differing approaches to industry-university engagement

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Differing Approaches to Industry-University Engagement Eric Giegerich, UC Berkeley Sherylle Mills Englander, UC Santa Barbara Susan Capella, Intel University Industry Demonstration Project National Academy of Sciences Washington, DC December 4, 2008

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Differing Approaches to Industry-University Engagement -- A Panel Introduction and Presentation at the University Industry Demonstration Partnership meeting, December 2-4, 2008, at National Academy of Sciences, Washington, DC

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Page 1: Differing Approaches to Industry-University Engagement

Differing Approaches to Industry-University Engagement

Eric Giegerich, UC BerkeleySherylle Mills Englander, UC Santa Barbara

Susan Capella, Intel

University Industry Demonstration ProjectNational Academy of Sciences

Washington, DCDecember 4, 2008

Page 2: Differing Approaches to Industry-University Engagement

Differing Approaches• Opportunity: Universities and industry are working

together through an expanding variety of engagements.

• Problem: Current engagement models seldom reflect the nuances of the relationship, needs, and activities.

• Challenge: Several industries, including IT, chemical, automotive, and oil and gas, have argued that a "one size fits all" approach to sponsored research and IP licensing typified by biotech deals from the 80's and 90's aligns poorly with their business models.

Page 3: Differing Approaches to Industry-University Engagement

Conventional Engagement Modelsat Universities

• Environment: Open, public, publishable research environment

• Engagement Model: Tend to fit industry contracting into federal grant model

• Agreements: “One size fits all” templates• Sponsors: Single sponsor (primarily federal agencies)• IP Strategy: Tends to be patent-centric• IP Access: Exclusive license to IP is assumed starting

point

Page 4: Differing Approaches to Industry-University Engagement

Conventional Engagement Modelsat Companies

• Environment: Closed, confidential, trade-secret, product development environment

• Engagement Model: Tend to fit university contracting into procurement model, or contract research model:– Buyer / Seller

– Ordering goods, vs. sponsoring research– Research is “made to order” to meet company specs

• Agreements: “One size fits all” templates• IP Strategy: Capture every type of IP resulting from project• IP Access:

– Want ownership…or– NERF for FTO and…– Exclusive / nonexclusive varies by sector

Page 5: Differing Approaches to Industry-University Engagement

Differing Approaches –Open Questions

• How do companies and universities increase their cross-cultural understanding and tool box for engaging in U-I partnerships?

• How can both sides deploy a full spectrum of research collaboration and IP management strategies?

• How can office structures and and operating philosophies support U-I partnerships?

• What corresponding menus of actions and agreement types are available?

Page 6: Differing Approaches to Industry-University Engagement

Panel Format

• Panel Overview • A Berkeley View – Eric Giegerich

– Q&A• SSLEC Center – Sherylle Mills Englander

– Q&A• Intel – Susan Capella

– Q&A• Panel Q&A

Page 7: Differing Approaches to Industry-University Engagement

Differing Approaches to Industry-University Engagement

Eric GiegerichOffice of Intellectual Property & Industry Research Alliances (IPIRA)

University of California, Berkeley

University Industry Demonstration ProjectNational Academy of Sciences

Washington, DCDecember 4, 2008

Page 8: Differing Approaches to Industry-University Engagement

A Berkeley View?A multidisciplinary group of Berkeley researchers has met since Spring 2005 to discuss The Landscape of Parallel Computing Research.

Is there a Berkeley View of University – Industry Partnerships?...

Their goal: To discuss a change from conventional wisdom. To reinvent from the bottom up.

They call it…The View from Berkeley

Page 9: Differing Approaches to Industry-University Engagement

A Berkeley View?

• Features of a Berkeley View can be observed.

• Berkeley pioneers university-industry approaches: – Organization structure – IPIRA– Staffing– Operating philosophy– Relationship focus– Exploring new success metrics

• Henry Chesbrough says IPIRA practices Open Innovation.

No Manifesto. Decentralized. Free Speech. But…

Page 10: Differing Approaches to Industry-University Engagement

Industry Alliances Office

IAO

Office of Technology Licensing

OTL

A Berkeley View--Office Structure

Organizational structure erases bias toward monetizing or licensing.

A given activity is not at the expense of another.

Licensing and ISRA revenue counted together.

Chancellor is behind it.

Page 11: Differing Approaches to Industry-University Engagement

A Berkeley View

– Backgrounds in technology transfer, business, contracting – Backgrounds with Industry experience– Negotiators focus on IP, negotiation, contract management– Negotiators empowered to draft de novo– Negotiators have full pallet, full tool box– Negotiators given signature authority– Negotiators recognized for advising, consulting, teaching

--Staffing for Industry Research Partnerships

Page 12: Differing Approaches to Industry-University Engagement

A Berkeley View--Relationship Focus

• Encourage long-term relationships – Single transactions don’t build best relationships– Long term relationships foster repeated engagement

• Before exchanging drafts, build good business understanding of the proposed relationship and project(s)

• Establish Common Ground• Two parties are pooling resources• R&D is a shared effort• Each party has stakeholders• Each party needs return on their investment

Page 13: Differing Approaches to Industry-University Engagement

A Berkeley View

• Encourage innovation • Give permission to experiment and make

mistakes. • Take a holistic approach, agnostic about where

industry engages.– Industry and PI interests should determine relationship

type– Could be ISRA, Gift, Membership, License…– IP strategy should match deployment strategy– Chaperoning

--Operating Philosophy

Page 14: Differing Approaches to Industry-University Engagement

A Berkeley View

Conventional Metrics: SRAs, Patents, Licenses, Startups– Quantity and revenue

New Metrics: All Aspects of University-Industry Partnerships– Total industry contribution to campus

Funding, know-how, data, materials, equipment, confidential information

– Licenses resulting from sponsored research– Number and variety of repeated engagements– Industry advising, market feedback, deployment– Industry internships and hiring – Social impact, public good

These are experimental. We are still learning.

--New Success Metrics

Page 15: Differing Approaches to Industry-University Engagement

A Berkeley View--Another Metric

Page 16: Differing Approaches to Industry-University Engagement

Several Companies engage on multiple fronts… Sponsored Research Agreements (SRAs) Industry Affiliates Programs IP Licenses Subscription Agreement Fellowship Agreements, Internships Open Collaboration Agreement (“Lablet”) Research Gifts

A Berkeley View--Another Metric

Page 17: Differing Approaches to Industry-University Engagement

Provisos… These models work in Berkeley’s ecosystem

We don’t claim they work everywhere Some are proven, some experimental These models evolve

These examples show potentials for university - industry partnership

From Berkeley…Some Examples

Page 18: Differing Approaches to Industry-University Engagement

Collaboration Agreement• Nokia, Navteq, UC Berkeley, Caltrans• Features cutting-edge wireless traffic

technology• Using cell phones as mobile traffic

sensors• Creating traffic monitoring system

fusing GPS cell phone data with existing traffic sensor data

• Literally “road testing” in traffic studies• Together, these partners create, test,

and deploy new technology

Example 1 of U-I Engagement Models Mobile Millennium

Page 19: Differing Approaches to Industry-University Engagement

Collaboration FeaturesPublic and private stakeholders

Industry: Nokia, NAVTEQUniversity: UC Berkeley Government: US DOT, CalTrans

CCIT – a deployment-focused UC Berkeley research centerSharing tasks, data, software, equipment

Example 1 of U-I Engagement Models Mobile Millennium

Page 20: Differing Approaches to Industry-University Engagement

Multiparty Research Agreement A Berkeley Research Center 20 companies, 3 UC campuses Industry Sectors:

Equipment vendors EDA companies Foundries Integrated manufacturers Memory companies

State matching funds (UC Discovery)

Example 2 IMPACTIntegrated Modeling Process and Computation for Technology

Marvell Microfab Lab

Page 21: Differing Approaches to Industry-University Engagement

Example 2IMPACTIntegrated Modeling Process and Computation for Technology

Page 22: Differing Approaches to Industry-University Engagement

Industry Benefits Students = most important

product; hiring, internships Workshop 2x/year Opportunity to suggest research

directions, steering committee Access to Berkeley Microfab Lab Reports, software, deliverables IP rights—Early access to

participants Marvell Microfab Lab

Example 2 IMPACTIntegrated Modeling Process and Computation for Technology

Page 23: Differing Approaches to Industry-University Engagement

• IP includes: Patents, copyrights, maskworks, open source (ie., not patent-centric)

• Licensing decision process – Made explicit to show how UC Berkeley negotiates licenses when multiple sponsors express interest. 

Example 2 IMPACTIntegrated Modeling Process and Computation for Technology

Agreement FeaturesOngoing for 9 yearsJust changed from 1 to 4 year term• Easy termination for convenience• Flexible payment schedule: elect

annual, semi, or quarterly. (Not one size fits all)– May include in-kind contributions

Page 24: Differing Approaches to Industry-University Engagement

Public Domain Research Philosophy • A practice of managing a Project for early

publication.• Prefers public dissemination over perfecting

patent rights. • Berkeley nonetheless requires employees to

disclose inventions in accordance with University policy

• Berkeley reserves the right to perfect patent rights at its discretion when it may better serve the Project goals.

Example 3

Page 25: Differing Approaches to Industry-University Engagement

Example 3

BWRC is…Industry Affiliate Program• Industry–University–Government partnerships• Laboratory for circuit and system evaluation from DC

to 110 GHz• Focused on prototyping• Focused on long term relationships• Interdisciplinary• Focused on technology transfer

Page 26: Differing Approaches to Industry-University Engagement

Army Research Laboratory

California Energy Commission

Defense Advanced Research Projects Agency

Gigascale Systems Research Center

MARCO Focus Center Research Program

National Science Foundation

Office of Naval Research

Example 3

Page 27: Differing Approaches to Industry-University Engagement

Example 3

• BWRC is one example on campus which prefers a“Public Domain Research Philosophy”

• No history of patent applications• Tends to work in EE-CS

– May not work everywhere• It’s a response to an industry sector• Evolved from faculty and company needs• Commercialization and public good may be better served• It works: companies continue to support• It’s a fine line—we’re always mindful of Bayh-Dole• This model may evolve

Page 28: Differing Approaches to Industry-University Engagement

Online Carbon Footprint CalculatorSituation: an Existing Technology with continuing research potentialHelps businesses and households evaluate their complete climate footprints.

includes direct and indirect greenhouse gas (GHG) emissions from energy, transportation, goods and services.

Provides local climate footprint estimatesIdentifies actions to save money and reduce greenhouse gases.

http://www.berkeley.edu/http://www.berkeley.edu/news/berkeleyan/news/berkeleyan/2008/03/05_footprint.shtml2008/03/05_footprint.shtml

Example 4

A licensing or sponsored research opportunity?

Page 29: Differing Approaches to Industry-University Engagement

Cool Climate Network (CCN)CCN was created as a Membership Program with a TAP Research focus: greenhouse gas footprint calculators and their introduction into the public sector and the marketplace (deployment)CCN provides customized tools for businesses, schools, community groups, cities, statesMembers: companies, consultants, nonprofits, schools, governments

Members therefore seek more than commercial IP rightsPartial displays of carbon footprint calculators publicly available.

CCN members get complete access, IP rights

Example 4

Our Strategy: Rather than license exclusively, technology is accessed through membership under a Technology Access Program. (TAP)

Page 30: Differing Approaches to Industry-University Engagement

Membership Program FeaturesTechnology Access Program (TAP)

Full access to CoolClimate webservice & templatesBSD for non-commercial useRight to negotiate with OTL for commercial license

Data, updates, limited supportOnline community (network)

Right to obtain Certification Mark LicenseVoluntary grant back of data

Example 4

Page 31: Differing Approaches to Industry-University Engagement

Example 5Socially Responsible IP Management

with a Social Impact Goal: • Make clean drinking water accessible • In countries with poor drinking water and

poor public infrastructure• At little or no cost • By developing a new class of household

consumer products for disinfecting water using surface-bound cationic antimicrobial compounds.

Two Collaborative Research Agreements

Page 32: Differing Approaches to Industry-University Engagement

• Joint Contribution: – Research in safe water treatments and sanitation – Market and user adoption studies.

• Aquaya Contributes: – Expertise in developing and delivering clean drinking

water innovations in developing countries– International partner network.

• Deployment Focus: – Aquaya’s partner network provides a channel in the

developing world for the transfer of technology. – Market, user adoption helps deployment.

Example 5Socially Responsible IP Management

Page 33: Differing Approaches to Industry-University Engagement

Example 5Socially Responsible IP Management

Agreement Features:• Charitable Purpose• Economically Disadvantaged Countries• Visiting Researcher• IP Licensing

– A fully paid, non-exclusive, royalty-free license (“NERF”) to inventions and copyrightable works

– To develop, sell and publicly distribute low-cost water treatment products in EDCs.

– Non-Assert• Sublicense Rights to Field Network• Retained Rights

Page 34: Differing Approaches to Industry-University Engagement

A Berkeley View

Features of a Berkeley View of industry-university partnerships: – Organizational structure –created IPIRA– Staffing– Operating philosophy– Relationship driven– Exploring new success metrics

These features lead to creative examples of university industry partnership

No Manifesto. Decentralized. Free Speech. But…

Page 35: Differing Approaches to Industry-University Engagement

Contact

Eric GiegerichIPIRA

University of California, Berkeley510-642-5850

[email protected]

Page 36: Differing Approaches to Industry-University Engagement

Differing Approaches – Panel Q&A

• How do companies and universities increase their cross-cultural understanding and tool box for engaging in U-I partnerships?

• How can both sides deploy a full spectrum of research collaboration and IP management strategies?

• What corresponding menus of actions and agreement types are available?

• How can office structures and and operating philosophies support U-I partnerships?

• What are examples of new, innovative models of university-industry engagement?