1. Pedro Mota
Nuno Silva
1
Janus – God of Beginnings
Researchers: prime targets for IP awareness
Pedro Mota – Madeira Tecnopólo
Nuno Silva – Instituto Pedro Nunes
Abstract
The University of Madeira and the University of Coimbra both have developed, in recent years,
strategies for promoting applications for patent protection within the universities. These are
supported by industrial property (IP) policies, marketing materials and activities, intellectual property
policies, staff and procedures dedicated to that effect.
The paper presents a comparison of both strategies, objectives and results, explained through the
analysis of the different contexts and publics targeted.
The public segments at both Universities are categorized and compared in regard to size, education
level (undergraduate, graduate, masters, PhDs) and education areas (science, engineering,
medicine and pharmacy, humanities).
An overall strategy and marketing objectives for each target segment are presented, illustrated with
some examples of marketing activities carried out (IP tool Kit, IP brochures, workshops and
seminars, website development, questionnaires and structured interviews).
The different approaches to IP policy drafting and the different procedures for identification and
selection of patentable inventions are explained in detail.
The profile and responsibilities of the staff dedicated to design and take strategy into action are
compared.
2. Pedro Mota
Nuno Silva
2
Janus is the Roman god of gates and doors, beginnings and
endings, and hence represented with a double-faced head,
each looking in opposite directions. He was worshipped at
the beginning of the harvest time, planting, marriage, birth,
and other types of beginnings (…). Janus also represents
the transition between primitive life and civilization (…) and
the growing-up of young people
By Micha F. Lindmans, Encyclopedia Mythica™
I. Technology Transfer Roles: implications for communication strategies
This paper first discusses briefly the different roles to be performed by a Technology Transfer
Organization (TTO) in order to achieve its mission and the key implications for the communication
strategies to be adopted.
A TTO is, at first, an Interface, that is, an organization that is in the boundary of another (typically,
but not limited to, a University) or between two others (University and Company). Thus, its mission
must be aligned with that of both the parties it is trying to bring together. Both means: not only the
party that often controls the management of the TTO, that is, The University but also the
companies.
This is not always apparent from many TTO’s mission statements, operations or communication
strategies. In fact, often we observe unidirectional communication efforts that have inherent a
traditional model that can be described as:
1. We have something that we find to be good for companies or for a given company
2. We must construct a strong case (message) for it
3. We must deliver that message to the companies
4. Companies will acknowledge and understand the message and act upon it.
5. If companies don’t react there must be something wrong with our message – make a
stronger case and deliver again; or something wrong with the delivery – deliver again, try
other means; or there is something wrong with the companies – find other companies that
are «more intelligent».
This model will fail because of a number of wrong assumptions:
3. Pedro Mota
Nuno Silva
3
1. We are able to define on our own what’s good for companies or for a given company
2. We are able to construct on our own a better message because we know best and in all
detail what’s to be communicated
3. Once the message is properly constructed finding the way to deliver it is the next issue
4. Companies are ready to listen and respond
Assumption number 4 is the most faulted one. People at companies, and in particular SMEs, are
not ready to respond. On the contrary, they are ready to block any messages that don’t, at first,
establish relevance to their daily work.
Messages will only be processed if they are in tune with a certain category that already exists in the
person’s mind and can be properly positioned in that category in relation to other messages
categorized in the same way.
This is what Marketing authors Al Ries and Jack Trout define as “Positioning”. In order to
communicate we must first understand how we are perceived by the person we want to
communicate with and then act according to his or her beliefs, even if we find them to be incorrect
To gain an understanding of those perceptions a TTO must have as a core part of its
communication efforts certain ways to capture the beliefs of the companies, as those of the
researchers at the University.
In some cases this is done by relinquishing some power over the activities of the TTO, allowing
companies to seat on the board, on steering committees, etc.
The case of Instituto Pedro Nunes (IPN), Technology Transfer Office but also Applied Research
Institute, Advanced Training School and Business Incubator, serving several Public Resarch
Organisations (PRO) illustrates this point. IPN is a not for-profit association including both
companies and PROs that are equally represented on the Board.
Though, this paper will not discuss those strategies adequate for proper bi-directional
communication management and this first section is meant only to provide a setting that should be
present throughout the remaining sections.
Besides its position as interface, other roles performed by a TTO should also be mentioned.
Most TTOs will provide support for identification of research results, assess the patentability of
research results, provide to a certain extent support for protection through patents and assist in
licensing efforts or creation of spin-off companies.
In many cases TTOs will also be involved in drafting, reviewing or negotiating contracts for any
degree of joint research, with special consideration for Intellectual Property arrangements.
4. Pedro Mota
Nuno Silva
4
II. Researchers: prime target for IP awareness
Considering the main roles performed by a TTO it stands out that a key element to its success is
the way it is perceived by the researchers at the PRO it is serving. Still we must keep in mind the
interface quality of the TTO. What that means is that although identified as prime target for IP
awareness raising schemes, researchers are not to be considered on a stand alone basis. In an
interface position, understanding cross-influences between communication targets is essential to
the development of a proper communication strategy. It should, thus, be clear that this and the
following sections represent a merely academic isolation of one part of an overall communication
strategy for descriptive and analytical purposes only.
Researchers must be aware of a number of issues relating to IP in order to facilitate or at least not t
imperil a TTOs work. First, the issues regarding publication and it’s implications to novelty. Also, hot
to do patent searches, and assess the state of the art. The need for an inventive step. Some basic
knowledge of the protection provided by patents, the costs and timeframes. The patent process and
interaction with patent attorneys and patent examiners. The need for IP provisions in research
contracts and labour contracts. The implications of involving students with no employment contract
in the research work. NDAs and MTAs and possible implications on freedom of research or IP
ownership.
Without this basic understanding the mission of the TTO will probably be impossible to perform, for
lack of protected research results or researchers willing to participate in the technology transfer
process.
5. Pedro Mota
Nuno Silva
5
III. Communication targets compared
The following table offers a summary of the most relevant indicators that characterize the context in
which researchers at the University of Coimbra and the University of Madeira operate.
University of Coimbra University of Madeira
Founded in 1290 Founded in 1998
Recent and large Science Faculty Mix of Humanities and Sciences
20.000 Students 2.500 Students
4 Sites 1 site
TTO – Instituto Pedro Nunes TTO – Madeira Tecnopólo
Table 1
The first difference relates to the age of the institutions. This indicates strong differences in culture
and culture stability that must be taken into consideration when formulating a communication
strategy. Mainly, the researchers at the University of Coimbra can be expected to be less
responsive or even resistant to change.
The Science Faculty at Coimbra accounts for almost 50 % of researchers and students, while in
Madeira no dominant Faculty or science discipline prevails in such obvious way.
The differences in number of students, and consequently, number of researchers are also very
important to define a communication strategy, in particular for consideration of the tools to use.
The concentration of the University of Madeira in one site allows for a physical concentration of
communication efforts that is not possible in Coimbra.
Both Universities have links with TTOs, Science Parks or other institutions conducting technology
transfer on their behalf.
6. Pedro Mota
Nuno Silva
6
Linked with the University of Coimbra we find, among others, Instituto Pedro Nunes.
Linked with the University of Madeira is Madeira Tecnopólo
Relevant differences between the two are illustrated below, as communication with researchers to
raise IP awareness is to be conducted by these institutions.
Instituto Pedro Nunes Madeira Tecnopólo
Tech-based Business Incubator Qualified facilities
Contract and Collaborative R&D Close links with local sectors (ex. Tourism)
CPD and Training Networking events and services for companies
Staff dedicated to IP management Staff dedicated to IP information
Table 2
7. Pedro Mota
Nuno Silva
7
IV. Communication objectives compared
Having in mind the different contexts highlighted in the previous section, we now analyze the
communication objectives that were drawn for each institution.
Instituto Pedro Nunes Madeira Tecnopólo
Deal with established culture Establish from scratch a new culture
Focus on Science: Patents Focus also on Copyrights, etc.
Deal first with awareness Start dealing with behaviors
Approaches tailored to 4 different sites One «central» approach
Table 3
It is easily understandable that the comprehension of the main features of the prevailing and very
stable culture and drivers conducting the researchers and their decisions in Coimbra is far more
important than in Madeira, a «young» University with a more «fluid» culture.
In Coimbra patents can be placed as central to the communication strategy, with other forms of IP
following in relevance. In Madeira other forms of IP are equally or more important than patents and
should be dealt with at least in parallel from the start.
The responses to be obtained from the targets, with reference to a known model distinguishing
progressive stages of 1) awareness, 2) attitude and 3) behaviour, relates to the size of the
population, the tools available and the stability of each culture.
8. Pedro Mota
Nuno Silva
8
V. Communication tools compared
The tools used at each site are listed below
Instituto Pedro Nunes Madeira Tecnopólo
Establish at High Level a Formal Policy Get «opinion makers» to agree
Train and assist the researchers Offer assistance but also Outsource
«IP Kit» for widespread usage Small group meetings and «couching»
Specific workshops Seminars
Table 4
Setting a formal IP Policy at the highest level (Vote on Approval by the Senate and Administration
and Procedures managed at Rectors office) proved decisive to the results achieved in Coimbra.
This policy was explained, discussed and is enforced. Every year it is evaluated and eventually
revised. It is an important signal to researchers regarding the level or priority at which the
administration places proper IP management.
In Madeira no formal policy was established. The stakeholders are integrated in the management of
IP through consultation and contracts when necessary.
The policy and related procedures alongside with information on IP rights and procedures to obtain
protection and relevant laws and treaties were disseminated in Coimbra through the use of a
designated «IP Kit», designed to be a resource for information but also for daily use and constant
reference by researchers. It also provides a form to disclaim inventions to the TTO.
As a goal, each research group is to have its own IP «specialist» able to detect research results that
are patentable or advise colleagues on IP management.
Contrasting with Madeira, that conducted several Seminars about generic IP issues, in Coimbra
workshops focusing on how IP relates to specific fields of science where used and conducted at the
9. Pedro Mota
Nuno Silva
9
relevant sites. For example, a day about IP and health and pharmacy at a research institute linked
with the Faculty of Medicine.
Following is an outline of the several steps that are to be taken at each TTO in order to detect
research results and acquire protection.
Instituto Pedro Nunes Madeira Tecnopólo
Active identification of research results Inquiries about patent protection
Assess patentability and market Information on patent procedures
Assist researchers in Initial patent draft Outsource patent procedures
Outsource draft review and patenting
Table 5
This is further illustrated by a fictional example of the report elaborated by IPN that serves as a
basis for the Rector’s office decision to acquire or not patent protection.
10. Pedro Mota
Nuno Silva
10
General Info Reference and Title UC4-2005-P. Sensor for detection of ... In ...
Origin Project POCTI/QUI/39593/2001 (FCT) / National Science Foundation Project n.º...
Entities
University of Coimbra; Science Faculty (Chemistry Department); MIT (?) Note: No MTAs
signed; No collaboration with industry yet
People
Julius Cesar (jcesar@ci.uc.pt - 89565547 - Rua de Trás, 46, 3030 Coimbra) professor;
António Nunes Sá (asa@ci.uc.pt - 82566 - Av. Maior, 23, 3030 Coimbra) master student
Invention Abstract and drawings Abstract under 150 words = annex A; drawings according to Portuguese law = Annex B
Key words and
classifications sensor; bismuth; catalyst ::::
Searches
Online search with inventors (03-04-05); Assisted database search INPI (12-04-05) =
Annex E
Search analysis
The searches did not identify any documents ofending novelty; Inventive step is
apparent.
New elements Use of bismuth catalyst for the detection of ... In ....
Known elements
Sensors for the detection of ... In ... Using other elements like .... Available products
(see bellow). Methods for the production of ....
Related Software N.a.
Maturity
Lab experiments concluded. Needs field tests in collaboration with industry. Estimated
time for testing = 1 year; No budget yet.
Disclosures
Dates, means, audience,
reactions No disclosures yet. Master thesis to be defended June 5 2005
Disclosed information No disclosures yet. Master thesis to be defended June 5 2005
Market Applications Detection of the presence of ... In...
Competition
Electronic sensors for the detection of ... In ... (Product XZ in market from company W;
Patents US6787999; US6777555, EP5666777) Note: See annex C for details
Complementary
inventions Methods for the production of ...
Competitive advantages Online immediate detection of ...; Increased sensitivity
Final Clients
Labs working for industry in the detection of .... In...; Companies that produce FG with ...
Being sub product
Immediate Clients LTD Corporation; HGF Inc; UTRY GMBH
Relevant countries European Union (European Directive on ...)
Actions Meetings Meetings with inventors (24-03-05; 03-04-05; 12-04-05; 14-04-05)) = Annex D
Budget Portuguese patent (estimated) 2500 € including patent attorney and fees
Description and Claims First draft not yet revised by patent attorney = Annex F
Decision Titles and Applicants Portuguese patent application with University of Coimbra as single applicant
Finance University of Coimbra and Science Faculty
Recommendation Apply for portuguese patent. Use priority year to decide on extension.
Inventors Signatures Name and date:
Name and date:
Name and date:
I recognise and accept that this form together
with its attachments is an accurate description
of the disclosed invention and I agree to fully
cooperate with the University of Coimbra under
the rulings established by its Intellectual
Property Policy Name and date:
Date Completed: 25-03-2005 Name and date:
Date for Decision: 25-05-2005 Name and date:
Table 6
11. Pedro Mota
Nuno Silva
11
VI. Communication results compared
The degree to which the objectives of each strategy were achieved is described below.
Instituto Pedro Nunes Madeira Tecnopólo
Policy and procedures observed Decision makers are backing the staff
Increasing number of patents Increasing collaborations
Awareness increasing Behaviors changing
Specific inquiries and tailored responses Increasing generic inquires
Table 7
The impact of the strategies, although not presented here, is also measured in Coimbra by a
questionnaire covering attitudes towards IP, knowledge of IP and IP rights usage.
12. Pedro Mota
Nuno Silva
12
VII. Conclusions
The strategies conducted are believed to be adequate to the different contexts in which researchers
operate and also to the resources available.
Both TTOs identify as aspects to improve:
More well defined internal procedures and standards across Europe (Codes of practice);
Better metrics to measure and compare results (Proton Survey);
Stronger focus on entrepreneurship, IP valuation and Business Development;
Integrated Marketing Communications across targets, because the proper management of Tech-
Transfer requires an integrated approach that will not separate the strategies, objectives and tools
used to communicate with researchers from those used to communicate with companies.
13. Pedro Mota
Nuno Silva
13
Bibliography
Ries, Al; Trout, Jack, Positioning, the battle for your mind. McGraw-Hill, 2000.
European Commission, The role of universities in the Europe of knowledge, COM (2003) 58 of
05.02.2003.
Proton Europe, Responsible Partnering, 2005 (available at http://www.protoneurope.org).
Proton Europe, Survey Report 2004, 2005 (available at http://www.protoneurope.org).
ICSTI Ireland, National Code of Practice for Managing Intellectual Property from Publicly Funded
Research, 2004 (available from http://www.forfas.ie/icsti/statements/icsti040407/index.html)
European Council of Barcelona, 2002 (available at http://www.cijdelors.pt).
Godinho, Manuel Mira (coord), Estudo sobre a Utilização da Propriedade Industrial em Portugal
[Study on the Use of Industrial Property in Portugal]. Lisbon: INPI, 2003.
Vilela, Telmo, A Patente Universitária e a sua Exploração nas Universidades Ibéricas [University
Patent and its Exploration in Iberian Universities]. Post-Graduate work, University of Santiago de
Compostela, 2003.