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patents

Lessons in dialog and partnership

Study assesses strategies for integration between companies and universities in the USA and Europe

The hunger for innovation in an increasingly competitive market leads countries and companies to inject billionaire sums into research and development (R&D) to obtain cutting edge products and processes that have intelligence as their basic ingredient. In this world that is driven by science and business, the academic-business alliance is building up stamina and musculature. The dialog – known to be difficult and cautious – between these two speakers is becoming more in tune, thanks to the drafting of new institutional arrangements and to the adoption of laws related to university patents.

This is what is shown by Cláudia Inês Chamas, the coordinator of the Nucleus of Studies and Strategic Planning, of the Oswaldo Cruz Institute, in her thesis for a doctorate, Protection and Economic Use of Intellectual Property in Universities and Research Institutions. In this work, she describes and delves into the strategies that are focused on the application of the fruits of research carried out with public funds and implanted in such countries as the United States, France, the United Kingdom, Spain and Germany.

The author’s intention is to offer a panorama that prompts reflections and inspires the players in the innovation process in Brazil, where the academic-business partnership is still timid, and only 30% of the universities and 30% of the research institutions can show formal policies of protection and marketing of intellectual property.

Ties of cooperation
In her work, Cláudia Chamas highlights the range of the linkage between academia and business – such as cooperative research centers, joint ventures for research and production, R&D consortiums and incubators -, which have yielded excellent results, particularly in niches in the vanguard of technology. It was these ties, and star companies like Apple Computer, Cisco Systems and Intel, amongst others, huddled together in Silicon Valley and along Route 128 that detonated the boom of the electronic, computing and communications industries in the United States, from the 70’s on.

Europe too has embarked on this cooperative wave, which is almost an imposition in fields like pharmaceuticals and biotechnology, due to the risks and to the heavy investments associated with innovation. Roche, for example, the giant of the medicine sector, headquartered in Switzerland, invests between 15% and 20% of its annual resources for R&D in the purchase of research from institutes universities and small biotechnology companies with which it has agreements.

Academic-business interaction brings evident advantages for both the partners. The universities can immerse themselves in the companies’ routine, getting to know their problems and receiving financial resources that are available for research, if need be. The companies, in turn, have access to privileged “windows” of knowledge, to scientific and technological sources of information, and to highly qualified professionals at the universities.

Balance
This “marriage”, though, is not unanimously accepted by the academic sector. Amongst other reasons, there is the fear of transforming today’s university, centered on teaching and on uncommitted research, into an institution for “results or services”, contaminated by the vision of profit. Differences like this, though, can and must be worked out. “Each university has to set its objectives and limits, find its balancing point, and define its policy on intellectual property”, Cláudia Chamas argues.

One of the prickly questions in addressing the cooperative projects refers to the freedom of making knowledge public, a dogma indeed amongst scientists, versus the confidentiality required by the companies in producing and launching the products in which they have invested heavily. To face up to this dilemma, the legislation of several countries, amongst which Brazilian legislation, adopts the so-called “period of grace”, which directly benefits the inventors from the academic area, by giving them a period of from six to 12 months (depending on the country) to lodge the patent later.

In the period of time foreseen, unveiling the invention – in the form of articles, theses, conferences, the Internet, amongst other means – does not constitute a breakthrough in novelty, one of the fundamental requirements for patenting. It is important to remember, though, that this “grace” is temporary and not totally guaranteed. Furthermore, this protection does not happen, if there is a need for registration in a country where this benefit is not in force.

Abroad, the evolution of the academic-business partnership has taken on a more precise and professional outline, now being governed by contracts. The patent legislation, which in many cases has been discussed for over 50 years, underwent some decisive changes in the United States in the 80s, triggered in particular by the development of biotechnology and biomedical research, the commercial applications for which have reached astronomical figures.

The promulgation of the Bayh-Dole act in the United States made it possible for universities and small companies to obtain patents on inventions developed with federal government funds. Accordingly, the former practice of the government or public domain retaining ownership (also in force in other countries, like Germany) was replaced by a pragmatic vision. The focus has moved towards the market, aiming such aspects as improved productivity, jobs creation, and giving priority to national companies in the “purchase” of inventions.

Professionals in innovation
In the wake of these changes – which also involves other aspects connected with the ways of royalties distribution and invention ownership, amongst others -, academic institutions, government laboratories and research centers have been perfecting the policies for their activities, implemented by departments called generically TTOs (Technology Transfer Offices.)

Spread today all over the USA and several European countries, these offices – which may be located inside or outside the institutions – gather together teams of professionals made up of intellectual property agents (trained in areas like engineering and physics), with a good knowledge of international law and agreements, specialists in marketing and administrative support personnel. Most of the institutions have only one TTO to serve all their clientele, like the office of the National Institute of Health and Medical Research, in France.

Aiming at greater agility in their interaction with the researchers, the University of Michigan adopted a scheme made up of three units, a central one and two satellites. The University of Wisconsin, in turn, established a partnership with a foundation to settle issues connected with intellectual property. In 1988, in the United Kingdom, Oxford University created Isis Innovation, a company to exploit the fruits of the research carried out in-house.

Besides looking for potential licensees, Isis encourages the creation of individual companies through venture capital or development funds. As it can be seen, they are very different activity schemes, whose formats should be analyzed carefully before they are implemented. One must always keep in mind that one of the basic ingredients for the success of the recipe lies in the strong commitment of the higher hierarchical levels in the institutions.

Impacts
The impact of these legal and institutional changes can be calculated in the USA in particular, where the cooperation between the academic world and companies is deeper rooted. Before 1980, some 250 patents used to be granted in the country to universities as a total. According to the United States Patent and Trademark Office (USPTO), in 1984, 551 university patents were granted; in 1989, 1,228; in 1994, 1,780; and in 1997, 2,436, which demonstrates constant and considerable growth. (For the purposes of comparison, it should be remembered that patents requests in the names of Brazilian universities 335 requests were deposited with the National Institute of Industrial Property – INPI, between 1990 and 1999).

In parallel, there was an expansion in the capacity of the American universities for commercialization: in 1990, there were around 200 of them involved with technology transfer programs, eight times more than the number recorded in 1980. Another example of the legislation advances have caused in the American academic circles is the Massachusetts Institute of Technology (MIT): about US$ 1 billion has been invested by the industrial sector in the development and marketing of licenses and patents and of technology produced at the institution. Over 200,000 direct jobs were created as a direct result of the use of these licenses.

As to the United Kingdom, the reduction of the legal barriers brought about the appearance of over 60 offices for industrial intermediation. The intense relationship between the British institutions and their American counterparts and the reduction of government investments aimed at research drove – according to the experts – the country to take a more enterprising attitude, which became one of the most open ones in Europe for business hiring of academic research. British partnerships also bore fruit in other kinds of arrangements.

In 1998, a strategic alliance between Mitsubishi Chemicals and the Imperial College of London resulted in substantial financial support for the Genetic Therapies Centre, which is active in thechemical, biological and medical areas. In the same year, Unilever began to invest about 13 million pounds to set up a research group dedicated to molecular information technology at Cambridge University.

In France, the French Agency for Innovation (Anvar) – which has 24 regional offices and five abroad – applied, between 1981 and 1999, around 3.13 billion Euros in over 22,000 companies and laboratories, supporting more than 34,000 projects for technological innovation. The results of cooperative projects have also shown themselves to be very promising in countries like Germany and Spain. In the latter, with the promulgation of the new law on industrial property in 1986, the number of university patents leapt from 27 to 306, in 1994.

Brazilian situation
Since the 90’s, profound changes have been marking the Brazilian scenario in the patents area, with particular mention of the revision of the Industrial Property Code, which resulted in Law 9279, of 1996. Cláudia Chamas notes, however, that the country “is still very backward as far as the protection and economic exploitation of industrial property in the academic world and in the small and medium companies”.

The long period of turbulence that the Brazilian economy has lived through in recent years has not encouraged the generation of innovation. Brazil’s opening up to imports, in turn, has not brought the expected technological renewal, and investments by companies generally in research and development have been sparse. Today, in the light of a stable economic scene in which the growing scientific production is out of step with the limited production of technology, the structuring and preparation of the academic area to act in the field of patenting inventions has become an imposition. “In our research, we observed institutions that have difficulties in decision making. For example, they build up huge portfolios of patents without seeking to exploit them, paying fees for the maintenance of the requests, which are very high abroad, without achieving a return”, she says.

Only 45% of the universities and 30% of the research institutions (the majority in the south and southeast of the country) that formed the sample for the thesis have TTOs in their structures. To expand this spectrum, there is a need, first of all, for action to taken in bringing awareness and information, and afterwards for overall planning to be done, with a definition of targets and strategies, and the creation of institutional arrangements that respect the characteristics of each region.

In spite of all the deficiencies – which also include the lack of a bibliographical collection, of finance and of qualified personnel -, Cláudia Chamas declares herself an optimist. “In the last ten years, we have made fantastic progress in terms of debates and legislation. The discourse and the practice of the government are changing. But still more is needed: the integration of scientific development with innovation and industry, generating income and employment”, she concludes.

At the service of technological progress

The basic requirements for patenting an invention are three: novelty, inventive activity and industrial application. What is regarded as novel (that is, not comprised by the state of the technique) is an invention or utility model not made public until the date the patent request is deposited. The legislation also requires a clear and sufficient description of the object, which should be reproducible by a technician in the matter. This is one of the foundations of the patents system: by revealing to society the content of his invention, the inventor has, as a reward, a transferable and temporary title, containing protection. A practice that allies individual interests with those of the collective body, promoting technical and economic progress.

In biotechnology patent requests that involve new biological materials, which cannot be described sufficiently clearly and completely, there also has to be a deposit of the microorganism with an internationally recognized authority. The economic exploitation of the patent may take place by licensing, the assignment or sale of rights, the acquisition or creation of a company to carry out the technological development of the invention, amongst other means.

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