apresentacao_patlib_2006

Pedro Mota Nuno Silva

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Janus – God of Beginnings

Researchers: prime targets for IP awareness

Pedro Mota – Madeira Tecnopólo

Nuno Silva – Instituto Pedro Nunes

Abstract

The University of Madeira and the University of Coimbra both have developed, in recent years,

strategies for promoting applications for patent protection within the universities. These are

supported by industrial property (IP) policies, marketing materials and activities, intellectual property

policies, staff and procedures dedicated to that effect.

The paper presents a comparison of both strategies, objectives and results, explained through the

analysis of the different contexts and publics targeted.

The public segments at both Universities are categorized and compared in regard to size, education

level (undergraduate, graduate, masters, PhDs) and education areas (science, engineering,

medicine and pharmacy, humanities).

An overall strategy and marketing objectives for each target segment are presented, illustrated with

some examples of marketing activities carried out (IP tool Kit, IP brochures, workshops and

seminars, website development, questionnaires and structured interviews).

The different approaches to IP policy drafting and the different procedures for identification and

selection of patentable inventions are explained in detail.

The profile and responsibilities of the staff dedicated to design and take strategy into action are

compared.


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Janus is the Roman god of gates and doors, beginnings and endings, and hence represented with a double-faced head, each looking in opposite directions. He was worshipped at the beginning of the harvest time, planting, marriage, birth, and other types of beginnings (…). Janus also represents the transition between primitive life and civilization (…) and the growing-up of young people

By Micha F. Lindmans, Encyclopedia Mythica™

I. Technology Transfer Roles: implications for communication strategies

This paper first discusses briefly the different roles to be performed by a Technology Transfer

Organization (TTO) in order to achieve its mission and the key implications for the communication

strategies to be adopted.

A TTO is, at first, an Interface, that is, an organization that is in the boundary of another (typically,

but not limited to, a University) or between two others (University and Company). Thus, its mission

must be aligned with that of both the parties it is trying to bring together. Both means: not only the

party that often controls the management of the TTO, that is, The University but also the

companies.

This is not always apparent from many TTO’s mission statements, operations or communication

strategies. In fact, often we observe unidirectional communication efforts that have inherent a

traditional model that can be described as:

1. We have something that we find to be good for companies or for a given company

2. We must construct a strong case (message) for it

3. We must deliver that message to the companies

4. Companies will acknowledge and understand the message and act upon it.

5. If companies don’t react there must be something wrong with our message – make a

stronger case and deliver again; or something wrong with the delivery – deliver again, try

other means; or there is something wrong with the companies – find other companies that

are «more intelligent».

This model will fail because of a number of wrong assumptions:

http://www.pantheon.org/


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1. We are able to define on our own what’s good for companies or for a given company

2. We are able to construct on our own a better message because we know best and in all

detail what’s to be communicated

3. Once the message is properly constructed finding the way to deliver it is the next issue

4. Companies are ready to listen and respond

Assumption number 4 is the most faulted one. People at companies, and in particular SMEs, are

not ready to respond. On the contrary, they are ready to block any messages that don’t, at first,

establish relevance to their daily work.

Messages will only be processed if they are in tune with a certain category that already exists in the

person’s mind and can be properly positioned in that category in relation to other messages

categorized in the same way.

This is what Marketing authors Al Ries and Jack Trout define as “Positioning”. In order to

communicate we must first understand how we are perceived by the person we want to

communicate with and then act according to his or her beliefs, even if we find them to be incorrect

To gain an understanding of those perceptions a TTO must have as a core part of its

communication efforts certain ways to capture the beliefs of the companies, as those of the

researchers at the University.

In some cases this is done by relinquishing some power over the activities of the TTO, allowing

companies to seat on the board, on steering committees, etc.

The case of Instituto Pedro Nunes (IPN), Technology Transfer Office but also Applied Research

Institute, Advanced Training School and Business Incubator, serving several Public Resarch

Organisations (PRO) illustrates this point. IPN is a not for-profit association including both

companies and PROs that are equally represented on the Board.

Though, this paper will not discuss those strategies adequate for proper bi-directional

communication management and this first section is meant only to provide a setting that should be

present throughout the remaining sections.

Besides its position as interface, other roles performed by a TTO should also be mentioned.

Most TTOs will provide support for identification of research results, assess the patentability of

research results, provide to a certain extent support for protection through patents and assist in

licensing efforts or creation of spin-off companies.

In many cases TTOs will also be involved in drafting, reviewing or negotiating contracts for any

degree of joint research, with special consideration for Intellectual Property arrangements.


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II. Researchers: prime target for IP awareness

Considering the main roles performed by a TTO it stands out that a key element to its success is

the way it is perceived by the researchers at the PRO it is serving. Still we must keep in mind the

interface quality of the TTO. What that means is that although identified as prime target for IP

awareness raising schemes, researchers are not to be considered on a stand alone basis. In an

interface position, understanding cross-influences between communication targets is essential to

the development of a proper communication strategy. It should, thus, be clear that this and the

following sections represent a merely academic isolation of one part of an overall communication

strategy for descriptive and analytical purposes only.

Researchers must be aware of a number of issues relating to IP in order to facilitate or at least not t

imperil a TTOs work. First, the issues regarding publication and it’s implications to novelty. Also, hot

to do patent searches, and assess the state of the art. The need for an inventive step. Some basic

knowledge of the protection provided by patents, the costs and timeframes. The patent process and

interaction with patent attorneys and patent examiners. The need for IP provisions in research

contracts and labour contracts. The implications of involving students with no employment contract

in the research work. NDAs and MTAs and possible implications on freedom of research or IP

ownership.

Without this basic understanding the mission of the TTO will probably be impossible to perform, for

lack of protected research results or researchers willing to participate in the technology transfer

process.


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III. Communication targets compared

The following table offers a summary of the most relevant indicators that characterize the context in

which researchers at the University of Coimbra and the University of Madeira operate.

University of Coimbra University of Madeira

Founded in 1290 Founded in 1998

Recent and large Science Faculty Mix of Humanities and Sciences

20.000 Students 2.500 Students

4 Sites 1 site

TTO – Instituto Pedro Nunes TTO – Madeira Tecnopólo

Table 1

The first difference relates to the age of the institutions. This indicates strong differences in culture

and culture stability that must be taken into consideration when formulating a communication

strategy. Mainly, the researchers at the University of Coimbra can be expected to be less

responsive or even resistant to change.

The Science Faculty at Coimbra accounts for almost 50 % of researchers and students, while in

Madeira no dominant Faculty or science discipline prevails in such obvious way.

The differences in number of students, and consequently, number of researchers are also very

important to define a communication strategy, in particular for consideration of the tools to use.

The concentration of the University of Madeira in one site allows for a physical concentration of

communication efforts that is not possible in Coimbra.

Both Universities have links with TTOs, Science Parks or other institutions conducting technology

transfer on their behalf.


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Linked with the University of Coimbra we find, among others, Instituto Pedro Nunes.

Linked with the University of Madeira is Madeira Tecnopólo

Relevant differences between the two are illustrated below, as communication with researchers to

raise IP awareness is to be conducted by these institutions.

Instituto Pedro Nunes Madeira Tecnopólo

Tech-based Business Incubator Qualified facilities

Contract and Collaborative R&D Close links with local sectors (ex. Tourism)

CPD and Training Networking events and services for companies

Staff dedicated to IP management Staff dedicated to IP information

Table 2


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IV. Communication objectives compared

Having in mind the different contexts highlighted in the previous section, we now analyze the

communication objectives that were drawn for each institution.


Deal with established culture Establish from scratch a new culture

Focus on Science: Patents Focus also on Copyrights, etc.

Deal first with awareness Start dealing with behaviors

Approaches tailored to 4 different sites One «central» approach

Table 3

It is easily understandable that the comprehension of the main features of the prevailing and very

stable culture and drivers conducting the researchers and their decisions in Coimbra is far more

important than in Madeira, a «young» University with a more «fluid» culture.

In Coimbra patents can be placed as central to the communication strategy, with other forms of IP

following in relevance. In Madeira other forms of IP are equally or more important than patents and

should be dealt with at least in parallel from the start.

The responses to be obtained from the targets, with reference to a known model distinguishing

progressive stages of 1) awareness, 2) attitude and 3) behaviour, relates to the size of the

population, the tools available and the stability of each culture.


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V. Communication tools compared

The tools used at each site are listed below


Establish at High Level a Formal Policy Get «opinion makers» to agree

Train and assist the researchers Offer assistance but also Outsource

«IP Kit» for widespread usage Small group meetings and «couching»

Specific workshops Seminars

Table 4

Setting a formal IP Policy at the highest level (Vote on Approval by the Senate and Administration

and Procedures managed at Rectors office) proved decisive to the results achieved in Coimbra.

This policy was explained, discussed and is enforced. Every year it is evaluated and eventually

revised. It is an important signal to researchers regarding the level or priority at which the

administration places proper IP management.

In Madeira no formal policy was established. The stakeholders are integrated in the management of

IP through consultation and contracts when necessary.

The policy and related procedures alongside with information on IP rights and procedures to obtain

protection and relevant laws and treaties were disseminated in Coimbra through the use of a

designated «IP Kit», designed to be a resource for information but also for daily use and constant

reference by researchers. It also provides a form to disclaim inventions to the TTO.

As a goal, each research group is to have its own IP «specialist» able to detect research results that

are patentable or advise colleagues on IP management.

Contrasting with Madeira, that conducted several Seminars about generic IP issues, in Coimbra

workshops focusing on how IP relates to specific fields of science where used and conducted at the


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relevant sites. For example, a day about IP and health and pharmacy at a research institute linked

with the Faculty of Medicine.

Following is an outline of the several steps that are to be taken at each TTO in order to detect

research results and acquire protection.


Active identification of research results Inquiries about patent protection

Assess patentability and market Information on patent procedures

Assist researchers in Initial patent draft Outsource patent procedures

Outsource draft review and patenting

Table 5

This is further illustrated by a fictional example of the report elaborated by IPN that serves as a

basis for the Rector’s office decision to acquire or not patent protection.


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General Info Reference and Title UC4-2005-P. Sensor for detection of ... In ... Origin Project POCTI/QUI/39593/2001 (FCT) / National Science Foundation Project n.º...

Entities University of Coimbra; Science Faculty (Chemistry Department); MIT (?) Note: No MTAs signed; No collaboration with industry yet

People Julius Cesar ([email protected] - 89565547 - Rua de Trás, 46, 3030 Coimbra) professor; António Nunes Sá ([email protected] - 82566 - Av. Maior, 23, 3030 Coimbra) master student

Invention Abstract and drawings Abstract under 150 words = annex A; drawings according to Portuguese law = Annex B

Key words and classifications sensor; bismuth; catalyst ::::

Searches Online search with inventors (03-04-05); Assisted database search INPI (12-04-05) = Annex E

Search analysis The searches did not identify any documents ofending novelty; Inventive step is apparent.

New elements Use of bismuth catalyst for the detection of ... In ....

Known elements Sensors for the detection of ... In ... Using other elements like .... Available products (see bellow). Methods for the production of ....

Related Software N.a.

Maturity Lab experiments concluded. Needs field tests in collaboration with industry. Estimated time for testing = 1 year; No budget yet.

Disclosures Dates, means, audience, reactions No disclosures yet. Master thesis to be defended June 5 2005

Disclosed information No disclosures yet. Master thesis to be defended June 5 2005 Market Applications Detection of the presence of ... In...

Competition Electronic sensors for the detection of ... In ... (Product XZ in market from company W; Patents US6787999; US6777555, EP5666777) Note: See annex C for details

Complementary inventions Methods for the production of ...

Competitive advantages Online immediate detection of ...; Increased sensitivity

Final Clients Labs working for industry in the detection of .... In...; Companies that produce FG with ... Being sub product

Immediate Clients LTD Corporation; HGF Inc; UTRY GMBH

Relevant countries European Union (European Directive on ...)

Actions Meetings Meetings with inventors (24-03-05; 03-04-05; 12-04-05; 14-04-05)) = Annex D

Budget Portuguese patent (estimated) 2500 € including patent attorney and fees

Description and Claims First draft not yet revised by patent attorney = Annex F Decision Titles and Applicants Portuguese patent application with University of Coimbra as single applicant

Finance University of Coimbra and Science Faculty

Recommendation Apply for portuguese patent. Use priority year to decide on extension.

Inventors Signatures Name and date:

Name and date:

Name and date:

I recognise and accept that this form together with its attachments is an accurate description of the disclosed invention and I agree to fully cooperate with the University of Coimbra under the rulings established by its Intellectual Property Policy Name and date:

Date Completed: 25-03-2005 Name and date:

Date for Decision: 25-05-2005 Name and date:

Table 6


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VI. Communication results compared

The degree to which the objectives of each strategy were achieved is described below.


Policy and procedures observed Decision makers are backing the staff

Increasing number of patents Increasing collaborations

Awareness increasing Behaviors changing

Specific inquiries and tailored responses Increasing generic inquires

Table 7

The impact of the strategies, although not presented here, is also measured in Coimbra by a

questionnaire covering attitudes towards IP, knowledge of IP and IP rights usage.


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VII. Conclusions

The strategies conducted are believed to be adequate to the different contexts in which researchers

operate and also to the resources available.

Both TTOs identify as aspects to improve:

More well defined internal procedures and standards across Europe (Codes of practice);

Better metrics to measure and compare results (Proton Survey);

Stronger focus on entrepreneurship, IP valuation and Business Development;

Integrated Marketing Communications across targets, because the proper management of Tech-

Transfer requires an integrated approach that will not separate the strategies, objectives and tools

used to communicate with researchers from those used to communicate with companies.


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Bibliography

Ries, Al; Trout, Jack, Positioning, the battle for your mind. McGraw-Hill, 2000.

European Commission, The role of universities in the Europe of knowledge, COM (2003) 58 of

05.02.2003.

Proton Europe, Responsible Partnering, 2005 (available at http://www.protoneurope.org).

Proton Europe, Survey Report 2004, 2005 (available at http://www.protoneurope.org).

ICSTI Ireland, National Code of Practice for Managing Intellectual Property from Publicly Funded

Research, 2004 (available from http://www.forfas.ie/icsti/statements/icsti040407/index.html)

European Council of Barcelona, 2002 (available at http://www.cijdelors.pt).

Godinho, Manuel Mira (coord), Estudo sobre a Utilização da Propriedade Industrial em Portugal

[Study on the Use of Industrial Property in Portugal]. Lisbon: INPI, 2003.

Vilela, Telmo, A Patente Universitária e a sua Exploração nas Universidades Ibéricas [University

Patent and its Exploration in Iberian Universities]. Post-Graduate work, University of Santiago de

Compostela, 2003.

http://www.cijdelors.pt/

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