Brazilian University Leads the Way in Patent Licensing
State University of Campinas signs a record 9 license agreements involving 22 patents in 6 months, a record for Brazil.
Over the first six months of the year, INOVA – UNICAMP, the Innovation Agency of the State University of Campinas, established in July 2003, has signed a record 9 license of use and technology transfer agreements with private companies. The agreements provide for the commercialization of 22 technologies for a period between 10 and 15 years. Although patent applications have been filed in respect of all these technologies, so far none has matured into a granted patent.
The number of patents that INOVA transferred to the market in 6 months, corresponds to 3 times the number of licenses signed over the entire history of UNICAMP. The 7 patents licensed by UNICAMP up to the end of 2003, will provide R$1 million in revenues over a 10 year-period. With the new license agreements made from January to July 2004, UNICAMP expects to receive, from the fifth year, R$14 millions per year.
In addition, by the fifth year, UNICAMP expects to be managing 100 license agreements, which will place UNICAMP at the same level of some of the large and most successful universities in the world.
The record performance by UNICAMP proves the importance of the project for the establishment of INOVA, an institution designed to strengthen the links between the university and the market. The success of INOVA has encouraged other Brazilian universities to discuss with UNICAMP in order to learn about the management model used. In this regard, there is a possibility, still under study, of creating an infrastructure at UNICAMP to support other universities as well as small and medium-sized companies, in areas relating to the management of intellectual property.
The results obtained by INOVA were also considered impressive due to the innovative model applied. The proposal of UNICAMP’s Dean, Carlos Henrique de Brito Cruz, on systematizing intellectual property (IP) management, has redefined the way Brazilian universities deal with their IP. The market orientation and marketing skills of INOVA are also responsible for the large number of agreements signed.
The negotiation of a patent license is a complex task. The model of the contracts used by UNICAMP includes the development of the patented invention into a marketable product and the license to use the invention within the same agreement. This is an important aspect, since it is much easier to negotiate at the beginning of the project, rather than later, once the invention has been developed and there is a marketable product with a good expectation of revenues.
UNICAMP’s license agreements are often based on royalties, which vary between 2% and 7%, on the gross income or the net income. Each case has particular issues. All contracts include royalty auditing, in order to confirm if the sale results presented by the licensees are correct.
One third of the royalties received by UNICAMP are distributed among the inventors, in order to promote new inventions and innovations.
The period required for developing a marketable product from the patented invention varies from patent to patent. Patents in the medical field are the ones that take longer to be developed into marketable products.
INOVA has 30 people, not all of them dedicated to technology transfer. The human resources of the technology transfer office (TTO) of INOVA include: 1 Director, 2 part-time technology transfer agents, 1 student responsible for patent analysis, description and payments control, and 1 student responsible for marketing analysis. INOVA does not have a lawyer dealing exclusively with IP issues. The lawyer is currently shared with other 2 areas of work of INOVA, namely: 1) partnership development and 2) incubator and technology park for technology-based companies.
The companies to which licenses have been granted include:
- Cristália (São Paulo – SP) - pharmaceutical industry. The 2 licensed patent applications cover anesthetics with controlled liberation.
- Scitech (São Paulo – SP) – surgery instruments industry. The 6 licensed patent applications present new formulations for stents coaching.
- Usina São Francisco (Sertãozinho – SP) – agribusiness industry. The licensed patent application describes a method for sugar cane processing and extraction of its sub products.
- Diagnósticos Laboratoriais Especializados (Rio de Janeiro – RJ) – genetic analysis. The licensed patent application describes a method for genetic death detection.
- Feldmann (Manaus – AM) – kits production. 1 licensed patent application was about kit formulation for genetic analysis.
- TechFilter (Indaiatuba – SP) – environmental treatment industry. The 8 patent applications licensed are concerned with environmental treatment.
- Safe Kif (Senador Canedo – GO) – consumer products industry. The licensed patent application describes safe products for kids and old people transportation in vehicles;
- TechChrom (Campinas – SP) – chemical analysis automation. The licensed patent application involves a system that allows for the controlled transfer of fluids.
- Steviafarma (Maringá – PR) - food and drug industry. The licensed patent application describes a process for soy isoflavones extraction.
Prepared by Rosana C. Di Giorgio, Intellectual Property Director, INOVA – UNICAMP