Letter from the Executive Director

ISSUE TD.01 JAN 2015
Intellectual Proper ty and Technology Transfer ’s newsletter
P2 Why IP matters in the
knowledge-based
economy
Impacts of the new
QF IP Policy
Dr Erik Stenehjem, Executive Director of IPTT
Letter from the Executive Director
We’re happy to announce that your
Intellectual Property and Technology
Transfer office is staffed and open for
business. Since the announcement
of the QF Board’s approval of the IP
policy in April, we have received a
surprisingly large infusion of new
inventions from QF and the branch
campuses. We have also been contacted by an unanticipated number
of other Qatari entities looking for
help in dealing with their IP. We have
been asked by Qatar University and
the Hamad Medical Corporation to
take on the responsibilities for the
management and commercialization
of their IP. Other research institutions
and private petrochemical companies
have also sought our advice and assistance.
amples that you will read more about
below include evaluating all existing
QF IP and loading all associated records, disclosures, patent filings and
granted patents in our new IP management system. As an inventor or
manager, you will be provided access
to this system to monitor the progress
of your inventions as they move from
disclosures to patents to licenses. At
present, we have 160 + innovations
under management with 86 of them
in the patent application stage.
If we are to effectively support the
growth of a knowledge-based economy for Qatar, we need an efficient and
structured way of managing and leveraging knowledge in our R&D activities. We are excited to be able to offer
(IAM) Intellectual Asset Management
In this first issue of IP Matters, we’ll capabilities to researchers and our
share with you examples of what your stakeholders in Qatar. Making knowlIPTT office has been doing. Some ex- edge and intangibles easier to man-
age and package into well-structured
commercial offerings for local and
global actors will improve QF’s commercialization ability and increase the
value for licensees and customers.
We will also share with you a couple
of success stories and descriptions
of activities of some of the technologies that we are currently commercializing. At present we are actively
marketing 50+ of them and we are in
licensing discussions or active negotiations on 10+.
In November we conducted our first
training program, a full 2-day session,
on IP for QF staff with the outstanding
help and assistance of QFRD Communications. We had to turn away
dozens of interested staff because
we underestimated the demand and
lacked the facilities to accommodate
them all. We are told that there are
P3 QF Innovation key
performance indicators
on the rise Winner
IPTT involves inventors
and managers in key
IP decisions through
‘Q-Meetings’
P4 QF technologies
reaching global markets
P5 IPTT establishes a list
of service offerings for
research community
P6 IPTT takes first steps
towards implementing
intellectual asset
management for
researchers
P7 IPTT collaborates
with R&D’s Office of
Education, Training &
Development to deliver
IP training as part of
the R&D Education
Workshop Series.
now 40 to 50 staff signed up for the
next session and it hasn’t even been
announced yet. We are now planning
a much larger session for early February and if there is still an unmet need,
we will hold more.
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In knowledge-based economies,
it is the stimulus of technological
innovation from research rather
than the simple accumulation
of capital, assumed by older neoclassical models, that explains
growth. To illustrate this, and to
underscore the role played by
intellectual property, let us share
with you evidence from economic growth models. Sixty years ago
Robert Solow won the Nobel Prize
in economics for “discovering”
that technology innovation was
the essential determinant of economic growth. Thirty years ago,
Paul Romer, an American economist and entrepreneur, constructed a formal economic model of an
economy to explore the processes and factors by which growth
arose from technology innovation. That growth, according to
Romer, is driven by the accumulation of new innovations that lead
to enhanced efficiency in goods
that make goods. Key to this is
the characteristics of the new innovations. According to Romer,
for the growth to take place the
technological innovation behind
the new goods must have the
unique properties of being partly
excludable and non-rivalrous.
These are precisely the characteristics imposed on all new innovations by patents. Patents permit
new innovations to be partly excludable from use by others thus
creating a property right. This
property right in the innovation
makes it possible for the inventor
or owner to earn pure economic
rents (i.e., profits) on its sale and
use which contributes, through
the market place, to the growth
of a nation’s wealth and welfare.
The ability to generate wealth further stimulates research leading
to more innovation. This is the virtuous cycle that leads to innovations begetting more innovation
which leads to further increases in
productivity, output and economic growth.
It is Qatar’s vision to build a
knowledge-based economy. As
new patented inventions evolve
from research and raise productivity in knowledge-based economies, research is expanded and
still more goods and services are
produced. Identifying, protecting
and marketing Qatar’s inventions
is essential in bringing about its
knowledge-based economy. Qatar’s IP policy was tailored to maximize the accumulation and utilization of the new inventions, to
put them to work in the broader
economy and to grow an economy based on technological innovation.
Impacts of the new
QF IP Policy
In April of 2014, the QF board
adopted a new QF IP policy that
promotes greater QF ownership
of IP from R&D investments and
adopts a centralized IP management approach. The Policy is having success, and cultures of IP asset
creation and protection are now
being adopted throughout QF.
policy’s centralized IP management
approach is ensuring uniformity,
professionalism and impact. Now,
IPTT is managing over 160 innovations, 86 patents applications and
tracking over 20 QF innovation and
commercialization metrics. In addition, IPTT is actively marketing over
50 inventions, with over 10 IPs in
active negotiations for licenses to
QF now owns IP in all new QNRF commercial businesses.
NPRP grants, research collaborations and renewing branch cam- The impact of the policy is also
pus contracts. Such ownership gaining attention outside of QF, as 2
positions are key to ensuring the Qatari organizations have requestdevelopment of a valuable pipeline ed that IPTT manages their intellecof IP for future investments, par- tual property and several others are
ticularly in Qatar’s research grand establishing IP management prochallenge areas. In addition, the cesses based on IPTT’s model.
What we pay for, we own. Ownership of
IP rights is critical to building a knowledge-based economy.
IP revenues are shared generously with inventors. QF appreciates and rewards the
inventive genius of its staff.
IPTT assistance is available throughout the
research process to help identify partners,
customers and market strategies.
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QF Innovation key performance indicators on the rise
Building a strong intellectual property portfolio is key for attracting
leading researchers, commercial
partners and business ventures in
Qatar. IPTT’s IP Management team
tracks innovations throughout the
R&D life cycle, from creation to market. With the establishment of a
central IP office, QF is now able to
maintain key statistics, such as invention disclosures submitted, patents filed and issued, licenses granted and products commercialized.
Since the start of the fiscal year in
July (FY14-15), QF has already received 31 invention disclosures,
showing year over year growth
The QF IP management process begins with online disclosure submissions. IPTT’s IP Management team
receives disclosures through ‘Sophia’, the QF IP management system.
Disclosure forms exist for inventions,
software and creative works reflecting the diversity of research and
knowledge creation activities across
QF centers and institutes. The majority of disclosures relate to inventions
and IPTT is managing these through
what we call ‘Q-Meetings’.
Q-Meetings are held monthly to
review and make key IP protection
decisions related to invention disclosures in one of 3 portfolios; Energy
& Environment, Biomedical and ICT.
Each portfolio is assigned to a core
team or ‘Q-Team’ which comprises representatives from key stakeholders, IPTT’s commercialization
managers, IP and market analytics
bringing QF’s total IP portfolio to
over 160 records. QF has a total of
86 patent applications and 6 issued
patents (see graph). IPTT is also
pleased in the broad participation
among all branch campuses and
participating institutions. Inventions disclosures are now being received from QEERI, QCRI, TAMU-Q,
CMU-Q, WCMC-Q, Qatar Robotic Surgery Center (QRSC), Qatar University
(QU) and Hamad Medical Corporation (HMC). As the portfolio continues to grow, IPTT will especially be
tracking IP developed within QF’s
grand challenge areas to identify
synergies and new collaboration opportunities.
team. Each month, IPTT brings new
invention disclosures and key patenting decisions to the appropriate
Q-Team for decisions, ensuring diligence is performed, analyzing new
disclosures from multiple aspects,
including patentability, ownership
and commercial potential. Once
the decision is made to protect an
invention, the assigned commercialization manager works with the
inventor to begin marketing and
commercializing the invention. QF’s
Energy and Environment Q-Team
has reviewed over 50 invention
disclosures, and made decisions to
patent 19 of those in the areas of
desalination and solar energy. QF’s
Computational Research Q-Team
is currently reviewing intellectual
property related to over 70 inventions and making strategic patent
nationalization decisions. Although
Q-Teams are new, most of the core
teams have been organized to ensure QF makes timely and informed
patenting decisions. QF inventions
in need of proof of concept or incubation support are reviewed in the
QSTP Q-Meeting.
For more information on QF’s IP management and technology transfer process, see the Inventor’s Guide available
on www.qfrd.org/iptt. To submit an
online disclosure, visit www.qfrd.org/
iptt and go to ‘Submit an Invention’.
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QF Technologies Reaching Global Markets
IPTT’s IP Commercialization team’s
efforts have expanded beyond national boundaries. The team consists
of five members and is involved in
the active global marketing of more
than 50 technologies. Their efforts
involve balancing the resources of
time, money and third party assistance to understand and pursue the
most promising markets for those
technologies.
The technologies fall within a wide
range of technical fields: from novel molecular biomarkers to medical
devices in the life sciences area;
from new downhole drilling machines to desalination systems in the
energy and environment sector; and
from smart phone apps to Arabic social media tools in the information
computational technologies field. A
number of examples of QF technologies with commercialization activities underway include:
Technology 1 - Reconfigurable Antenna - A substantial effort has been
put into the technology “Reconfigurable Radio Direction Finder System”
invented by Dr. Hassan El-Sallabi, Dr.
Mohamed Abdullah and Dr. Khalid
Qaraqe from Texas A&M University in
Qatar (TAMU-Q). The invented system is a novel antenna that is able
to estimate the direction of arrival
signals to the receiver. A leading international firm in test and measurement equipment has expressed interest in the technology. Indeed, after
securing the proper confidentiality
agreements with the company, Abeer
Al-Hammadi, IP Commercialization
Manager, and the case manager for
this technology travelled alongside
the main inventor Dr. El-Sallabi, to
Rome to meet with company and discuss the details of the proper possible
collaboration.
Dr Shehab in his research labs at Texas A&M University Qatar
Technology 2 - Novel Oil Drilling
Tools - The System Engineering &
Energy Conversion Lab (SEEC) at TAMU-Q is led by Dr. Shehab Ahmed.
The primary research interests of
members of the SEEC Lab are: energy conversion, system design, and
mechatronics. Recently, Dr. Shehab’s team has proven to be quite
innovative in providing engineering
solutions to real life problems. One
example is that SEEC was funded
by RasGas, a local LNG company, to
investigate various downhole drilling technologies while engaging
students at TAMU-Q in the field of
subsurface technologies. This group
developed a passive yet flexible and
strong design tool to navigate holes
in horizontal wells based on efficient and cost saving manner. The
result of this effort not only provided the students with technological
and academic experience but now
has evolved into an entrepreneurial
exercise. Over the past year John
McEntire, Director of IP Commercialization shepherded the technology
into a commercial relationship. IPTT’s first license arrangement was
completed at the end of the sum-
mer with an Option Agreement with
a UK based oil and gas engineering
firm. The firm is currently using this
option period to learn more about
the technology and how they may
be able to develop it for their product line. Should this trial option period prove useful the next step would
be a license to use the technology
for an actual product. The tool then
could be available for the market in
Qatar and around the world.
Technology 3 - Arabic Electronic
Reader – The Qatar Computational
Research Institute (QCRI) has been
busy in a number of different areas. Recently Dr. Ahmed Ali and Dr.
Stephan Vogel developed the Jalees
Reader which is an electronic book
reader that renders books in PDF
and epub format; supporting epub
2.0 and epub 3.0, the software is optimized and developed for iOS and
windows 8 devices. The reading direction discriminator automatically
detects the writing system by recognizing the language of words used
in the publication. Jalees is currently being used in over 40,000 devices
in certain SEC (Supreme Education
The drilling tool
Council) approved schools in Qatar,
eventually to be implemented in all
SEC schools. Marketing plans are
currently being developed to take
this technology to the Arabic speaking world. The wide usage of Jalees
throughout Qatar schools should
be a great proving ground for this
technology and should allow us to
tailor this for the GCC region and beyond. IPTT is currently assessing the
market to generate the appropriate
market scheme.
Technology 4 - Virtual Migration
- Another computer program technology from QCRI developed by Dr.
Simon Ponsford’s team while employed at QCRI prioritizes and allocates resources for distributed computer processing. This novel method
of the migration and redundancy of
data between devices is also managed using scalable implementation. There are currently 6 patents
for this technology and license negotiations are currently underway
with the Dr. Ponsford’s current firm
in the UK. This looks like an opportunity to develop a winning scenario
for all parties.
4
In economies like Qatar, which aims
to take a leap from carbon-based
economy to a knowledge-based one,
a targeted and market oriented R&D
approach is important for achieving
success. In the past year, IPTT collaborated with 5 specialty firms and
procured 4 world class databases
to broaden its capabilities in patent
search and market research services.
IPTT’s management team has established a core analytics team which is
growing as the demand grows for its
services.
IPTT supports over 30 research projects in FY14-15
2
1
Market Screening
IP Due Diligence
Company Due Diligence
Personnel Due Diligence
Intellectual Asset Assessment
3
1
25
During the last 6 months, IPTT has
conducted 25 Market Screenings
which have helped research groups
understand the market background
for their inventions and modulate
the research according to industry requirements. IPTT also helps research
groups identify the ‘white space’
through patent landscape analysis.
Apart from being beneficial in the early stage of research, a patent landscape
can add value and provide insight at
every stage of research. It provides a
list of current and future competitors
as well as insight into the competitors’
activities, including current and future
product offerings. In addition, the patent landscape can identify opportunities for R&D and patent investments,
help to benchmark your solutions with
competitors, clarify the strength of
your patents, and identify potential targets for acquisition or collaborations.
At each stage of the research process, IPTT can help researchers answer the questions the following
questions and through our services
listed on page 6
Concept stage
Who is my competition?
Are there others working on
similar topics?
What publications and patents are in this area?
Where is the white space
for my research area?
Whom should I collaborate
with?
R&D Stage
Is this idea technically
feasible?
Is this idea Novel?
Would industry accept
something like this?
What is the best possible
way to protect my idea
- patent/copyright/trademark?
I want to share my idea
with industry; can you help
me get an NDA?
Commercialization Stage
What are the different markets for my technology?
What is best market strategy for my technology: Start
up or licensing?
Who could be my potential
customer/licensee?
5
IPTT takes first steps towards
implementing intellectual asset
management for researchers
IPTT has received its first training in Intellectual Asset Management (IAM) as
it begins the shift towards working more proactively with Qatar’s researchers. The Office is working at implementing IAM in its invention disclosure
management and due diligence processes. The two-day IAM workshop,
which took place on 3rd and 4th December, focused on developing IAM capabilities and how the methodology can be applied in its daily activities. To
summarise the shift, we’re moving from a reactive way of working to a more
proactive one whereby we identify, manage and package all of the valuable
assets being created by researchers – that means patentable inventions as
well as other valuable assets such as data or software tools that can help researchers build stronger collaborations and strengthen funding applications
and licensing potential.
What is intellectual asset management and why should you care?
Think of IAM as a methodology for improving the quality and utilization of
research output. You may be pleasantly surprised to learn that it is currently
at the cutting edge of research utilisation and commercialisation practice
and that it is already being implemented by top research groups, universities, research institutes, technology transfer organizations, and companies,
from start-ups to multinationals.
How does IAM relate to Qatar’s goal of becoming a knowledge-based economy?
Glad you asked. As long as we’re working towards an innovation-driven
economy, then control over knowledge is critical. To be able to control and
leverage Qatar’s research outputs, we need a streamlined, efficient, and
structured way of understanding what has been created that’s most valuable, and yes, you said it, controllable. Control over and retention of the
knowledge generated by our researchers will be key for QF.
So what’s in it for you?
If you are a researcher, research manager or funder, then there is a lot to be
gained from working with IPTT on intellectual assets. We can help you to
increase invention disclosures and patent filings, visualise research portfolio
strengths, and support synergies and collaboration across research teams
even within the same institution. See some of the main benefits in the
image below and come and talk to our Analytics team, part of the IP Management group, if it sparks your interest.
OUR SERVICES
Agreements Management
Research Collaboration
Non-Disclosure Agreements
License Agreements
Invention Disclosure Management
Patent/Copyright/Trademark Filing
Technical Feasibility Studies
Patent Searches
Patentability search
Freedom to Operate search
Invalidity searches
Landscape Analysis
Identification of white spaces for research
List of patents/publications in the area
Identification of potential research partners
Identification of potential competition
Market Screenings
Gathering Industry Opinions
IP Due Diligence
IP strength analysis
IP benchmarking
Commercialization Assessments
Identification of commercial opportunity
Identification of potential customers/licensee
Identification of market opportunity
Intellectual Asset Management (IAM)
Capture and assess Intellectual Assets (IA)
Identify utilization opportunity
Technology Scouting
Technology Marketing
Partnering Assistance
IP Negotiations
6
IPTT collaborates with R&D’s Office of Education,
Training & Development to deliver IP training as part
of the Research & Development Workshop Series
IPTT held its first 2-day Intellectual
Property and Technology Transfer
workshop at the Qatar National Convention Center, on November 25th
and 26th. The two day workshop was
created to provide participants with
knowledge on all aspects of intellectual property and technology transfer
as it relates to the research done at
Qatar Foundation. Over 40 attendees representing centers across QF,
including QBB, R&D, QEERI, QNRF,
QSTP, QCRI, and QBRI participated in
the workshop. Topics such as Understanding Intellectual Property (IP), IP
Landscaping to Support Research,
and Intellectual Asset Management
were presented by IPTT experts. The
second day focused on the commercialization aspects of IP, including
marketing, licensing, due diligence,
and even how to make an “elevator
pitch”. Attendees participated in engaging exercises, which were both
fun and informative, throughout the
workshop. Due to the tremendous
response from this workshop and the
enthusiasm expressed by attendees,
IPTT will be offering similar customized workshops for interested QF
centers. See our upcoming events for
more news on this.
IP & Technology Transfer’ training workshop held on 25th and 26th November in QNCC
UPCOMING EVENTS
If you’d like to participate in one of our workshops, look out for more information on the following
events or contact us on [email protected]
February 2015 – IP & Technology Transfer Workshop – A workshop covering the fundamentals of IP, its role
in the knowledge-based economy, QF’s IP policies and procedures and the IP commercialization process
March 2015 – Software Workshop – A workshop focusing on the different aspects of managing and commercializing software IP
March 26th 2015 – Inventors Recognition Ceremony – An awards ceremony recognizing the contributions
and achievements of leading QF inventors
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