company exclusive g p p ycontrol, with no royalty or d l t bli tidevelopment obligations
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Collaborative research represents arelationship-based system of tech relationship based system of tech transfer (professor ↔ company)
• Company provides funding, commercialization outlet, & sometimes researchers
• Company obtains exclusive control over IP• TLOs, negotiations over royalties, and negotiations
over development obligations, intrude very littlei h id bl l i• Companies have considerable leeway to restrict
publications (see U Tokyo regulations in extra slides at end of file)file)
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Prevalence of industry co-ownership of university patents (compiled by R Kneller)
A. Approx. no. B. A (i.e. univ C. % of A D. % of C US patents
issued 2008/4‐2009/3 where
patents) per $1 billion univ R&D spend
where at least one co‐
assignee is a
where co‐assignee is a foreign co
one assignee is a university in this country
private co.
Canada 92 11 10 50
Germany 38 4 16 33
125 6 61 0Japan125 6 61 0
UK 70 9 6 100
2250 48 3 0USA 2250 48 3 0
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All the Japanese companies in the above sample were large companiesabove sample were large companies
MEXT data also show dominance of large companies among co-applicants of joint patents p g pp j pwith major universities
Keio U: > 80% in both 2004 & 20054 5Osaka U: ~78% “U Tokyo: 75% in 2004 86% in 2005U Tokyo: 75% in 2004, 86% in 2005
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Benefits of Japan’s system of “free pass through of IP to joint free pass-through of IP to joint research partner” p
• Low cost direct mechanism of technology • Low cost, direct mechanism of technology transfer▫ often the only practical mechanismoften the only practical mechanism
• Probably facilitates relatively close interactions between university & industry researchers.between university & industry researchers.▫ Mutual benefits
Drawbacks: 10 Jan. 2012R Kneller UK Embassy
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Drawbacks:• Huge leveraging and exclusive appropriation of
taxpayer funded discoveries by big companies taxpayer funded discoveries by big companies without development obligations or incentives▫ Joint research < 3% of total national university R&D Joint research < 3% of total national university R&D
funding (OECD)▫ Mean joint research funding/yr/project = $25,000
($ i k )($50,000 in U Tokyo) In US, joint research partner often pays >>$100,000 + royalties
on sales for an exclusive license. In UK, joint research usually pays full economic cost (entire cost
including salaries) for an exclusive license. (Lambert Agreements)g )
• University discoveries “sitting on the shelf” or only partially exploited by big companies is probably a major problem.
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Fig. 5: Sources of national university R&D funding(excluding tuition, hospital patient charges, & support for salaries & infrastructure)
Prevalence of industry co-ownership of university patents (compiled by R Kneller)
A. Approx. no. B. A (i.e. univ C. % of A D. % of C US patents
issued 2008/4‐2009/3 where
patents) per $1 billion univ R&D spend
where at least one co‐
assignee is a
where co‐assignee is a foreign co
one assignee is a university in this country
private co.
Canada 92 11 10 50
Germany 38 4 16 33
125 6 61 0Japan125 6 61 0
UK 70 9 6 100
2250 48 3 0USA 2250 48 3 0
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Recall: Under Japanese patent law,co ownership of university patents co-ownership of university patents gives partner companies exclusive g p pcontrol, with no royalty or d l t bli tidevelopment obligations
• But Japan not unique (USA is the exception) • Nevertheless, Japanese co-ownership rates much p p
higher than Germany, UK or Canada
Reasons 10 Jan. 2012R Kneller UK Embassy
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Reasonsfor outside discussion
Implicationsptechnology lock up, limited opportunities for startups, limitations on academic communication
Recommendations remaining slides
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General principleN h ld h l i i h • No company should have exclusive rights to a university invention unless
) i i d l i h i ia) It proves it is developing the invention,b) it pays substantial annual royalties, orc) It pays the full economic cost (FEC) of the
research (Britain’s Lambert Agreements are a d d l)good model)
• Most exclusive licenses should be limited to a ifi fi ld f specific field of use.
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If a company wants to own an invention• It must pay the full economic cost (see Lambert • It must pay the full economic cost (see Lambert
Agreements)▫ All attributable salaries & other personnel costs▫ All attributable salaries & other personnel costs,▫ Building and infrastructure costs,▫ Etc ▫ Etc.
• Otherwise, universities become taxpayer-subsidized contract research labssubsidized contract research labs.▫ Which makes neither economic nor academic
• Reforms on previous two slides should increase • Reforms on previous two slides should increase TLO revenue substantially
• The TLO should be linked to the office handling • The TLO should be linked to the office handling contract and joint research with companies, and the TLO should receive part of the overhead (間the TLO should receive part of the overhead (間接経費) charged to every such contract.
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TLO sustainability (continued)• For TLOs with little money, consider the
“California Institute of Technology” model gy▫ 2 or 3 person office applies for patent but will pay
application costs for only 1 year. ▫ Marketing is the responsibility of the inventor
• Regulations of some universities => It the guniversity does not decide within 1 month that it will apply a patent, the ownership right remains pp y p , p gwith the inventor. ▫ Some UK & US TLOs should adopt this policy.p p y
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ReferencesReferences*Kneller, Robert. 2010. Importance of new companies for drug
discovery: origins of a decade of new drugs. Nature Reviews Drug Discovery 9 (November) 867-882.
*Kneller RW 2010, ‘The changing governance of Japanese public science’, In R. Whitley, J. Gläser & L. Engwall (eds), Reconfiguring Knowledge Production: Changing Authority Relations in the Sciences and Their Consequences for Intellectual Innovation,
f d f d (i bli i h d l d f l )Oxford: Oxford U. Press (in press, publication scheduled for July).**Kneller, RW. 2007. Bridging Islands: Venture Companies and the
Future of Japanese and American Industry. Oxford U. Press.
*available via www.kneller.asia** chapter on industry-university cooperation available via p y y p
www.kneller.asia
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Thank you for yourThank you for yourconsideration and