Challenges of Inter-Institutional Agreements on Technology Transfer

 Working session 1  Supporting Technology Commercialization in International Partnerships was the theme of the Working Session organized by UTEN Portugal and the CMU Portugal Program, funded by the Fundação para a Ciência e a Tecnologia, held on October 29, 2013, in conjunction with the XV Latin Ibero-American Conference on Management of Technology (ALTEC), in Porto, Portugal. Tara Branstad, associate director of Carnegie Mellon University's Center for Technology Transfer and Enterprise Creation (CTTEC), and Jorge Figueira, director of the Technology Transfer Office of the Universidade de Coimbra, shared their perceptions and experiences in managing Intellectual Property in international contexts.

José Manuel Mendonça, the scientific director of UTEN Portugal, was very pleased by the choice of topic, which, he strongly believes, “is fully aligned with UTEN Portugal and ALTEC.” João Claro, national director of the CMU Portugal Program, welcomed the speakers and the participants, and also expressed his satisfaction with the organization of the session, due to the fact that “with the globalization of Science, international partnerships for Research, Development, and Innovation have become increasingly common, presenting new and significant challenges to the management of Intellectual Property (IP).”

Tara Branstad’s presentation focused on inter-institutional partnerships and joint patenting, and how they may benefit from inter-institutional agreements (IIAs), to leverage areas of expertise and resources across different institutions. In her opinion, it is important “to have inter-institutional agreements when multiple parties hold rights to an invention,” adding that “only through mutual agreement, rights can be transferred exclusively for commercial development, and IIAs allow this to happen.”

About joint patenting, Tara Branstad considers that “the biggest challenge is aligning the interests of the involved parties.” For example, “in dealing with joint IP between universities and industry, it is important for the university to ensure its rights to continue its research efforts unencumbered,” she explained. On the other hand, “in managing joint IP between universities, it is important that the universities communicate with each other early and develop a coherent patent and commercialization strategy, where one of the institutions serves as the lead party.” The presentation concluded with a note on how the joint program with multiple Portuguese universities and CMU is unique in the CMU system. For this reason, she feels that it might be beneficial to consider “creating a template or a master IIA.”  Tara Branstad 2

The strong collaboration between CTTEC and the Portuguese Technology Transfer Offices (TTOs), led CMU to hire Sofia Vairinho, a member of the TTO of the Universidade do Algarve. Since January 2013, Sofia Vairinho has been living and working in Pittsburgh, as part of CTTEC. Tara Branstad explained that “as research becomes increasingly international and collaborative, we have found it helpful to have Sofia's expertise in international IP law, and her knowledge of different cultures and languages; however, her biggest contribution is her commitment to work, and her creativity and desire to learn.”

Jorge Figueira spoke about knowledge transfer at the Universidade de Coimbra (UC), and his experience in managing IP co-ownership with universities in Canada, Brazil, Argentina, and Spain, among other countries. Jorge Figueira reinforced the message, also expressed by Tara Branstad, that co-ownership is “an opportunity to connect and learn from other TTOs, a potential open door for other markets and contacts, and an important open innovation indicator.” Two additional aspects that are important for establishing an IIA agreement with other universities were acknowledged by Jorge Figueira: the importance of “understanding the legal, cultural, and decision making differences” between countries; and the advantages of “openly, trying to assess which institution is in a better position to lead the commercialization efforts.”

In the past ten years, Jorge Figueira was pleased to say, the Universidade de Coimbra was able to “improve its Invention Disclosure Form, to create a process to manage all active IP agreement collaborations, to improve its screening process with a very objective and factual procedure, and to establish contacts with different technological brokers.”

Working session 3  Through its international experience, the TTO also “learned that there are some countries in which the decision making process can halt the IP valorization efforts, and got a deeper knowledge about when to drop out.” All this work has strengthened both technology pull and technology push efforts within the knowledge transfer activities of the Universidade de Coimbra. Jorge Figueira closed his presentation by challenging Portuguese TTO – “Can we only do this with foreign universities?” – and encouraging them to “start a deeper collaboration between Portuguese TTOs that have co-owned IP.”

The two presentations were followed by a moment of discussion with the participants. One of the salient points of the discussion was that “universities need to have a strategy for technology transfer for TTOs to succeed."

João Claro presented the new Entrepreneurship-in-Residence initiative for early stage startups that the CMU Portugal Program is outlining. The initiative began as a pilot program in 2012, and it seeks to support very early stage entrepreneurial teams through an immersion in CMU’s dynamic entrepreneurial ecosystem, with the support of Portuguese entrepreneurial ecosystems. The initiative will assist in addressing the “human and social capital gaps” that are often found in “early stage high-tech new ventures, in particular academic spin-offs, led by less experienced entrepreneurs.” During the immersion period, the entrepreneurial team will follow three inter-connected streams of work: networking and business development, internship with an accelerator; and a training program.

João Claro explained that one of the key goals for the initiative is to help the entrepreneurial teams develop managerial competences that are specific and critical to early-stage high-tech ventures. Some of the details regarding selection process, progress evaluation, and funding, are still under discussion, but the national director of the CMU Portugal Program believes that it will be possible to launch this initiative in the first semester of 2014.

November 2013