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					                IP & Academia
         (Universities, R&D Institutes)

                   Case Study IMEC

  ADAPTING TO CHANGING WORLD
By:
Dr. ir. Vincent Ryckaert, Senior European Patent Attorney, IP Business &
Intelligence Director, IMEC




  Overview

     •   Some general considerations on IP (2)
     •   Short introduction on IMEC
     •   Basic IP model and the team behind this
     •   Some policy discussion
         – Place of IP in contract/collaboration
         – Concept of R&D life cycle
         – Discussion on funded R&D (industry, academia opinion)
     • Challenges for IMEC IP model




                                                                      2
    Some General Consideration on IP I - scene
    • Different “Environmental” Actors on IP
       – Governments (context)
           • Stimulating IP creation (incentives, KPI, ..)
           • Creating new instruments (Community Patent, Patent Court,
             laws of enforcement)
           • Public Policy driven
       – Patent Agencies (EPO, USPTO) (protection)
           • Focus on quality
           • More workload driven
           • Introducing procedural restrictions (earlier decision taking)
           • Rather disconnected with IP use
       – Courts (enforcement, contract disputes)
           • Getting more specialized
           • Creating cases law
           • Much more context driven
    • You need to be “aware” of all these (not always aligned) evolutions

                                                                                      3




    Some General Consideration on IP II - complexity
•   IP
     – Acquire – Protect
     – License (product)/Sublicense (cross license)
     – Enforce – Sue
•   Processes
     – Business
     – Due Diligence
     – Management
•   Types of IP (patents, know-how)
•    Rights ((co-)ownership, (exclusive) ownership) and effect thereof
                     In-licensing                           Sublicense/right to sue
                                                    L
                 L                                                                L
    P                                P      Me                 P     Partner

                 S                                  S
                                                                                  S
                                    Sue or cross-license

                                                           Sue or cross-license
    You must master this complexity

                                                                                      4
  IMEC 1984-2009: 25 years of R&D excellence

                1984
Established by state government of Flanders
   in Belgium, as non-profit organization


                2010
    One of the largest independent R&D
  organizations in nanoelectronics built on
       strong industrial partnerships


                                               277 M€




                                                                                                    5




  IMEC Group                      -      IMEC International



                                                      imec-nl

                                                                                    Rep. in Japan
                               imec-leuven
                                                                    Rep. in China
  Rep. Office in US
                                                                        imec-taiwan




                                           IMEC vzw: Research Organization in Leuven/Belgium
                                      IMEC-NL: Research Organization in Eindhoven; linked into HOLST
                                       IMEC-Taiwan: Rep. office/in the future: Research Organization
                                             IMEC inc: Rep. office as legal entity in California
                                              Representation Offices in Shanghai and Tokyo


                                                                                                    Maa
                                                                                                    6
                                                                                                    rte
                    Clean Room 2                      IMECAMPUS
                     3200 m2 Clean Room
                      300 mm wafer size
                    < 32nm CMOS process
                         development




   Clean Room 1
    4800 m2 Clean Room
      1750 m2 Class 1
     200 mm wafer size
130nm CMOS pilot line, MEMS,
packaging & interc., PV, bio, …                  Total: 8000 m2 Clean Room
                                                                         Maa
                                                                         7
                                                                          rte




IMEC overall Program Structure



        Programs related to scaled CMOS
             “Core CMOS Program”
                                  (More Moore)




                    Programs related to
                ‘Heterogeneous Integration’
               Application Oriented Programs
                     (More than Moore)


                                                                          Maa
                                                                          8
                                                                          rte
               More-than-Moore Programs
               Heterogeneous Integration

                                               Green Radio / Smart System Design
                                                                                           Hyper-            Custom
                     Cognitive             60 Ghz       Embedded          MPSOC
                                                                                          Spectral             App
                      Radio                Comm.         systems         compiler         imaging             Design


                                Human++ :            Body Area Networks
Application Driven




                                                                                                     CMORE
                                                                 Low
                       ULP            ULP       MicroPower
                                                                Power       Smart
                     Wireless         DSP       Generation                 Implants                    CMOS
                                                                Analog
                                            Life science (biomedical)
                                                                                                RF / Mixed Signal
                     Functional                                               Bio
                                      Bio            Micro     Lab-on-                          BiCMOS /RF-IPD
                        nano                                               Electronic
                                    sensors         Fluidics     Chip
                      systems                                              Systems               Si Power FETs

                                     Photovoltaics                        Power & LED
                                                                                                      3D TSV
                          Si based              Organic
                         Solar Cells           Solar Cells
                                                               CPV           GaN
                                                                                                    SiGe MEMS
                                                                                                    SOI MEMS

                                       Large Area Electronics                                      Si Photonics



                                                                                                                       9




                             LamRESEARCH


                                                                                        STMicroelectronics




                                           The World’s Largest Industry Commitment
                                                 to Semiconductor Research
                                                                                                                           10
IMEC as a “Transformer”

                                                                  pr       K
                                                                       o t no
                                                                          ot w
                                                                            yp led
                                                                              es ge
R&D cost



                                                                                ,f    ,
                                Industry                                          ea in
                                                                                    si sig
                                                                                      bi      h
                                                                                         lit t,
                                                                                            y
                                                                                           ,…
                                                                                                  Long term
                                                                                                  Exploratory

                                            Fo
                                              cu
                                                 s,
                                                    ne                         Universities
                    Short term                        ed
                                                           s,
                   Applications                               …



      Providing focus for universities and basic insight for
                       industrial partners                                 Time to product
                                                                                                            11
                                                                                                            ime




                                                  IP ground rules

           • Open multi-partner model
           • Cost & IP sharing with all Partners
           • Fairness to ecosystem


           • Non-exclusive “use and exploitation” rights (*)
             “semiconductor” products

           •       Technology Transfer via Residents (creating Results jointly with IMEC)
           •       Co-ownership without accounting (for such jointly created Results)
           •       Access to IMEC Background
           •       Access to Material & Equipment: Normal Use clause

           • Achieves non-blocking effect for the Partners
           • Does not disturb ecosystem
           (*)   to make (have made), sell, offer to sell, …




                                                                                                            12
                                                                                                            ime
                    IMEC IP POLICY


 1. Avoiding IP blocking for our Partners
 2. Securing IP Rights for our Partners
 3. Enabling Publications

 Tools:
   Use of (selective) Patenting
   Carefully designed IP model




                                                               Dr.
                                                               13
                                                               ir.




IMEC IP-LEGAL & BUSINESS TEAM 45

 • IP protection team 11
    – 1 Patent Attorney – IP portfolio director
    – 6 IP portfolio managers
    – 2 Formality Officers
    – 2 Patent Information Officers
 • IP-LEGAL team 13
    – Legal Team 8
        • 6 Company Lawyers (2 senior) + 1 Corporate + 1 Venture
    – IP business team 4
        • 1 Patent Attorney – IP business director
        • 3 IP business managers
    – 1 Support Officer
 • Business Team 17
 • Contract Administration 4



                                                               14
                                                               ime
Main contract policy message


• COLLABORATION is about RELATION
• RELATIONS need COMFORT
• COMFORT can be given:
        • if the context of the collaboration is clear
        • if the concerns and position of each party is clear
        • if each party has the means in place to give comfort
• IPR is a tool to structure the interaction
        • no more (emphasize is on the interaction, not on
        IPR)
        • no less (IPR arrangements must be there)
• Formal arrangement in combination with informal
facts/context




                                                                 Dr.
                                                                 15
                                                                 ir.




                  R&D & life cycle –
       From Fundamental Research to Development


  • Own financing (BOF, government donation): no industry
  • Complete government sponsoring (SBO projects, IWT &
     FWO PhD scholarships): no industry
  • European Projects/CELTIC: industry involvement, no
     industry financing
  • IWT Projects: industry involvement and co-funding
     (lower rate)
  • Non-government sponsored consortia
  • Non-government sponsored bilateral R&D
  • Development on Demand
  • Low Volume Manufacturing
  • Transfer and/or IP Licensing and/or Spin-off Creation



                                                                 Dr.
                                                                 16
                                                                 ir.
Managing IP in Funded R&D (FP)
      What can we conclude from (the misuse of) the FP models?

           Concept of Access Rights (License) to Knowledge (FG)
                 Handling of Pre-existing Know-How (BG)
                          Access to source code


 No consensus and even growing divergence
      between Academia and Industry

      Academia tend to block each other

                             Solutions:
                   - take into account different partner goals
        - take into account different mechanism of technology transfer
              - take into account place of FP7 in the R&D life cycle
                         - more project IP management
                        - reasonable IP valuation models
       - different models for different forms of IP (know-how, patents)
                        -pre-existing agreements (pools)

                                                                          Dr.
                                                                          17
                                                                          ir.




                              MAIN MESSAGE
      Finding the Right Balance in IP Rights

      By understanding the goals of the different
                     Partners
    By understanding the position of the contract in
                the R&D Life Cycle

                    This is not about money!
 This is about maximizing transferability of R&D into the
                        market!
 Fair and reasonable compensation is often not a cash cow
                                                                          Dr.
                                                                          18
                                                                          ir.
IP MODEL ANALYSIS

 • BENEFITS
    – Cost sharing of research (infrastructure, people, experience)
    – Use of available funding mechanism for LT, MT research
 • DRAWBACKS - PATENT JOINT OWNERSHIP –
   WORST THING TO DO????
         • Agreement on prosecution (who, how, when, where,
           duration)
         • Use okay – licensing not
         • Licensing
              –   often agreement needed (share of revenue)
              –   no right to sue without agreement (loss of strenght)
              –   non-exclusivity (loss of value)




                                                                                   Dr.
                                                                                   19
                                                                                   ir.




IP MODEL ANALYSIS

 • Why does Industry still like IMEC’s model
    – Comfort with provided prosecution (IP team!)
       • Reasonable coverage
    – Cost sharing
       • IMEC takes its part of the costs and internal operations
    – Comfort in joint ownership model
       • Allows use by industrial partner
       • Allows for sublicensing (e.g. usefull in a cross licensing context)
       • Is an asset
       • Arrangement for sue-ing (e.g. as counter-attack)
    – Comfort that value is preserved (implicit!)
       • No interest for IMEC to unnecessary dilute IP (long-term relation!)
       • Act as a reasonable partner (e.g. restricted rights if no cost sharing)
    – Comfort with valuation
       • Cost based plus approach




                                                                                   Dr.
                                                                                   20
                                                                                   ir.
  Semiconductor Value Chain
 • Desegregation (OEM, IDM, foundry, fabless, IP core providers)

 • Technology Scaling (More Moore)
    –   breaks the traditional design-flow (application, architecture, circuits, devices, technology)
    –   Technology Aware Design/Design for Manufacturability requires more interaction between the
        players at the various levels of the design flow
 • Bottom-up Nanotechnology and More than Moore Technology
    –   more players
    -   more different players (Universities, R&D institutes)
    -   lead to more differentiation/specialization, more IP driven


                         COMPLEXITY OF IP HANDLING
                      (MORE PLAYERS, DIFFERENT MODELS)
                                 INCREASES




                                                                                                  Dr.
                                                                                                  21
                                                                                                  ir.




Changes in Collaboration models
                                     IMEC model

                              program-based R&D collaboration
                      technology transfer or out-licensing (e.g. spin-off)

                                     In-licensing

                              Linear R&D life cycle
        In-licensing from the Universities (becomes increasingly important)

                                technology transfer/joint research/alliances

                                        finding reasonable conditions

                                  Open Innovation
               In-licensing from Companies (acting now as IP licensor)

                            know-how licenses, willingness to license patents

                                         finding attractive conditions




                                                                                                  Dr.
                                                                                                  22
                                                                                                  ir.
IP Questions in this new context

 • Scope of license, in particular sublicense
 • Flexibility, e.g. assignability, transferability (JV)
 • Types of joint ownership (when, how)
 • Comfort (willingness to, option on license, technology
   available) versus Value Creation (free to do so, spin-off
   provisions)
 • Provisions on IP handling in shared research infrastructures
   (contamination, leakage issues) (beyond NDA’s)
 • Trust in or further building professional IP handling
 • Invest in party long-term relationship (above one-time
   and/or individual profit)




                                                                            Dr.
                                                                            23
                                                                            ir.




Conclusion – Industry-Science Relations

 •   Relation
     –   Long-term
     –   Sharing (risks)
     –   Respect (each others role and position)
     –   Trust (and being trust-worthy [professional])
 •   Science to Industry Transfer
     –   Long Life Cycle
     –   Not a single project – but a continuous path
     –   IP management – from the start, careful but realistic
     –   IP as a tool for enabling technology transfer, not as a cash cow
     –   Real interaction [people] instead of contract, IP, …
     –   Governmental funding is a tool, not an excuse




                                                                            Dr.
                                                                            24
                                                                            ir.
 CONTEXT – CHANGING WORLD & IMEC

WORLD
   •       More   IP – better systems, incentives, KPI, ....
   •       More   Enforcement - Seizures
   •       More   Quality or procedural restrictions
   •       More   Links to other Laws (public policy) + Court interpretations
   •       More   Alliances, Other Business Models

IP critical/risky business asset – coupled with content/marketing/finance-valuation

IMEC
   •       More   in-licensing
   •       More   Revenue generation via various alternative models
   •       More   Risk mitigation (compliance, due diligence, FTO, litigation support)
   •       More   Intelligence needed
   •       More   Strategic Alliances needed

IP aspects thereof grow in importance

   Some Present IP evolutions
   Some Organizational Questions




                                                                                         25




 IP Evolutions


    •   Move from joint ownership to complicated/tuned licensing model
    •   Mixed contracts (shared, dedicated, service, exclusive)
    •   Cross Licensing
    •   Right to Sue
    •   Right to purchase
    •   INSITE
    •   Combined INSITE, R&D, EVALUATION, TECH TRANSFER
    •   In-licensing
    •   Liability Support
    •   Quality for contracts
    •   Patent Pools




                                                                                         26
Conclusions

 • IP world is changing
 • IMEC IP model
    – Basic model is a snapshot
    – Basic model has many additional features
    – Future will demand more features
 • IP issues must fit in Relationship Policy
    – R&D life cycle is useful tool
 • Stimulation of IP in Academia
    – Yes (good source), but help structuring
 • More joint programming with Industry
    – Yes (good steering), but avoid dilution




                                                 27

				
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