SAN DIEGO ¿ Governments in Europe and Japan are making moves to encourage the commercialization of publicly funded research, opening up new opportunities for U.S. biotechnology companies to collaborate with universities and research institutes abroad.
However, there remain cultural, regulatory and legal obstacles in the way of international technology transfer. Companies must respect the status of universities and be prepared to make contracts under the applicable national, not U.S., law.
¿This is a very timely point to talk about technology transfer from academe to industry in Japan,¿ Mitsutaka Iwasaki, patent attorney at Aoyama & Partners, told delegates at the BIO 2001 conference Monday. ¿The Japanese government is just starting to encourage it, and has positioned technology transfer as a part of the restructuring of industry aimed at solving the [Japanese] economic crisis.¿
This includes allowing patents to be assigned to outside companies that sponsor research in public research institutes and universities, and allowing academics to accept posts in private industry while maintaining their academic status, Iwasaki said. The moves are reinforcing the establishment in 1998 of Technology Licensing Organizations with a brief to identify technology and expedite its transfer, he added.
¿The Japanese government is pushing aggressively for technology transfer. They are on the right track, but the process still needs to be improved,¿ Iwasaki noted.
Similarly, in Germany, intellectual property currently belongs to individual researchers, meaning to date universities have had little incentive to set up technology transfer offices, said Jorn Erselius, patent and license manager of Garching Innovation GmbH, the technology transfer arm of the Max Planck Institutes. Only the largest universities have technology transfer arms, although there are offices in some regions, including Bavaria, that aim to support technology transfer from all universities in the area.
¿However, the law relating to the inventions of employees will change this year, giving ownership to universities, and so the situation becomes similar to U.S. universities,¿ he said.
Ceasar Anquillare, president and CEO of Winchester Capital in London, an adviser on technology transfer deals, said universities in Europe are facing funding restraints. This is making them increasingly anxious to extract value from their intellectual property. As a result, ¿there is a considerable opportunity for European IP to flow into the U.S.¿
However, many universities have very small technology transfer operations and staff may not be very skilled, he said. This makes it very difficult for companies that want to license technology to replicate their procedures from one university to another.
Universities should work together, to consolidate their IP on multinational databases, providing a single information source for licensees and reducing the chance for infringement, Anquillare said.
If they are to extract more value from their research, universities and research institutes in Europe need to move beyond licensing intellectual property and forgetting it, developing new models from commercializing technology, said Cengiz Tarhan, chief operating officer of Freemedic plc, the technology transfer arm of the Royal Free Hospital in London.
¿In the UK, it is traditional to assign or license IP,¿ Tarhan said. ¿I prefer to go down different routes. We proactively go and visit scientists, identify commercial opportunities, and then seek preferred partners.¿
Once a technology is spun out, he said Freemedic provides support to the partner ¿and there is an ongoing research collaboration to keep the link alive.¿