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Transfer
Technology transfer [and
commercialization] is defined as the
transfer of results of basic and applied
research to the design, development,
production, and commercialization of new
and improved products, services or
processes. That which is transferred is
often not really technology but rather a
particular kind of knowledge that is a
precursor of technology. The transfer
process emphasizes the value and
protection of the intellectual product of
the researchers.
• Entrepreneurial companies:
– Any stage from research and
development to the market.
Varied Roles
IDEA
Universiti
Universiti
Start
Start--up
up es
Firms es
Firms Research
Research
Research
Institutes
Institutes
RR && DD Development
Firms
Firms
Production
Larger
Larger Manufacturing
Companies
Companies
Distribution
MARKET
Technology Transfer
(NOT)
Commercialization
Patenting
Agreement Administration
Licensing
Products/Processes
(Royalties)
Goals and Objectives :
Principal Investigator
●Publications
●Support of students
●Long-term relationship
●Timeframe
Transfer Processes
(varied)
Invent Detailed Market
design
Market Need Prove Redesign Distribute
Concept Product
Competitive testing Production Customer
Analysis Prototyping support
process/product distinctions.
PROTECTION OF INTELLECTUAL
PROPERTY
Protection of Intellectual
Property
• General Definition
• Items to cover
• Value
Private (commercial) value is not the same as
public value. It is usually not possible to achieve
private value from creative work which is in the
public domain.
First Step in a Protection
Strategy :
The Invention Disclosure
• Filed with institutional intellectual
property office
• Evidence for date of invention or
creation and names of inventors or
creators (for primary)
• Identifies funding source
• Provides information for choosing a
protection approach (or whether to
protect)
• A disclosure assumes that intellectual
property exists, and has value (in
fact, these assumptions are often
Publication Vs . Patent
•
Protection
In a global economy, world - wide patent rights can be
essential for commercial success.
• World-wide patent rights will be lost due to public disclosure
of an invention before the patent APPLICATION is filed.
• What constitutes public disclosure?
Publication of a research paper
A speech or a talk at a public or open meeting
A poster presentation
Collaborative research after a discovery
• If you think you have a patentable invention - THINK!
Delay public disclosure.
Let your institutional intellectual property or
technology transfer coordinator evaluate.
If possible, remove disclosing material before a
public disclosure.
Disclosing and Protecting
Worst Better
1.Best
Invent 1. Invent 1. Invent
2. Publish or 2. File 2. File
talk invention invention
disclosure disclosure
3. File 3. Publish or 3. File for
invention talk patent
disclosure or
otherwise
protect
4. File for 4. File for
patent patent 4. Publish or
or or talk
otherwise otherwise
protect protect
Intellectual Property:
Protection Approaches
Patent
Copyright
Trademark
Trade Secret
• CAREFUL EXAMINATION
Technically qualified examiners
Review of the “prior art”
May take two to five years
• COST OF A PATENT
Expensive to apply - legal costs and fees
Expensive to maintain - maintenance fees
man...
• Process—a method of doing something (e.g.,
manufacturing steel, surgical or medical procedures)
• Machine—combination of mechanical elements
• Article of manufacture—anything which has been
manufactured
• Composition of matter—a new chemical, a new
formulation of elements, a genetic construct
Inventions from
collaborative
research Not Patentable Patentable
[sometimes]
• What is “patentable matter” changes from time to time
1.
Avoid early public disclosure. File first, then
disclose.
2.
Do not publish interim results or speculate on
broader applications of a discovery.
3.
Do research on the commercial market and
technical novelty of an invention before filing a
patent application.
4.
Consider the possibilities to license or develop
an invention before filing.
5.
If you cannot protect the patent from
infringement, don’t file.
6.
File locally first. Drop international
applications if there is no interest in
development in a reasonable time.
7.
If you cannot prove the concept of a new
invention in a reasonable time, drop the
application.
8.
Periodically clean out your patent portfolio if
you are a research institute. Do not pay for
non-productive patents.
Recent De-Stabilization of IP
Legal Structure
• Influence of NAFTA/GATT
(Harmonization)
100 , 000
disclosures
( discoveries )
• Commercial potential
• Technical advantages
• Protectability
Opportunit • Inventor profile
y
Assessment 50% do not move forward
( Triage )
50 , 000
Patent (10% lics / 2.5%
Applications discl. )
License Income
( 3.5% per year ) 25%
125 > $1M/year 25 , 000
50 % < $ 10k Licenses Positive exit
cum . ( liquidation )
LICENSING EARLY - STAGE
TECHNOLOGY
Why ?
• Federal legislative mandate - Bayh -
Dole 1980 Act
• Successful commercialization for
public good
• Any royalty income is free of strings,
• Related R&D contracts bring in
overhead that can be same a
federal
• Consulting agreements
•
Cultural Issues
• Corporate setting:
• Value to Developer
>> Strategic value
>> Size of Market
>> Time and cost to develop
>> Profitability of Product
Marketplace Analysis
• Defensibility of Position
>> Patents
>> Other proprietary protection
>> Cost benefits and scale of operation
>> Marketing channels
MARKETING
•
• 3 University studies (MIT, UPenn,
OSU) -for 60% - 70% of licenses
signed, the faculty member
suggested the company
•
• Study of Companies - for 60% - 70%
of licenses found, company
researchers found university
researchers
License vs. Start-up
Company
Must consider a combination of:
– Industry Structure
– Competing technologies
– Size of market
– Product profitability
– Cost to develop product, bring
to market
– Ability to Raise Capital
License vs. Start-up
• Established Companies (Licensees)
– Have established marketing functions and big
markets
– Know how to manufacture
– Have capital
– Better resources to protect the intellectual
property
– May “lose” or “orphan” the technology
• Small or New Companies (Licensees or Start-ups)
– Can serve specialized, “hands-on” markets
– Can maintain pace of technological innovation
– Are organizationally flexible
– May result in closer long-term relationship for
inventor
– Subject to buyout or rapid change of plans
The Entrepreneurial Option:
Why Not?
• For the Inventor/Scientist:
>> Enterprise management is a set of skills,
unrelated to being a good scientist.
>> Financial backers want control.
>> Failure rates are high, financial
remuneration takes years.
>> Failure rates are high, financial
remuneration takes years.
• For the University/Research Institute:
>> Culture-perturbing.
>> Potential conflicts of interest.
>> Intrusion into student training.
License vs. Start-up
Remember....
Only 1-2%
of all technologies
from research institutions
can become successful
start-up companies
Decision Factors for
the University
• Nature of the market.
• Nature of the technology.
• What does the commercialization
entity (to be selected) need to
do well?
• What does the inventor want to
do? VERY IMPORTANT.
• Does the commercialization path
enhance other mission goals?
Decision Implications for
the Inventor
• Licensing or Sale to Third Party Company
– Less hassle, the “hands-off” path (relatively
speaking).
– Less opportunity for return.
– Less personal and financial exposure and
risk.
– Less control, and ego-identity.
• Participation in a Spin-off or Start-up venture
– Likely to demand a career shift.
– Maximum potential for gain (and risk).
– Opportunity to stay with the invention
throughout its life cycle.
Licensing to an Existing Third Party
Company: When and Why?
• The inventor wants to stay in the lab.
• Subsequent needed development is
obvious.
• Markets are relatively clearly defined.
• An established marketing structure is
an advantage, particularly a
geographically diverse one.
• The technology is a natural
complement to the product
portfolio of one or more potential
Negotiation Parameters
- License Terms -
• Define the licensed rights (What is
the licensee getting?)
• Exclusivity
• Territory of use (geographic)
• Field-of-use (technological)
• Milestones toward commercialization
• Proofs of diligence by licensee in
executing the license.
• Royalties and other payments
License Terms (cont.)
• Rights to enhancements or
improvements
• Rights to sublicense, assign
• Related R&D contract
• Post-licensing responsibilities
>> Conditions for termination
>> Infringement: responsibilities,
obligations, benefits
>> Resolution of disputes between
parties
Living with a Licensee
(After the Honeymoon)
•
• Managing the transfer of
technology (e.g., a joint
development project)
• Technical follow-up
• Payments, reports, etc. (“auditing”
the diligence of the licensee)
• Infringements, disputes, etc.
• Issue of Gifts
Wrap Up
• AUTM + Stanford stats
•
• Blockbusters are very rare
•
• Disclosing, marketing,
negotiations are the fun part
•
• In a mature 5 year plus office,
the license administration takes
STARTING A NEW
VENTURE
The Entrepreneurial Option:
Issues for Research Institutions
• To encourage or discourage?
– Mission of the research institution?
– Culture of the research institution?
• Decision to commercialize:
• Technology
– Clear, exclusive access to
technology
– Usually obtained through license(s)
– Provision for technology transfer
• inventor joins company
• inventor consults with company
• company has access to inventor’s
research facilities
New Venture: People
• People
– Commercial Staff (CEO)
• credibility at raising money, building a
business
• usually experienced businessman from
industry
– Technical Staff
• experienced in specific technology
• experienced in product development
New Venture: Capital
• Capital
– Capital raised in stages
– Requires Business Plan
• Market Opportunity
• Technology/ Solution to Opportunity
• Development Plan
• Marketing Plan
• Management
• Financial Projections
Role of the Inventor
• Option 1: Inventor assumes all aspects of enterprise
management LEAST DESIRABLE.
• Defensibility of Position
• Incorporate Company
– Legal documents filed for “Biolex,
Inc.”, initial sole owner of
company is scientist.
• License Technology
– Exclusive license obtained form
University in return for ownership
position (stock) in Biolex, Inc. and
Biolex, Inc.
Next Steps
• Recruit Management Team
• Market Opportunity
• Technology/ Solution to Opportunity
• Development Plan
• Marketing Plan
• Management
• Financial Projections
–
Biolex, Inc.
Next Steps
• Raising Capital
• Technology invented at
government or university
laboratory, patents initiated
• Technology shows “proof of
concept”, which dramatically
reduces risk
• Technology licensed to
management team (inventor
may be on management team)
Best Practices
Starting New Companies
Research Institutions which
do well at licensing technology
to to start-ups adopt the
following “best practices”:
• An economic development
mission.
• Strong linkage to business
development infrastructure (e.g.,
incubators).
• Novel, early-stage financing (e.g.,
FINANCING NEW
VENTURES
Financing New Ventures
• Research Institutions:
7
6
5
4 96
97
$ billions
3 98
2
0
Venture Capital Private Public Offering Pharma
Placements Collaboration
Value of New Companies
• Increasing value:
– accomplished by reducing technical
/ market risk and confirming size
of opportunity
– scientific progress
– commercial progress
Value of New Companies
VALUE
RISK
TCG
TECHNOLOGY COMMERCIALIZATION GROUP, LLC
2237 OXFORD HILLS DRIVE
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TEL: 01-919-833-2569
FAX: 01-919-833-3277
PAUL G. WAUGAMAN, PRINCIPAL
E-MAIL: PAUL@T-C-GROUP.COM
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