Identifier
Created
Classification
Origin
04ROME4471
2004-11-24 10:08:00
UNCLASSIFIED
Embassy Rome
Cable title:  

IPR: COMMERCIALIZING UNIVERSITY RESEARCH, ITALY

Tags:  ECON KIPR IT 
pdf how-to read a cable
This record is a partial extract of the original cable. The full text of the original cable is not available.

241008Z Nov 04
UNCLAS ROME 004471 

SIPDIS


STATE PASS USTR FOR JIM SANFORD
HHS FOR NIH BONNY, HARBINGER
USDOC FOR JOHN RAUBITSCHEK
USDOC PASS USPTO

E.O. 12958: N/A
TAGS: ECON KIPR IT
SUBJECT: IPR: COMMERCIALIZING UNIVERSITY RESEARCH, ITALY
WANTS TO ADOPT U.S. BEST PRACTICES


UNCLAS ROME 004471

SIPDIS


STATE PASS USTR FOR JIM SANFORD
HHS FOR NIH BONNY, HARBINGER
USDOC FOR JOHN RAUBITSCHEK
USDOC PASS USPTO

E.O. 12958: N/A
TAGS: ECON KIPR IT
SUBJECT: IPR: COMMERCIALIZING UNIVERSITY RESEARCH, ITALY
WANTS TO ADOPT U.S. BEST PRACTICES



1. Summary: The GOI, hoping to encourage more innovation at
Italian universities, is considering its own version of the
Bayh-Dole Act. The Economist has described the Bayh-Dole Act
as "possibly the most inspired piece of legislation to be
enacted in America over the past half-century." Enacted in
1980, the Bayh-Dole Act allowed universities, rather than the
government, to keep the patent rights to inventions created
with federal research funds. In so doing, the Act
dramatically increased both the number of patents granted to
universities and the rate at which university research is
commercialized into marketable products. In response to an
Italian government request, AmEmbassy Rome co-sponsored a
bilateral meeting and public conference in Venice on the
Bayh-Dole Act. Participants included former Senator Birch
Bayh and Italian Minister of Productive Activities Marzano.
The event neatly emphasized the link between innovation and
protection of intellectual property. The Mission also built
substantial goodwill with the GOI upon which we expect to
draw as we continue to push Italy to improve its anti-priacy
and anti-counterfeiting efforts. End summary.

Background: The Bayh-Dole Act
--------------


2. The GOI has become increasingly interested in boosting
economic synergy between Italian universities and the private
sector. Italian officials are considering the introduction
of legislation, modeled after the Bayh-Dole Act, to make it
easier for Italian universities to patent and license new
technologies developed in campus research labs.


3. Prior to the passage of the Bayh-Dole Act in 1980, the
federal government generally owned the patent rights to
inventions created at universities with federal research
grants. Few of these inventions were ever commercialized,
and, by the late 1970s, the USG owned approximately 28,000
inactive patents. The Bayh-Dole Act allowed universities to
keep the patent rights to such inventions, provided they
share revenue with the individual professors responsible for
the new technologies. As a result, universities and
professors acquired a much stronger incentive to create new
technologies and license their patents, either to outside
firms or to new university-backed "spin-off" companies.


AmEmbassy Rome Co-Sponsors Bilat/Conference.
--------------


4. In 2003, the GOI requested that information exchange on
the Bayh-Dole Act be included as an agenda item in a
U.S.-Italy Memorandum of Understanding on intellectual
property rights. Based on that MOU, AmEmbassy Rome's public
affairs section provided $15,000 for a bilateral meeting and
a one-day public conference. The event took place October
4-5 in Venice, with meeting facilities provided by the
municipal government. Mission funds were used to pay for
travel and accommodations for the following American speakers:

*Former Senator Birch Bayh, principle author of the Bayh-Dole
Act;
*Ann Hammersla, Intellectual Property Counsel for the
Massachusetts Institute of Technology
*Bonny Harbinger, Deputy Director of Technology Transfer for
the National Institutes of Health;
*John Raubitschek Patent Counsel for the Department of
CommercQ; and
*Joel Wiggins, Director o` Incubator at
the Univerhe bilateral meeting Oct for the
U.S. and Ita small group. Maria
Director of the Italian Patent and Trademark
Office, presided over the bilateral. The Italian delegation
included several representatives of Italian universities,
technology incubators, and Confindustria, Italy's primary
business association. In addition, Minister of Productive
Activities Antonio Marzano, Venice Mayor Paolo Costa, Veneto
Governor Giancarlo Galan, and European Patent Office
President Alain Pompidou spoke at the public conference the
following day.

"Not All Technologies Should Be Patented."
--------------



6. At the bilateral, Bonny Harbinger of NIH warned of the
dangers of over-patenting. Not all inventions or
technologies should be patented, Harbinger maintained. The
National Institutes of Health, she said, only files a patent
if patent protection is necessary to attract private sector
investment. Otherwise, NIH prefers to keep inventions in the
public domain. Hammersla also stated that, given the expense
of obtaining a patent, universities must carefully evaluate
the commercial viability of a new technology before seeking
to protect it.

Taxpayers Deserve a "Return" For Funding Research.
-------------- --------------


7. Senator Bayh recalled the economic difficulties the United
States was facing in the late 1970s when Congress was
debating the Bayh-Dole Act. Although U.S. taxpayers were
funding a vast amount of research, Bayh remarked, they were
not receiving any "return," since so few of the resulting
technologies were commercialized. Bayh quoted from a 2002
Economist article which reported that U.S. universities,
thanks to the incentives created by the Bayh-Dole Act, have
increased their patenting by a factor of ten since 1980 and
have "spun off" over 2,200 companies. Most major research
universities now have offices dedicated to licensing
university-owned patents.

Italian Universities Lag in Patenting.
--------------


8. Minister Marzano stated that Italy increasingly realizes
the importance of intellectual property and innovation to
revitalize its economy. Marzano, however, lamented the low
patenting rates at Italian universities. According to
Marzano, while the United States granted over 3,000 patents
to its universities in 2002, Italian universities received
only 77 patents that year.


9. Other Italian speakers identified additional obstacles to
improving academia-to-private sector technology transfer
including: a prevailing belief in Italy that patenting
inhibits academic exchange and promotes secrecy within the
scientific community; the failure of the GOI to encourage
patenting as of part of its research funding programs; a lack
of resources at Italian universities dedicated to marketing
and licensing inventions to the private sector; and Italy's
costly and inefficient patent system.

Goal is Commercialization, Not Money.
--------------


10. Senator Bayh and the other U.S. speakers repeatedly
emphasized that the goal of the Bayh-Dole Act is to insure
that the maximum number of technologies are transferred to
the marketplace so that society can reap the benefits of
research. Adoption of a Bayh-Dole system in Italy, the
Americans predicted, would not necessarily boost university
income. Ann Hammersla pointed out that, even at American
universities with aggressive licensing programs, the income
generated is modest in comparison to the institutions'
overall budget. MIT, she explained, earns approximately $37
million per year from licensing its patents, yet MIT's yearly
research budget alone is over $1 billion.


11. Senator Bayh also stressed that, in order for Italy to
achieve greater success in commercialization, the GOI must
supply adequate research funding for universities. (Note:
Presently, Italy spends just over one percent of its GDP on
research and development, above only Spain, Portugal, and
Greece in the EU and far below the nearly three percent spent
by Japan and the United States. End note.)

Italy to Press Ahead With Its Own Bayh-Dole Act.
-------------- ---


12. Umberto Guidoni, an advisor to Minster Marzano, provided
concluding observations at the conference. He stated that
the event had helped to raise awareness in Italy of the
importance of university-generated innovation in economic
development. Guidoni stated that the Ministry of Productive
Activities, while realizing that not all aspects of the U.S.

system could be transferred to Italy, nevertheless would move
forward to put an Italian version of the Bayh-Dole Act before
Parliament.

Comment: The IPR "Big Picture"
--------------


13. We have found it both refreshing and effective to engage
officials here on IPR issues within the context of an
Italian, rather than American, priority. In general, though,
Mission IPR efforts will continue to focus on the need for
Italy to impose meaningful criminal penalties for IPR-related
crime. Ambassador Sembler has stressed this message
repeatedly, most recently at an October 14 IPR conference in
Rome sponsored by the American Chamber of Commerce. Also,
the Mission plans to host another three-day "retreat" in
April 2005 for Italian officials and magistrates to encourage
tougher criminal sanctions for pirates and counterfeiters.


14. While it did not directly address the issue of
enforcement, the conference in Venice nicely emphasized the
point that better IPR protection is in Italy's own economic
interests. The event was also highly useful for Congen
Milan, given the participation of several government,
academic, and private-sector leaders from northern Italy. In
addition, by supporting this event, the Mission has built up
substantial goodwill with the GOI from which we expect to
draw as we continue to press U.S. priorities on the
anti-piracy and anti-counterfeiting front. End comment.


15. Post would be happy to share additional information about
this conference, including copies of the presentations
delivered. Contact Rome IPR coordinator Greg May at
MayGC@state.gov.


SEMBLER


NNNN
2004ROME04471 - Classification: UNCLASSIFIED