In Moscow it was held LES Germany/LES Russia joint conference, this two-day meeting devoted to commercializing of university IP and had a special meaning because of entire lack of legislation and bundle of problems in that field in Russia and other former USSR countries.

Prior to the Conference an Add-on seminar “Basics on Licensing in Russia and CIS” was held. Dr. Natalia Karpova, Mr. Alexander Osokin, Mrs. Ludmila Borokhovich, Mr. Valery Medvedev, Mrs. Elena Voitsekhovskaya and Mr. Sergey Dorofeev (all from LES Russia) were engaged as speakers therein. The Add-on had a very good response and showed its great necessity for the russian participants.

In the Official opening of the Conference speeches of Dr. Natalia Karpova, President, LES Russia, and Dr. Heinz Goddar, officially representing LES Germany, a great need of such joint seminars was noted and hope for success of this particular seminar was expressed. Future showed the hope came true.

Dr. Eugene Buff, Consulting Director, Yet2.com (USA) began the first day of the Conference with “Achieving Excellence in Technology Transfer. US Experience and Global Prospective”. In his presentation clear definitions of how to proceed to make a bridge from “knowledge for knowledge’s sake” to “knowledge management for profit” were made. The problem of limiting an academic freedom of open disclosure, which seems to be very common for USA and Russia, was illuminated at quite a different angle of moving research results from the laboratory to the industry. The question of “why are you doing or going to do technology transfer” sounded for some of university people like Hamlet’s “to be or not” and hopefully made someone scratch someone's head. It is certainly not easy to put up with the postulate stipulating that economic results of technology transfer will happen very slow. On the other hand the thesis of “purposeful” changing of university by technology transfer was met with mild enthusiasm. Conclusive statement that technology transfer people should obligatory be put in-between of university and industry teams to allow technology transfer in principle, which goes without saying for the lawyers, also seemed to be properly accepted by the university audience.

The presentation of Dr. Yan Kuhn de Chizelle (France), Schlumberger Research, “Research, Technology and Collaborations. Bridging the gap between Schlumberger and the Russian scientific community” was a success story of a very long term collaboration with the Russian science. We all were happy to hear that Schlumberger views Russia as a very interesting and strategic place to develop new technology. Information of different kinds of Schlumberger investments such as funding, supervising and collaborating on R&D in some of the existing academic groups, setting up own R&D centers in Russia as well as manufacturing new products shows deep changes in approach of international giants to the Russian science and technology transfer market. It was interesting and not so expectedly to learn that primary Schlumberger interest is driven rather by quality than by low cost of research in Russia. And of course the best advertisement for the Russian R&Ds was an assessment that “no where else can a company find entire research groups ready to devote a large fraction of their research time to the company’s scientific problems at an affordable cost”.

The final speech of the first day was delivered by Dr. Nikolay N. Rogalev, Prorector of Moscow Power Engineering University and Director, Russian-Chinese Technopark (Russia). Practice of the Russian technology transfer to China was shown on particular examples. Dr. Rogalev admired Federal Chinese policy of acquisition of foreign technologies for developing private sector small and middle size entities and perfectly organized Chinese Technopark structures. On the other hand the questions asked by the audience showed some concern of a proper legal support for the deals. Otherwise such Technopark structures may become additional widely open window for free leakage of Russian technologies to China, especially when Russian scientists work in China in the frame of the Technopark cooperation programs.

The second day was opened by Dr. Heinz Goddar, Partner, Boehmert & Boehmert (Germany), with “University Inventions in Germany – The Impact of the German Law concerning Employees‘ Inventions”. The subject of the presentation is of great interest for Russian scientists, industry people, lawyers as well technology transfer people since no similar legislation (except for service inventions) still exists in Russia. Russian scientists can only dream of such a well considered balance of interests of each party involved in the new German University Inventions Law. The fact that an inventor gets 30% value of a gross university income on the inventions was so incredible that it was questioned several times. Dr. Heinz Goddar was as always perfect in presenting the material and answering numerous questions. E.g. the participants were greatly impesed by his legal advise to the IP engaged people to attempt creating as much IP value as possible here in Russia rather than to transfer it abroad almoust free. The advise was confirmed by the real particular unsuccess examples with Russian technologies which had gone away practically free of charge.

The further speaker Dr. Joachim Feldges, Attorney at Law (Germany), “Specific Aspects of Technology Transfer Agreements in Biotech/Pharma” touched upon very interesting peculiarities of technology transfer in the pharmaceutical area. High failure rate, very late returns, need to comply with specific provisions on pharmaceuticals and good manufacturing practice as well as need for approval makes this business extremely difficult and expensive and implies many obstacles in the way of getting excellence in technology transfer. A number of very valuable recommendations was made, such as to pay particular attention to Confidential Disclosure Agreements (especially dealing with a group of companies), to keep up good balance between usual scientific practice to exchange materials freely and confidentiality restrictions while transferring technology etc. Particular attention was paid to determining milestone payments, scaling royalties (upscaling or downscaling rates) and many other very valuable matters, which are of great importance for practitioners.

Dr. Christian Kilger, European Patent Attorney, CEO IPAL, (Germany) gave an impressive successful story of university technology transfer to industry according to IPAL. We were staggerred by well thought-out and well ballanced strategy of IPAL in technology transfer which appears to take into account all possible circumstances and come to nought influence of all eventual negative factors. The basic principles of this strategy are that technology transfer must be based on a long term perspective, long term financing leads to long term planing safety, the more agreements the lower the risk, technology transfer personel must be trained well in IP rights, licensing models should be optimized etc. These principles are well enough to be followed for federally funded powerful structure like IPAL which might be the case in Russia only in future. Numerous questions showed great interest to the subject from the attendees.

Last but not the least from the foreign speakers, Dr. Christian Czychowski, Partner, Boehmert & Boehmert (Germany) made a presentation “The „Berlin Agreement“ from a legal point of view”. The „Berlin Agreement“ includes three parties (University, Professor & Company) with totally different interests. Therefore one of its purposes it is to get good balanced agreement taking into account interests of each of them. Detailed comparative analisys of two main types of the contract (research and cooperation) was given in the report with reference to the new German University Inventions Law. Emphasis was put to possible ways of drafting particular clauses of the contract, possible errors and discrepancies thereof as well as some eventual bars for fulfilling same. It was e.g. noted that inventions prior to the contract remain untouched, the project leader is obliged to provide information on pre-existing know-how and that said pre-existing know-how may be a reason for termination of the contract. Again one of the main matters of argue in the University—Professor—Company relationships seems to be right to publish corresponding IP information. Though the speach related to some „at first sight“ boring legal matters it was extremely helpul for all the participants since to begin with they may use the basic principles of the „Berlin Agreement“ in their routine work.

The final presentation of the seminar was delivered by Dr. Natalia Lobach Co-Chair, Russian- French Technology Transfer Center of the Moscow Bauman State Technical University (Russia). It was a mix of success and lack of success stories of Russian technology transfer to France. To tell the truth lack of success referred only to dual purpose technologies which apparently cannot be transferred abroad for national security reasons. The participants pricked up their ears when it was said that “15 Russian technologies had gone off to France” as an example of a great success of short life of the Center. Again we remembered of a need for a proper legal support for the technology transfer deals in Russia.

Panel discussions at the end of each day revealed great interest of the audience to the maters discussed during the Conference. Some sharp remarks were directed to the Government, Russian Academy of Science, Universities, LES Russia etc. On the other hand it was noted a gradual improvement of the situation with university technology transfer in Russia. Positive examples given by Russian speakers and presence of Schlumberger, Yet2.com etc. at the Russian technology market shows that the process has begun.