As the global knowledge economy grows each year, the importance of intellectual property (IP) policy also grows for non-profit organizations such as universities. Pretty much every organization has an IP portfolio of some kind and value, whether or not the organization realizes it as such. As a result, almost every organization needs an IP policy model, even if it’s a simple one. This presentation is intended to help the universities and other research organizations to set IP policy model to optimise the benefits from the intellectual assets created by their staff and students. The presented model, which was adopted at the University of Maribor, does not provide an IP policy that can be applied across all organizations as there is no “one size fits all” approach to IP management. But, it identifies the key features that need to be considered in order to build a strategic framework for the managing of IP, as for example the issues of ownership, protection and sharing of the economic benefits arising from the commercial exploitation of IP created by researchers in the course of their duties or activities at the university.

1. IP Policy Model
at the University of Maribor
Anton Habjanič, D.Sc.
director of TechnoCenter at the UM
Conferenceon University and BusinessCooperation in CentralEurope
(January28-29,2016,Budapest,Hungary)

2.  1859 the beginnings of higher education in Maribor (School of Theology)
 Between 1959 -1961 the Association of Higher Education Institutions in Maribor
 1975 the University of Maribor was established
 17 faculties plus 2 members: Student Dormitories and University Library
 16.680 students in the academic year 2014/2015 (all cycles)
 1.725 staff members (1063 teachers & employees in higher education and researchers)
 Total income in 2014: 83 million EUR (R&D activities: 11,5 million EUR)
University of Maribor
Facts and Figures

3. Technology Transfer Cycles

4. IP Strategy & Policy
 IP Strategy:
A plan designed to achieve IP management supporting the core missions of
technology transfer.
 IP Policy:
Principles of actions (set of provisions), often with direct legal implication
regarding duties and rights of faculty and indirect implications for partners.
Background!
Commission Recommendation on the
management of IP in knowledge transfer
activities and Code of Practice for universities
and other public research organisations
Intellectual Asset Management for
Universities (UK IP Office)
Model Intellectual Property Policy for
Universities and Research Institutions (WIPO)

5. IP policy is a must-have tool: provides clear and transparent rules on IP management while
involving the personal, institutional, national and international aspects of IP management in
one regulatory document.
Advantages of a good IP Policy:
 Creates guidance & consistency for IP and technology management procedures
 Involves transparency in decision making process
 Safeguards the interests of all parties by stipulating deadlines
 Facilitates professional IP management
 Creates legal certainty for companies and other third parties
 Supports commercialization activities
 Stimulates more industrial support for research
 Guarantees the fair distribution of the income among stakeholders
 Encourages bringing research results to the public benefit
 Enhances the promotion & reputation of the university and the researchers
Importance of IP Policy

6. 10key Questions
for Establishing a successful IP Policy

7. Question 1:
What rights does the
government have
on IP generated at universities and
R&D institutions?
For example, manufacture in the country,
preference for national companies,
regulatory compliance, royalty sharing,
royalty-free license to the government,
title back to the government if the
institution doesn’t take title etc...
10key Questions
for Establishing a successful IP Policy

8. Background of the IP Policy at UM
Employment Related Industrial Property Rights Act (Article 21):
 Financial resources for organizational infrastructure, necessary for examination of
employee inventions at PRO and for their effective exploitation, are provided separately
by the state.
 PRO regulates the acquisition procedure of employee inventions with the Rules in a way
that is adapted to the needs of scientific work and the publication of scientific results.
 PRO specifies the shares in the Rules, which belong to the institution, the unit of the
institution where the inventor is employed and the inventor.

9. 10key Questions
for Establishing a successful IP Policy
Question 2:
Who owns IP
generated by publicly funded
research?
Who is the first owner of IP (the employed
inventor or the employer)?
Does the “Professor‘s privilege” exist?
Who can apply for ownership of IP?
Who has the Pre-emption rights?
Can university claim ownership of IP created
in the course of students’ research activity?

10. Who are inventors and
what are their obligations?
Inventors are:
 University teachers, researchers and other employees at the University of Maribor, who
discovered or created an invention.
 Contractors and students, who are not in employment relationship with the UM and when
the invention is a result of a contractual relationship or when the UM‘s resources were
used in the discovery or creation of the invention.
Inventors are obliged to:
 Immediately inform the UM‘s Department for Scientific Research by clearly indicating
that the writing is a notification of invention.
 Refrain from any actions, which would mean the disclosure of the invention to
unauthorized persons, thus putting the patent protection or the protection of other IPR
at risk, before and after the submission of the notification.
 Provide UM with assistance by offering explanations about the invention and by making
the necessary declarations.
Attention!
The inventor, who fails to inform the UM, breaches the obligations deriving from employment.

11. Question 3:
What IP Management
procedures will be
followed?
What are the bottlenecks in technology
transfer and commercialization of R&D results?
How should IP Assets be managed?
What are the IP management procedures?
How is the IP policy etc. communicated to
stakeholders?
10key Questions
for Establishing a successful IP Policy

12. Acquisition Procedure
of Employee Inventions
UM fully acquires the invention, the
continuation of the procedure is
conducted by the primary inventor. The
Dean of the university member decides on
commercial exploitation.
1. Costs of the acquisition procedure are
financed entirely by the inventor or faculty
from funds of the group(s) that created the
invention.
2. Costs of the acquisition procedure are
financed in a limited extent by the inventor or
faculty from research grants of the group(s)
that created the invention (at least 40 % of
costs). The remaining amount is financed by
UM from relevant system resources.
3. Costs of the acquisition procedure are
financed entirely by UM from relevant system
resources.
The decision on full or limited acquisition
is made by the Rector on the basis of the
opinion of the Committee for the
preparation of opinion in invention
acquisition procedure, which is
formulated at the request of the
Technology Transfer Office. The Rector
decides on the commercial exploitation.

13. Question 4:
Benefit sharing?
How are revenues from research
commercialization shared among
inventors, institute or department,
university and government or
funding agency?
10key Questions
for Establishing a successful IP Policy

14. Distribution of the revenue
arising from commercial exploitation
Attention!
Irrespective of the above manner of distribution, UM, the relevant faculty and the inventors
may agree on a different manner of distribution in a special agreement.
Financing
structure
Share belonging
directly to the
inventor
Share belonging to
the faculty or
research group that
created the
invention
Share belonging to
UM and the
Rector’s fund
Type 1 65 % 30 % 5 %
Type 2 50 % 20 % 30 %
Type 3 40 % 25 % 35 %

15. Question 5:
Is private funding
for defined research projects
permitted?
If so, under what conditions and approval
process? Who owns the IP in such cases?
If the university or R&D institution owns
the IP, what kind of licenses (royalty free,
royalty bearing, exclusive, non-exclusive
etc.) would it be willing to grant?
10key Questions
for Establishing a successful IP Policy

16. Question 6:
Options for
commercialization?
What choices do universities and R&D
institutions have for
commercializing their research results?
Does the university or R&D institution want to
encourage entrepreneurial activity or not?
10key Questions
for Establishing a successful IP Policy

17. Commercial exploitation
of the invention
When concluding R&D agreements, the parties are obliged to ensure adequate financial
implications deriving from the creation of potential IP.
The parties typically have to agree on royalty payments determined on the basis of the net
sales figure of products or services deriving from the invention.
Attention!
Derogations from the above mentioned principle are possible only with the written consent
of the Rector.
An inventor who, by UM's order, participates in research work funded by non-budgetary
contracting entities, the consequence of which is the created employee invention acquired
by UM, is entitled to a reward in the net amount of 2.500 EUR.
UM may also benefit from the invention by establishing spin-off or spin-out companies
exploiting the invention.

18. Question 7:
Who manages the IP &
technology transfer?
Is there a TTO, outsourced company,
government entity, IP Hub or a national
IP Office?
Who negotiates licenses with outside parties,
reviews employee contracts, manages invention
disclosure procedures, reviews sponsored
research proposals, manages royalty sharing,
establishes and manages spin-off companies …?
10key Questions
for Establishing a successful IP Policy

19. Services of TTO
 Innovators support (assistance in the implementation of innovative ideas)
 Protection of IPR and management of IP
 Commercialization
 Assistance in establishment and development of spin-offs
 Organization of conferences, workshops and trainings
 Execution of independent and partnership projects

20. Question 8:
How to afford the cost of
protection and
maintenance of IP?
Does the university or R&D institution pay the
expenses of protection and maintenance of IP?
In the case of government or private sponsored
research, who pays for these costs (e.g.
registration, attorney’s fees, maintenance etc.)?
Is there a limit to how much the university or R&D
institution will spend and what kinds of inventions
it will fund protection for?
10key Questions
for Establishing a successful IP Policy

21. 0
100
200
300
400
500
600
700
800
900
2009 2010 2011 2012 2013 2014
Year
Funds(1000EUR)
TTO Activities Funding in Slovenia

22. • Maribor
• Koper
University of Maribor
University of Ljubljana
Jozef Stefan Institute
National Institute of Chemistry
National Institute of BiologyUniversity of Primorska
TechnoCenter UM
Science & Research Centre of Koper
Center for Technology Transfer
Consortium for TT at PRO in Slovenia
Center for Technology Transfer & Innovation

23. Question 9:
How are conflicts-of-
interest and commitment
handled or prevented?
May a professor or researcher accept additional
private income for projects that may require time
away from the organisation?
Does the organisation permit professors to consult
on their own or take a leave of absence?
Can the professor or student use facilities of the
university or R&D institution for private research
activities?
10key Questions
for Establishing a successful IP Policy

24. Question 10:
How should scientists be
encouraged and motivated?
What kind of incentive schemes could
foster not only research but also
innovation activities?
For example, staff training on IP knowledge,
financial incentives or personal career
development etc.
10key Questions
for Establishing a successful IP Policy

25. Recommendations
1. Consider and keep in mind the particularities of your institution (there is no “one size fits
all” approach to IP management)!
2. The IP Policy has to be adapted in a manner that the institution is able to identify
emerging inventions efficiently, asses and manage disclosed inventions in a systematic way,
and addresses grand challenges (IP Policy has to be flexible and adaptive, i.e. able to
evolve in response to changing circumstances.).
3. Provide funding aimed at bridging the gap between embryonic research results and
demonstrations of PoC that would stimulate market exploitation (e.g. special funds can be
established by leveraging proper (inter)national grants.

26. Contact data
www.tehnocenter.si
Anton Habjanič, D.Sc.
info@tehnocenter.si
+386 2 2355 344
TechnoCenter at the University of Maribor
Slomškov trg 15
2000 Maribor
Slovenia
Direct link to the Rules:
http://www.um.si/en/research/intellectual-property/Pages/default.aspx
Thank you for your attention!