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New Ways of R&D Collaboration: Open Innovation, Collaborative Licensing and How to Prevent and Resolve Disputes

Wim Vanhaverbeke University of Hasselt, Vlerick Leuven Gent Management School, ESADE Business School (Barcelona), Founder of Exnovate wim.vanhaverbeke@uhasselt.be

Esther van Zimmeren Research Fellow FWO University of Leuven esther.vanzimmeren@law.kuleuven.be

Workshop on ADR in R&D Collaborations, November 13 2009,

Thesis

Organizations involved in Open Innovation (OI) have an even bigger incentive to use ADR in order to prevent and resolve disputes

Workshop on ADR in R&D Collaborations, November 13 2009, Leuven

Plan
1. Open Innovation (OI)
1. 2. 3. 4. Introduction Closed Innovation OI Crucial dimensions in OI

2. Basic IP Issues
Conflicts Recent Example

3. OI & R&D Collaborations & ADR


1. Multiple Parties 2. IP Models 3. Collaborative Licensing Models & ADR
1. Patent Pools & ADR 2. Clearinghouses & ADR

4. Conclusions

Workshop on ADR in R&D Collaborations, November 13 2009, Leuven

Introduction What is Open Innovation?


Open innovation is the use of purposive inflows and outflows of knowledge to accelerate internal innovation, and expand the markets for external use of innovation, respectively.
Chesbrough, Vanhaverbeke, West Open Innovation: Researching a New Paradigm (2006)

Workshop on ADR in R&D Collaborations, November 13 2009, Leuven

A Closed Innovation System

Science & Technology Base

The Market

Research Investigations

Development
Workshop on ADR in R&D Collaborations, November 13 2009, Leuven

New Products or Services


Source: Henry Chesbrough

CI: The Virtuous Circle for R&D


Fundamental Technology Breakthroughs

Increased investment in R&D

New Products and Features

Increased Sales and Profits via existing business model


Workshop on ADR in R&D Collaborations, November 13 2009, Leuven

Source: Henry Chesbrough

OI: The Virtuous Circle Broken


Fundamental Technology Breakthroughs
IPO Increased or investment acquisition in R&D

The outside option

New Products Key engineers and Features exit to form new company

RIP

Increased Sales and Profits Venture Capital helps team to focus on new market, new business model
Workshop on ADR in R&D Collaborations, November 13 2009, Leuven

Source: H. Chesbrough

Inbound OI: Filling gaps with external technology

Internal Technology Base External Technology Base

New Market

Current Market
Technology in-licensing Venture investing

External research projects

Technology acquisition

R
Source: H. Chesbrough

Workshop on ADR in R&D Collaborations, November 13 2009, Leuven

Outbound OI: Profiting from others use of your technology


Licensing
Other Firms Market

Technology Spin-offs Internal Technology Base


External Technology Base
R
Source: H. Chesbrough

New Market

Current Market Technology Insourcing


Workshop on ADR in R&D Collaborations, November 13 2009, Leuven

Open Innovation: Crucial dimensions in open innovation strategies

Strong/weak IP regime Complexity and cost of technologies Relevance of emerging technologies Products or integrated solutions Core technologies or not Precompetitive or application driven
non-exclusive or exclusive rights

Vertical vs. horizontal cooperative deals


Specialization of labor (technology markets) and FTO/I

Workshop on ADR in R&D Collaborations, November 13 2009, Leuven

Basic IP Issues
1. 2. 3. Commercial objectives link with IP Fee for service contracting model vs. full-scale collaboration Do not postpone legal issues vs. overly complicated contract

4.

Strong, long-term relationship with the collaborators (non-disclosure agreements)


IP ownership Employees

5.

6.

Background/foreground IP
a) b) conditions access partners conditions access third parties
i. ii. Open source Workshop on ADR in R&D Collaborative licensing models Collaborations, November 13 2009,
Leuven

Conflicts Recent Example


Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc. (Fed. Cir. 2009)
co-development in the late 1980's and early 1990's of the application of PCR technology to HIV detection by Stanford and Cetus (private company that developed and owned the PCR technology) Agreements "Copyright and Patent Assignment (CPA)" agreement Holodniy Stanford "Visitor's Confidentiality Agreement (VCA)" Holodniy - Cetus "Materials Transfer Agreements Stanford - Cetus

Workshop on ADR in R&D Collaborations, November 13 2009, Leuven

Conflicts Recent Example


Board of Trustees of the Leland Stanford Junior University v. Roche Molecular Systems, Inc. (Fed. Cir. 2009)
3 US patents held by Stanford Roche successor in title Cetus Licensing negotiations fail Stanford sues Roche CAFC: Stanford had no standing Legitimate assignment of rights to Cetus/Roche

Workshop on ADR in R&D Collaborations, November 13 2009, Leuven

OI & R&D Collaborations & ADR


Open Innovation R&D Collaborations
Value Creation Long-term Relationships Complexity New technologies Expertise Complimentarity Funding/revenue Knowledge Transfer Bringing Product to the Market
Workshop on ADR in R&D Collaborations, November 13 2009, Leuven

Multiple Parties
Contracting Parties Contracting Parties & Third Parties

Workshop on ADR in R&D Collaborations, November 13 2009, Leuven

IP Models
Bilateral Licenses Cross-licenses Open Source

Collaborative IP models Patent Pools Clearinghouses

Workshop on ADR in R&D Collaborations, November 13 2009, Leuven

Collaborative IP Models & ADR

L1 P1 L2 P2 P3 P4 L3 L4

P1
P2 P3 P4

L1
L2 L3

Clearinghouse

L4

Patent Pool

Clearinghouse

Workshop on ADR in R&D Collaborations, November 13 2009, Leuven

Patent Pools & ADR

P1 Conflict
Conflict P4 P2 Conflict

Conflict L1
Conflict L2 Conflict L3 Conflict

P3

L4

Litigation?

European Commission Technology Transfer Guidelines - ADR


Workshop on ADR in R&D Collaborations, November 13 2009, Leuven

Arbitration Mediation Expert determination

Clearinghouses & ADR

P1
P2 P3 P4

L1
L2 L3

ADR Litigation? Mediation Expert determination


Workshop on ADR in R&D Collaborations, November 13 2009, Leuven

Clearinghouse

L4

Conclusions
Organizations involved in Open Innovation (OI) have an even bigger incentive to use ADR in order to prevent and resolve disputes -

ADR integrated in Collaborative Open relationships IP models? Long-term relationships Patent Pools Expertise Clearinghouses Negotiated solutions Quick solutions Transaction costs Litigation costs Role of precedents

Workshop on ADR in R&D Collaborations, November 13 2009, Leuven

2006

2008

Open Innovation

for Policy makers


Vision-Eranet

2006

2010

Implementing and organizing open innovation

2003
Workshop on ADR in R&D Collaborations, November 13 2009, Leuven

Exnovate as a network of excellence for OI-practitioners and scholars?


www.exnovate.org = An international network of excellence
on Open and Collaborative Innovation based on connecting people, creating transparency and leveling up quality of services Connects companies academia (30 top scholars networked) governments service providers Membership organization

Projects
CE and OI Masterclass (6 times already) http://masterclassfall2009.cisevents.hightechcampus.nl/ European Innovation Forum Calls for proposalsr OI-management solutions Free information : cases, syllabi & updated bibliography about open innovation, PhD projects, etc
24 wim.vanhaverbeke@uhasselt.be

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