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University-Industry Engagement Advisor

International research partnerships bring solid benefits for TTOs

By Jesse Schwartz
Published: November 14th, 2018

Commercializing discoveries made under international research collaborations with other universities is, of course, more of a hassle than similar deals with domestic partners — because of differences in language and legal systems, and even in expectations about how transferring technology to the commercial marketplace should proceed. But TTOs that have established international arrangements are adamant about at least one thing: It’s worth it. Students and faculty in both countries benefit from the cultural and business experience, universities gain global scope and new opportunities, and economies improve as new products and new companies are created, they report.

“There can be significant differences in how commercialization works in international research collaboration,” notes Bill L. Brizzard, PhD, executive director of the Innovation and Commercialization Office at Indiana University-Bloomington. For example: “Just like in the United States,” he points out, “the international institution and the international inventor may have vastly different ideas about how or whether to commercialize. It can vary greatly.” In fact, he adds, “in some countries, the principal investigator may or may not choose to work with the university technology transfer office. That’s very different in the United States.”

The regulatory framework overseas, without the U.S.’s incentives and requirements contained in the Bayh-Dole Act, can also complicate cross-border commercialization efforts, as can the obvious challenges of language and cultural differences.

The potential challenges can seem daunting, Brizzard acknowledges. “You could have a situation with an inventor who may or may not be under any obligation to work with his or her institution, and who may or may not have English as his or her primary language, and who may or may not know anything about commercialization. That can make it very challenging.”

Intellectual property issues can be even harder to navigate, Brizzard adds. “Policies on intellectual property in different countries and at different universities can vary,” he says, which can wreak havoc when trying to draft an agreement.

Tom Iseley, PhD, a professor at both Louisiana Tech University and China’s Xi’an Jiaotong University and associate director for International Operations at Tech’s Trenchless Technology Center, notes that IP “must satisfy each organization’s requirements.” The critical issue of whether U.S. researchers can still publish “depends on the funding source,” he says.

Michael G. Szarka, PhD, director of research partnerships at the University of Waterloo, points out that his school has an inventor-owned IP policy; thus in any international deal “we try to obtain freedom of choice for the researchers whenever possible, but it’s fairly common that the primary institution wants to manage the IP, and in those cases we usually agree that our inventor should be treated equivalently to inventors from the host institution.”

There can also be problems with legal issues, confidentiality, cybersecurity, and, in particular, currency differences, says Rick Van Kooten, vice provost for research at Indiana University-Bloomington. “I have been in collaborations where the exchange rate between currencies is quite important,” he explains. “If funding is, say, in USD, but services, equipment and travel are in some other foreign currency, it can be difficult to budget if there are wildly fluctuating exchange rates. One country may benefit while the other country is penalized.”

“Trying to determine governing laws and to determine when local laws govern is and will continue to be a challenge,” observes Szarka. “Often, funding agencies require the statutes that apply in their own jurisdiction to flow down to collaborators located in different jurisdictions — and sometimes these statutes may conflict with local laws. Funding originating in the U.S. can be particularly problematic as the U.S. has more restrictive statutes on the flow of IP rights than most other countries. There are ‘America-first’ provisions that mean jumping through a lot of hoops to commercialize anywhere else.”

If international research and commercialization were as difficult as that makes it sound, however, no one would be doing it, and tech transfer leaders say none of the challenges associated with working on international collaborations is insurmountable.

A detailed article on international commercialization partnerships appears in the October issue of Technology Transfer Tactics. To subscribe and get the full article, along with the publication’s subscriber-only, 11-year archive of best practices and success strategies for TTOs, CLICK HERE.

International Collaborations and IP Protection is a three-session distance learning collection that helps you tap into international partnering opportunities while also ensuring key issues surrounding IP and other contract terms are appropriately addressed.

For complete details, CLICK HERE >>

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