LES International Conference, Moscow, 2014 IPR commercialization and licensing in Ukraine: conditions and mechanisms Dr. Yuriy Kapitsa Director, Centre of Intellectual Property and Technology Transfer, National Academy of Sciences of Ukraine [email protected] ciptt.nas.gov.ua/en National Academy of Sciences of Ukraine: • 160 research institutes, • 40 thousands specialists, • leading positions in material sciences, power engineering, information technology, space technology, biochemistry and molecular biology • Innovation network: pilot-production facilities, design-and-technology agencies, engineering centers About Centre of Intellectual Property and Technology of Transfer: • working out guidance on licensing, management of intellectual property for the research institutes, • coordinates the activity of the Institutes’ Departments of Intellectual Property and Technology Transfer: created in 90 of Academy's institutes with 400 lawyers, patent agents, patent attorneys working there • support the negotiations involving technology transfer with national and foreign companies (U.S., EU memberstates, China, South Korea etc.) • support start-up creation, IPR valuation and accounting, • participation in working out laws and regulations in IPR, technology transfer and innovation sphere Agenda • • • • Ukraine the highlights IPR commercialisation spheres Mechanisms of technology transfer Requirements for:    Export, Import of technologies IPR agreements Technology transfer agreements Ukraine – highlights • 2013 – State Intellectual Service of Ukraine was appointed by WIPO as the International Searching Authority and the International Preliminary Examining Authority under the Patent Cooperation Treaty • 2013 Global Innovation Index: Ukraine - 23 place in the world in patent applications filed • WIPO indicators, 2011: – 19 place in the world by the number of applications filed by residents – 6 place - by the number of applications for $ 1 million contribution to research Applications for Industrial Property Rights Protection Field, 2013, Ukraine Distribution of applications filed under the PCT procedure by countries of origin, 2013, Ukraine Distribution of Applications for Inventions According to the IPC, 2013, Ukraine Main spheres of IPR commercialisation in the NAS of Ukraine  Medicine  Information Technology  New materials  Energy, energy saving  Nanotechnology  Electronics  Mining operations  Space technology DEVELOPMENT OF WELDING TECHNOLOGY, MANUFACTURE OF PILOT INDUSTRIAL BATCH AND IMPLEMENTATION OF WELDING SYSTEMS AND INSTRUMENTS FOR CONNECTING OF SOFT LIVE TISSUES E. O. Paton Electric. Welding Institute Method for HF live tissue welding (RF LTW) developed at the E.O.Paton Electric Welding Institute jointly with the International association “Welding” (IAW), several medical organizations of Ukraine and company CSMG, USA, has demonstrated it’s effectiveness and is in practical use for over 10 years (since 2002). At present over 150 surgical procedures with use of highfrequency soft tissue welding are implemented in Ukraine with about 100 000 operations performed on humans. The fields for its applications are as follows:  General Abdominal  ENT Operations Surgery  Gynecology  Traumatology  Vascular Surgery  Pulmonology  Operations On  Proctology Parenchymatous Organs  Urology  Ophthalmology  Mammalogy  Others RF LTW has demonstrated it’s effectiveness in veterinary surgery as well. At present (after our evaluation) from 15 to 20 thousand surgeries are being made in Ukraine annually with the E.O.Paton Institute equipment for RF LTW The RF LTW method consists in the adjusted and controlled high (radio) frequency current effect on live tissue, resulting in the tissue structural changes to form a common protein space. CHANGES IN ARTERIUM WALL STRUCTURE AS THE RESULT OF HIGH FREQUENCY CURRENT PASSING THROUGH Х 400 ARTERIUM WALL. WELD JOINT FORMATION X 6000 Weld Joint Is Mechanically Strong Structure With High Ablasticity, Not Sensible to Microbe Infection This method provides: • Feasibility of joining tissues using no sutures, staples, adhesives, etc. • Absence of necrotized tissues and foreign bodies in the wound • Tight joints • Decrease in blood losses and reduction of operation time • Absence of suppurations • Accurate and precise dissection of tissues • Reliable hemostasis • High speed, convenience and reliability in performing surgical operations. Simplified surgery procedures • Smoke-free surgical intervention without any negative effect on surgeon's health • Possibility of surgical treatment of patients, who were regarded as inoperable CREATION OF NEW RESISTANCE WELDING TECHNOLOGIES, DEVELOPMENT AND ORGANIZATION OF PRODUCTION OF A RANGE OF MODERN RESISTANCE WELDERS, INCLUDING MACHINES FOR WELDING OF HIGH-STRENGTH RAILS AND CROSSINGS Engineering centre of pressure welding of STC "E. O. Paton Electric. Welding Institute" PJSC "Kakhovka plant of electric welding equipment" Norfolk Holland К920 LEIGHTON-RSA JV MERCEDES ATEGO-HI Rail unit c/w flash Butt Welding System Hong Kong Plasser DEVELOPMENT OF RESOURCE-SAVING TECHNOLOGIES, EQUIPMENT AND ORGANIZATION OF PRODUCTION OF THE NEW GENERATION OF FLUXES BY DOUBLE REFINING METHODUSING WASTE OF MINING AND METALLURGICAL ENTERPRISES OF UKRAINE JSC "Zaporozhye Plant of welding fluxes and glass products" DEVELOPMENT AND ORGANIZATION OF SERIAL PRODUCTION OF A RANGE OF MODERN EQUIPMENT FOR ARC AND PLASMA WELDING AND CUTTING OJSC Electromachine-building plant "Firm SELMA" DEVELOPMENT AND IMPLEMENTATION OF ENERGYEFFICIENT AND RESOURCE-SAVING TECHNOLOGY OF PRELIMINARY DRESSING OF FINE ORE BY DRY MAGNETIC SEPARATION METHOD AND MAGNETIC FLOTATION FINISHINGOF CONCENTRATE IN ORDER TO SUPPLY METALLURGICAL RAW WITH 69-70 % IRON CONTENT IN THE DOMESTIC AND FOREIGN MARKETS OJSC "Inguletskiy GOK (Krivoy Rog) DEVELOPMENT AND PRODUCTION OF ADVANCED AUTONOMOUS INTEGRATED SYSTEMS OF ELECTRIC POWER SUPPLY ISING SOLAR ENERGY SYSTEMS, WIND POWER PLANTS AND ENERGY STORAGES OJSC "VESTA-Dnipro" DEVELOPMENT OF TECHNOLOGIES AND EQUIPMENT AND ORGANIZATION OF PRODUCTION OF ENERGY-SAVING GLASS, GLASS PACKETS AND EQUIPMENT FOR THEIR PRODUCTION BASED ON MAGNETRON COATING DEPOSITION "Tekhnoluch" Ltd. IRTC ITS of NAS of Ukraine Ф азовы й портрет Z (t ) Z (t ) Д иф ф еренц иатор Z (t ) Z (t ) Z (t ) THERMOGRAPH FOR THE DIAGNOSIS OF BREAST CANCER DIPE 60 50 Prevention results 40 30 20 10 0 2005 2006 2007 2008 2009 2010 Sapphire crystals 50035050 mm The largest Cs-iodide single crystal, m=504 kg (NASU Institute for Single Crystals, Kharkov, Ukraine) Sapphire Implants Inactivity, highest chemical purity, electrochemical passivity, biocompatibility, hardness, minimal wear Institute of Single Crystals of NAS of Ukraine Wear-resistant ceramic based on zirconium dioxide nanopowders Growth biostimulant Interdepartmental Science & Technology Center “Agrobiotech” of NAS of Ukraine Approaches to Technology Transfer • Direct agreements (3,600 contracts of NAS of Ukraine institutes with national enterprises and 290 contracts with foreign firms): – – – – – supply of equipment and products patent and know-how license agreements technical assistance agreements R&D contracts Co- operative agreements • Start-ups creation Science and Technology Centre in Ukraine (www.stcu.int) Legislative regulation Technology acquired or created by using the state finance • Import of technologies is done after the examination of government agency with the evaluation of: – compliance of technology to the norms of technological and environmental safety, – the absence of such technologies in Ukraine national origin – orientation on the production of new products or to improve the quality of existing etc. • Transfer of the technology abroad: after procedure of examination of government agency, adoption of the transfer and registration of the technology. • Transfer of defense or dual-use R&D results and IPR – after examination of State Service of Export Control of Ukraine. Legal Framework for licensing • Civil Code of Ukraine, Chapter 75 “Disposition of Intellectual Property Rights”, 2004 • Law of Ukraine "On state regulation of activities in the field of technology transfer", 2006 • Law of Ukraine "On Foreign Economic Activity ", 1991, Regulation on the form of foreign contracts by the Ministry of Economy and European Integration, 2001 IPR agreements (Civil Code, Chapter 75) • Types of IPR agreements: – License, – license agreement, – agreement on an creation of IPR upon the order (work for hire), – assignment contract • Types of licenses: – exclusive, – single, – non-exclusive and other types Requirements for license agreements. Essential conditions • The type of the license • The field of the intellectual property object use: – – – – specific rights granted, methods of the mentioned object use, the area of the rights granted term of the rights granted • The amount, procedure and terms of paying the fee for the IPR object use, as well as the other conditions that the parties consider appropriate Requirements for license agreements – a licensee shall be responsible to a licensor for the actions of a sub-licensee, unless otherwise is stipulated by the license agreement – a non-exclusive license shall be deemed granted under the license agreement, unless otherwise is stipulated by it – any rights to use the IPR object and methods of its use, which are not determined by the license agreement shall be deemed not empowered to the licensee Requirements for technology transfer contracts • Technology transfer contracts should be based on the provisions of Civil Code, Chapter 75 • Additional terms for the agreement stipulated by the Law “On state regulation of activities in the field of technology transfer": – 7 essential conditions, – additional 10 conditions that should be included in the contract Requirements for technology transfer contracts • Essential conditions: – a list of the components of technology transferred – the time, place and manner of transfer of technology and /or their components – the terms of the transfer of technical knowledge etc. • Additional conditions: – the procedure for granting sublicenses – procedure to provide information on improvement etc – Restrictions on contracts of technology transfer (provisions on anti-competitive activities) Royalty – – taxation according double taxation treaties – actual royalty rates 5% -11%, varies considerably for different areas minimum royalty rates: 0.5 – 3% of income from product sales should be paid by firms purchased the technology from Ukraine residents (Law on Technology Transfer) Information resources on licensing and technology transfer • Web-site Ukraine Science and Technology Landscape • Business Portal Nanotechnologies and Nanomaterials of the National Academy of Sciences of Ukraine connected with Enterprise Europe Network – directory of research organisation in Ukraine, profiles, contacts – description of technologies • Web—sites of the institutes of NAS of Ukraine • Centre of Intellectual Property and Technology Transfer of the NAS of Ukraine – profiles, developments – legal, patent support of technology transfer, IPR valuation and accounting • Science and Technology Centre in Ukraine – support in research, technology transfer partnership – thematic projects Database of Ukrainian research organisations and universities Further information • Anna Tsirat, Yuriy Kapitsa Intellectual Property Law in Ukraine.- The Hague. London. Boston.: Kluwer Law International, 2011. - 138 p. • Innovation Performance Review of Ukraine. United Nations Economic Commission for Europe, 2013. – 152 p. • Innovation Policy: European Experience and Recommendations for Ukraine. - Volume 3. – Innovation in Ukraine: Policy Options for Actions. – Kyiv: Fenix, 2011.- 72 p Thank you