Corbel, P. ; Bonhomme, Y. et Chomienne, H., Le rôle de la PI dans les relations entre laboratoires publics et industriels, rapport de recherche remis à l’ASPI (Association des Spécialistes en Propriété industrielle de l’Industrie), décembre 2009, 40 p.
While there are many studies that aim to assess the commercialization activities of universities and public research organizations, we are not aware of any study that aims to gain an in-depth understanding of the role of IP in the relationship between them and industry. This report is based on 14 interviews conducted with managers of technology transfer offices (TTOs) and in companies.
The first part of the report presents the context in which these partnerships take place, particularly in terms of IP. Companies expect the use of specialised skills to explore avenues that are too far upstream to be handled 100% by their R&D departments. The main purpose of registering IP rights, particularly patents, is to enable industrial firms to earn a retrun on the major investments that still have to be made to transform an invention resulting from an academic partnership into a marketable innovation. Of course, public research bodies also aim to make money from this, but this is not the primary goal.
TTOs were created to serve as intermediaries between the academic world and the industrial world. They carry out their role in a system of fairly strong constraints: pressure on technology transfer indicators, legitimacy to be built within the research organisations, limited resources and difficulties in balancing budgets. Pooling resources could be a solution but it is difficult to implement in a context where incentives associated with indicators rather leads to competition.
Resistance to IP within public laboratories seems to be fairly limited and declining. The "IP culture" is not yet very well developed there, but the growing attention paid to it, the individual financial incentives (which have been widely criticised by interviewees for their perverse effects) and sometimes the attraction of setting up a company explain that this type of problem are taken increasingly into account. The publication/patent dilemma can be overcome, even if this requires a great deal of reactivity on the part of TTOs.
The second part details the nature of the relationship between public research organisations and industry, starting with the contractual aspects. From this point of view, co-ownership poses the most problems. However, most interviewees seem to be able to overcome these difficulties by drawing up a contract that allows the industrial firm a great deal of freedom in the exploitation of these rights.
Another difficulty is the definition of the level of royalties due to the sometimes indirect links between the patented invention and a product which often arrives on the market a long time later.
Company managers' satisfaction with the services themselves is fairly high (despite differences in working methods which may lead to misunderstandings). On the other hand, the difficulties and delays in negotiation, particularly with regard to IP, are often cited as the main limitations of these partnerships. These are probably made even more difficult by certain representations sometimes conveyed about the other party. However, several indications lead us to believe that these sometimes rather clear-cut representations tend to be nuanced as successful collaborations develop.