ISSUE TD.01 JAN 2015 Intellectual Proper ty and Technology Transfer ’s newsletter P2 Why IP matters in the knowledge-based economy Impacts of the new QF IP Policy Dr Erik Stenehjem, Executive Director of IPTT Letter from the Executive Director We’re happy to announce that your Intellectual Property and Technology Transfer office is staffed and open for business. Since the announcement of the QF Board’s approval of the IP policy in April, we have received a surprisingly large infusion of new inventions from QF and the branch campuses. We have also been contacted by an unanticipated number of other Qatari entities looking for help in dealing with their IP. We have been asked by Qatar University and the Hamad Medical Corporation to take on the responsibilities for the management and commercialization of their IP. Other research institutions and private petrochemical companies have also sought our advice and assistance. amples that you will read more about below include evaluating all existing QF IP and loading all associated records, disclosures, patent filings and granted patents in our new IP management system. As an inventor or manager, you will be provided access to this system to monitor the progress of your inventions as they move from disclosures to patents to licenses. At present, we have 160 + innovations under management with 86 of them in the patent application stage. If we are to effectively support the growth of a knowledge-based economy for Qatar, we need an efficient and structured way of managing and leveraging knowledge in our R&D activities. We are excited to be able to offer (IAM) Intellectual Asset Management In this first issue of IP Matters, we’ll capabilities to researchers and our share with you examples of what your stakeholders in Qatar. Making knowlIPTT office has been doing. Some ex- edge and intangibles easier to man- age and package into well-structured commercial offerings for local and global actors will improve QF’s commercialization ability and increase the value for licensees and customers. We will also share with you a couple of success stories and descriptions of activities of some of the technologies that we are currently commercializing. At present we are actively marketing 50+ of them and we are in licensing discussions or active negotiations on 10+. In November we conducted our first training program, a full 2-day session, on IP for QF staff with the outstanding help and assistance of QFRD Communications. We had to turn away dozens of interested staff because we underestimated the demand and lacked the facilities to accommodate them all. We are told that there are P3 QF Innovation key performance indicators on the rise Winner IPTT involves inventors and managers in key IP decisions through ‘Q-Meetings’ P4 QF technologies reaching global markets P5 IPTT establishes a list of service offerings for research community P6 IPTT takes first steps towards implementing intellectual asset management for researchers P7 IPTT collaborates with R&D’s Office of Education, Training & Development to deliver IP training as part of the R&D Education Workshop Series. now 40 to 50 staff signed up for the next session and it hasn’t even been announced yet. We are now planning a much larger session for early February and if there is still an unmet need, we will hold more. 1 In knowledge-based economies, it is the stimulus of technological innovation from research rather than the simple accumulation of capital, assumed by older neoclassical models, that explains growth. To illustrate this, and to underscore the role played by intellectual property, let us share with you evidence from economic growth models. Sixty years ago Robert Solow won the Nobel Prize in economics for “discovering” that technology innovation was the essential determinant of economic growth. Thirty years ago, Paul Romer, an American economist and entrepreneur, constructed a formal economic model of an economy to explore the processes and factors by which growth arose from technology innovation. That growth, according to Romer, is driven by the accumulation of new innovations that lead to enhanced efficiency in goods that make goods. Key to this is the characteristics of the new innovations. According to Romer, for the growth to take place the technological innovation behind the new goods must have the unique properties of being partly excludable and non-rivalrous. These are precisely the characteristics imposed on all new innovations by patents. Patents permit new innovations to be partly excludable from use by others thus creating a property right. This property right in the innovation makes it possible for the inventor or owner to earn pure economic rents (i.e., profits) on its sale and use which contributes, through the market place, to the growth of a nation’s wealth and welfare. The ability to generate wealth further stimulates research leading to more innovation. This is the virtuous cycle that leads to innovations begetting more innovation which leads to further increases in productivity, output and economic growth. It is Qatar’s vision to build a knowledge-based economy. As new patented inventions evolve from research and raise productivity in knowledge-based economies, research is expanded and still more goods and services are produced. Identifying, protecting and marketing Qatar’s inventions is essential in bringing about its knowledge-based economy. Qatar’s IP policy was tailored to maximize the accumulation and utilization of the new inventions, to put them to work in the broader economy and to grow an economy based on technological innovation. Impacts of the new QF IP Policy In April of 2014, the QF board adopted a new QF IP policy that promotes greater QF ownership of IP from R&D investments and adopts a centralized IP management approach. The Policy is having success, and cultures of IP asset creation and protection are now being adopted throughout QF. policy’s centralized IP management approach is ensuring uniformity, professionalism and impact. Now, IPTT is managing over 160 innovations, 86 patents applications and tracking over 20 QF innovation and commercialization metrics. In addition, IPTT is actively marketing over 50 inventions, with over 10 IPs in active negotiations for licenses to QF now owns IP in all new QNRF commercial businesses. NPRP grants, research collaborations and renewing branch cam- The impact of the policy is also pus contracts. Such ownership gaining attention outside of QF, as 2 positions are key to ensuring the Qatari organizations have requestdevelopment of a valuable pipeline ed that IPTT manages their intellecof IP for future investments, par- tual property and several others are ticularly in Qatar’s research grand establishing IP management prochallenge areas. In addition, the cesses based on IPTT’s model. What we pay for, we own. Ownership of IP rights is critical to building a knowledge-based economy. IP revenues are shared generously with inventors. QF appreciates and rewards the inventive genius of its staff. IPTT assistance is available throughout the research process to help identify partners, customers and market strategies. 2 QF Innovation key performance indicators on the rise Building a strong intellectual property portfolio is key for attracting leading researchers, commercial partners and business ventures in Qatar. IPTT’s IP Management team tracks innovations throughout the R&D life cycle, from creation to market. With the establishment of a central IP office, QF is now able to maintain key statistics, such as invention disclosures submitted, patents filed and issued, licenses granted and products commercialized. Since the start of the fiscal year in July (FY14-15), QF has already received 31 invention disclosures, showing year over year growth The QF IP management process begins with online disclosure submissions. IPTT’s IP Management team receives disclosures through ‘Sophia’, the QF IP management system. Disclosure forms exist for inventions, software and creative works reflecting the diversity of research and knowledge creation activities across QF centers and institutes. The majority of disclosures relate to inventions and IPTT is managing these through what we call ‘Q-Meetings’. Q-Meetings are held monthly to review and make key IP protection decisions related to invention disclosures in one of 3 portfolios; Energy & Environment, Biomedical and ICT. Each portfolio is assigned to a core team or ‘Q-Team’ which comprises representatives from key stakeholders, IPTT’s commercialization managers, IP and market analytics bringing QF’s total IP portfolio to over 160 records. QF has a total of 86 patent applications and 6 issued patents (see graph). IPTT is also pleased in the broad participation among all branch campuses and participating institutions. Inventions disclosures are now being received from QEERI, QCRI, TAMU-Q, CMU-Q, WCMC-Q, Qatar Robotic Surgery Center (QRSC), Qatar University (QU) and Hamad Medical Corporation (HMC). As the portfolio continues to grow, IPTT will especially be tracking IP developed within QF’s grand challenge areas to identify synergies and new collaboration opportunities. team. Each month, IPTT brings new invention disclosures and key patenting decisions to the appropriate Q-Team for decisions, ensuring diligence is performed, analyzing new disclosures from multiple aspects, including patentability, ownership and commercial potential. Once the decision is made to protect an invention, the assigned commercialization manager works with the inventor to begin marketing and commercializing the invention. QF’s Energy and Environment Q-Team has reviewed over 50 invention disclosures, and made decisions to patent 19 of those in the areas of desalination and solar energy. QF’s Computational Research Q-Team is currently reviewing intellectual property related to over 70 inventions and making strategic patent nationalization decisions. Although Q-Teams are new, most of the core teams have been organized to ensure QF makes timely and informed patenting decisions. QF inventions in need of proof of concept or incubation support are reviewed in the QSTP Q-Meeting. For more information on QF’s IP management and technology transfer process, see the Inventor’s Guide available on www.qfrd.org/iptt. To submit an online disclosure, visit www.qfrd.org/ iptt and go to ‘Submit an Invention’. 3 QF Technologies Reaching Global Markets IPTT’s IP Commercialization team’s efforts have expanded beyond national boundaries. The team consists of five members and is involved in the active global marketing of more than 50 technologies. Their efforts involve balancing the resources of time, money and third party assistance to understand and pursue the most promising markets for those technologies. The technologies fall within a wide range of technical fields: from novel molecular biomarkers to medical devices in the life sciences area; from new downhole drilling machines to desalination systems in the energy and environment sector; and from smart phone apps to Arabic social media tools in the information computational technologies field. A number of examples of QF technologies with commercialization activities underway include: Technology 1 - Reconfigurable Antenna - A substantial effort has been put into the technology “Reconfigurable Radio Direction Finder System” invented by Dr. Hassan El-Sallabi, Dr. Mohamed Abdullah and Dr. Khalid Qaraqe from Texas A&M University in Qatar (TAMU-Q). The invented system is a novel antenna that is able to estimate the direction of arrival signals to the receiver. A leading international firm in test and measurement equipment has expressed interest in the technology. Indeed, after securing the proper confidentiality agreements with the company, Abeer Al-Hammadi, IP Commercialization Manager, and the case manager for this technology travelled alongside the main inventor Dr. El-Sallabi, to Rome to meet with company and discuss the details of the proper possible collaboration. Dr Shehab in his research labs at Texas A&M University Qatar Technology 2 - Novel Oil Drilling Tools - The System Engineering & Energy Conversion Lab (SEEC) at TAMU-Q is led by Dr. Shehab Ahmed. The primary research interests of members of the SEEC Lab are: energy conversion, system design, and mechatronics. Recently, Dr. Shehab’s team has proven to be quite innovative in providing engineering solutions to real life problems. One example is that SEEC was funded by RasGas, a local LNG company, to investigate various downhole drilling technologies while engaging students at TAMU-Q in the field of subsurface technologies. This group developed a passive yet flexible and strong design tool to navigate holes in horizontal wells based on efficient and cost saving manner. The result of this effort not only provided the students with technological and academic experience but now has evolved into an entrepreneurial exercise. Over the past year John McEntire, Director of IP Commercialization shepherded the technology into a commercial relationship. IPTT’s first license arrangement was completed at the end of the sum- mer with an Option Agreement with a UK based oil and gas engineering firm. The firm is currently using this option period to learn more about the technology and how they may be able to develop it for their product line. Should this trial option period prove useful the next step would be a license to use the technology for an actual product. The tool then could be available for the market in Qatar and around the world. Technology 3 - Arabic Electronic Reader – The Qatar Computational Research Institute (QCRI) has been busy in a number of different areas. Recently Dr. Ahmed Ali and Dr. Stephan Vogel developed the Jalees Reader which is an electronic book reader that renders books in PDF and epub format; supporting epub 2.0 and epub 3.0, the software is optimized and developed for iOS and windows 8 devices. The reading direction discriminator automatically detects the writing system by recognizing the language of words used in the publication. Jalees is currently being used in over 40,000 devices in certain SEC (Supreme Education The drilling tool Council) approved schools in Qatar, eventually to be implemented in all SEC schools. Marketing plans are currently being developed to take this technology to the Arabic speaking world. The wide usage of Jalees throughout Qatar schools should be a great proving ground for this technology and should allow us to tailor this for the GCC region and beyond. IPTT is currently assessing the market to generate the appropriate market scheme. Technology 4 - Virtual Migration - Another computer program technology from QCRI developed by Dr. Simon Ponsford’s team while employed at QCRI prioritizes and allocates resources for distributed computer processing. This novel method of the migration and redundancy of data between devices is also managed using scalable implementation. There are currently 6 patents for this technology and license negotiations are currently underway with the Dr. Ponsford’s current firm in the UK. This looks like an opportunity to develop a winning scenario for all parties. 4 In economies like Qatar, which aims to take a leap from carbon-based economy to a knowledge-based one, a targeted and market oriented R&D approach is important for achieving success. In the past year, IPTT collaborated with 5 specialty firms and procured 4 world class databases to broaden its capabilities in patent search and market research services. IPTT’s management team has established a core analytics team which is growing as the demand grows for its services. IPTT supports over 30 research projects in FY14-15 2 1 Market Screening IP Due Diligence Company Due Diligence Personnel Due Diligence Intellectual Asset Assessment 3 1 25 During the last 6 months, IPTT has conducted 25 Market Screenings which have helped research groups understand the market background for their inventions and modulate the research according to industry requirements. IPTT also helps research groups identify the ‘white space’ through patent landscape analysis. Apart from being beneficial in the early stage of research, a patent landscape can add value and provide insight at every stage of research. It provides a list of current and future competitors as well as insight into the competitors’ activities, including current and future product offerings. In addition, the patent landscape can identify opportunities for R&D and patent investments, help to benchmark your solutions with competitors, clarify the strength of your patents, and identify potential targets for acquisition or collaborations. At each stage of the research process, IPTT can help researchers answer the questions the following questions and through our services listed on page 6 Concept stage Who is my competition? Are there others working on similar topics? What publications and patents are in this area? Where is the white space for my research area? Whom should I collaborate with? R&D Stage Is this idea technically feasible? Is this idea Novel? Would industry accept something like this? What is the best possible way to protect my idea - patent/copyright/trademark? I want to share my idea with industry; can you help me get an NDA? Commercialization Stage What are the different markets for my technology? What is best market strategy for my technology: Start up or licensing? Who could be my potential customer/licensee? 5 IPTT takes first steps towards implementing intellectual asset management for researchers IPTT has received its first training in Intellectual Asset Management (IAM) as it begins the shift towards working more proactively with Qatar’s researchers. The Office is working at implementing IAM in its invention disclosure management and due diligence processes. The two-day IAM workshop, which took place on 3rd and 4th December, focused on developing IAM capabilities and how the methodology can be applied in its daily activities. To summarise the shift, we’re moving from a reactive way of working to a more proactive one whereby we identify, manage and package all of the valuable assets being created by researchers – that means patentable inventions as well as other valuable assets such as data or software tools that can help researchers build stronger collaborations and strengthen funding applications and licensing potential. What is intellectual asset management and why should you care? Think of IAM as a methodology for improving the quality and utilization of research output. You may be pleasantly surprised to learn that it is currently at the cutting edge of research utilisation and commercialisation practice and that it is already being implemented by top research groups, universities, research institutes, technology transfer organizations, and companies, from start-ups to multinationals. How does IAM relate to Qatar’s goal of becoming a knowledge-based economy? Glad you asked. As long as we’re working towards an innovation-driven economy, then control over knowledge is critical. To be able to control and leverage Qatar’s research outputs, we need a streamlined, efficient, and structured way of understanding what has been created that’s most valuable, and yes, you said it, controllable. Control over and retention of the knowledge generated by our researchers will be key for QF. So what’s in it for you? If you are a researcher, research manager or funder, then there is a lot to be gained from working with IPTT on intellectual assets. We can help you to increase invention disclosures and patent filings, visualise research portfolio strengths, and support synergies and collaboration across research teams even within the same institution. See some of the main benefits in the image below and come and talk to our Analytics team, part of the IP Management group, if it sparks your interest. OUR SERVICES Agreements Management Research Collaboration Non-Disclosure Agreements License Agreements Invention Disclosure Management Patent/Copyright/Trademark Filing Technical Feasibility Studies Patent Searches Patentability search Freedom to Operate search Invalidity searches Landscape Analysis Identification of white spaces for research List of patents/publications in the area Identification of potential research partners Identification of potential competition Market Screenings Gathering Industry Opinions IP Due Diligence IP strength analysis IP benchmarking Commercialization Assessments Identification of commercial opportunity Identification of potential customers/licensee Identification of market opportunity Intellectual Asset Management (IAM) Capture and assess Intellectual Assets (IA) Identify utilization opportunity Technology Scouting Technology Marketing Partnering Assistance IP Negotiations 6 IPTT collaborates with R&D’s Office of Education, Training & Development to deliver IP training as part of the Research & Development Workshop Series IPTT held its first 2-day Intellectual Property and Technology Transfer workshop at the Qatar National Convention Center, on November 25th and 26th. The two day workshop was created to provide participants with knowledge on all aspects of intellectual property and technology transfer as it relates to the research done at Qatar Foundation. Over 40 attendees representing centers across QF, including QBB, R&D, QEERI, QNRF, QSTP, QCRI, and QBRI participated in the workshop. Topics such as Understanding Intellectual Property (IP), IP Landscaping to Support Research, and Intellectual Asset Management were presented by IPTT experts. The second day focused on the commercialization aspects of IP, including marketing, licensing, due diligence, and even how to make an “elevator pitch”. Attendees participated in engaging exercises, which were both fun and informative, throughout the workshop. Due to the tremendous response from this workshop and the enthusiasm expressed by attendees, IPTT will be offering similar customized workshops for interested QF centers. See our upcoming events for more news on this. IP & Technology Transfer’ training workshop held on 25th and 26th November in QNCC UPCOMING EVENTS If you’d like to participate in one of our workshops, look out for more information on the following events or contact us on [email protected] February 2015 – IP & Technology Transfer Workshop – A workshop covering the fundamentals of IP, its role in the knowledge-based economy, QF’s IP policies and procedures and the IP commercialization process March 2015 – Software Workshop – A workshop focusing on the different aspects of managing and commercializing software IP March 26th 2015 – Inventors Recognition Ceremony – An awards ceremony recognizing the contributions and achievements of leading QF inventors 7
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