“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
IP POLICIES AND ISSUES IN
ITALIAN UNIVERSITIES
ALBERT LONG HALL
Thursday, May 17, 2012
Mr. Alberto Camusso - Attorney-at-Law / Partner
Jacobacci & Associati, Turin, Italy
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
Summary
An Overview
1.Legal and regulatory framework
2.University spin-offs
3.Patenting practices and licensing issues
4.A look ahead & conclusions
IP Polices and Issues in Italian Universities
Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
1. Legal and regulatory framework
The University system
State
Universities
Non-State Universities
 Different funding and financing
 Same legal framework
 Different governance
Public research entities/centres (CNR)
IP Polices and Issues in Italian Universities
Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
1.
Legal and regulatory framework
General legal framework

State law → framework for university establishment and public
funding

Governance through autonomy → By-laws/statutes
IP legal framework

Law n. 297/1999 and subsequent decrees on spin-offs

Law n. 383/2001 → Section 65 of the Code of Industrial
Property on IP ownership
IP Polices and Issues in Italian Universities
Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
1.
Legal and regulatory framework
Researchers …

Researchers employed by universities / R&D centres

Independent researchers
… and research

Institutional / Developed within the scope of activities of
the university

Developed within specific projects financed by private
entities
IP Polices and Issues in Italian Universities
Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
1.
Legal and regulatory framework
Ownership and entitlement
for institutional R&D (Sec. 65 CIP)

The researcher is the exclusive owner of patent rights

Universities can establish the maximum amount of royalties due,
provided that researcher gets at least 50% of revenues (70-50%)

If the invention is not exploited within 5 years, the university
gets a free, non-exclusive, right to exploit the invention
IP Polices and Issues in Italian Universities
Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
1.
Legal and regulatory framework
Ownership and entitlement
for institutional R&D (Sec. 65 CIP)

Non-employed researchers are normally treated as employed
researchers, through university regulations

Patent rights belong to the university, if expressly agreed pass
on to commissioning private entity

Ownership and entitlement rights under Sec. 64 CIP (for private
companies) may apply
IP Polices and Issues in Italian Universities
Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
2. University spin-offs

Entity established for the industrial/economic exploitation
of the R&D results (“companies which evolve from universities
through commercialization of IP and transfer of technology
developed within academic institutions”)

Mixed public/private funding

University personnel/students/professors involved or employed

Governance rules bound to achieve institutional goals,
ie providing a strategic link between universities and businesses
and maximising the value of IP
IP Polices and Issues in Italian Universities
Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
2.
University spin-offs
University of Milan
Spin-off experience*

24 spin-off companies

13 out of 21 participated
by industrial partners
or investors

over 60% achieving
positive results
* Source: University of Milan
IP Polices and Issues in Italian Universities
Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
2.
University spin-offs
IP results of Milan University

180 new inventions (constant
growth since 1992)

exclusive ownership of 66%
of the patent portfolio

co-ownership with universities
and foreign research centres

transfer of 25% of patents
(license/assignment agreements)
IP Polices and Issues in Italian Universities
Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
3. Patenting practices and licensing

Patenting strategies are affected by budget
(overall University patent expenses in 2010: 2,1 million Euro*)

Mainly Italian applications (over 80%), then EP (9%)
and PCTs (US and Japan, 9%)*

Managing and exploiting IP → Spin-offs acting
as either IP holders or IP (master) licensees
* Source: NetVal
IP Polices and Issues in Italian Universities
Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
3.
Patenting practices and licensing
Hence …

University spin-offs MUST licence, how?

Non-exclusive grants, at least for “umbrella” patents
(ie nanotechnology)

Limited duration (3 – 7 yrs)

Minimum royalties /lump sum, regardless of patent file history

Options for new products, extensions, divisional applications

Standing for legal actions on licensee
IP Polices and Issues in Italian Universities
Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
4. A look ahead & conclusions

Patent strategies: quality v. quantity?
- 274 applications filed in 2010 (around 13,000 IT/4,000
EP/2,600 PCT applications)
- 320 patents granted in 2010
- over 2,600 patents in universities’ portfolio

Young patents being licensed, no mature technology → higher
risks and less revenues in the short run

Technology transfer is a resource for Italian system: still under
construction (first office for TT founded in 1999), yet over 170%
increase since 2004
IP Polices and Issues in Italian Universities
Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
4.
A look ahead & conclusions

Sec. 65 CIP called for reform – is ownership key
to successful exploitation?

Still poor resources to finance public reasearch

Potential for co-ownership and co-financed projects → careful
legal handling

High potential for private-funded R & D activities

Major increase of IP awareness and culture in the last 10 years
IP Polices and Issues in Italian Universities
Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy
“IP Management @ Universities” Istanbul, May 16 to 18, 2012 • Albert Long Hall, BOGAZICI UNIVERSITY
Thank you
Alberto Camusso
Partner
Jacobacci & Associati
[email protected]
www.jacobacci-law.com
Corso Emilia, 8
10152 Torino - ITALY
IP Polices and Issues in Italian Universities
Mr. Alberto Camusso – Attorney-at-Law – Partner - Jacobacci & Associati, Turin, Italy