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University Tech Transfer Process: Invention Commercialization

The 4th Annual Conference on TechnologyCommercialization

“Technology Transfer (R&D and IP Commercialization,Policies, and Investment)”

Amman, Jordan (12 Nov 2008)

Michael J. MartinPresident, TechTransfer Associates

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Industry/University: Bridging Two Cultures

UNIVERSITY INDUSTRY

“To Create and Disseminate Knowledge”

To Maximize the Investment of Shareholders

ORGANIZATION

RESEARCH DISCOVERY DISCLOSURE FEASILBITY

PATENT APPLICATIONS APPLIED r&D MARKET TEST

LICENSES COMMERCIAL OPERATTION.

SOLUTIONS PROBLEMS

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Why IP: Bridging Two Cultures

University Industry

“To Create and Disseminate Knowledge”

To Maximize the Investment of Shareholders

ORGANIZATION

SOLUTION PROBLEM

• Different Missions, Measure Success Differently• IP: Dissemination for University, Competitive

Advantage for Business

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Why Manage IP in Universities• Disseminate Knowledge – “Public Good”

• Outreach mission (Economic Development): From Morrill Act to Bayh Dole Act – 1980

• Retain/Attract Faculty

• “Home Run” – Additional Source of Funds

• Results– $40 billion in economic activity that supported more than 270,000 jobs – 432 Start-ups and 4955 licenses in FY 2003

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University IP Policy/Practice

COI/COC

PatentCopyright

Law

Bayh-DoleLaw

InternalRevenue

Code

StateCode SCHE

Guidelines

University Tech Transfer Policy/Practice

Research ContractNegotiations

Ownership of Intellectual

Property

Commercialization of

IntellectualProperty

University Culture

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Invention

PatentingPatent Atty

DisclosureEvaluation

Marketing

Licensing

Protect if Publication is Imm

inent

TECH TRANSFER: COMPLEX SYSTEM

Products

BusinessSpin offs

Research Investment

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Evaluation then Valuation of Intellectual Property

• Commercialization Decision– Technical Merit– Commercial Opportunity– Protectable

• Licensing Negotiations– Cost Approach– Market Approach– Income Approach– Relief from Royalty

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Assessment of Early Stage Discovery Technical Merit

• Stage of Development

• Translate Science into Function into Benefit

• “Robust Solution” to “Important Problem”

• Implementation Barriers

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Assessment of Early Stage Discovery Commercial Opportunity

• Market Size and Growth

• Identified Niche and Innovators

• Market Entry Strategy: Product, Price, Promotion, Position

• Competitive Advantage

• Management Team

Case 4 Discount Rate 20% Royalty Rate 1.0%

($4,000,000)

($3,000,000)

($2,000,000)

($1,000,000)

$0

$1,000,000

$2,000,000

1999 2000 2001 2002 2003 2004 2005 2006 2007 2008 2009 2010 2011

NPV of net inc

cum NPV of net

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Assessment of Early Stage Discovery Protectability

• Appropriate Protection: Trade Secret, Patent, Copyright, Know How, Trademark

• Broad v. Narrow• Freedom to Operate• Prior Art; esp. of inventor• Registration Requirements

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Evaluation: Inventor - Degree of Interest, Attitude and Motivation

• Interest: IP is another publication or method to impact society.

• Attitude: No time or willing to do what it takes

• Motivation: $ or move invention from lab to marketplace

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Invention

PatentingPatent Atty

DisclosureEvaluation

Marketing

Licensing

Protect if Publication is Imm

inent

TECH TRANSFER: COMPLEX SYSTEM

Products

BusinessSpin offs

Research Investment

Inventor/Additional Develop

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Invention Disclosures: Solicitation and Information

• Walk the halls– Identify Areas of Market Interest– Attend Department Meetings

• Industry Forums, Invite Speakers• Create Events for Interaction

– Workshops on IP and Research, etc.– Patent Award or Invention Recognition Ceremonies

• Manage Expectations

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Invention

PatentingPatent Atty

DisclosureEvaluation

Marketing

Licensing

Protect if Publication is Imm

inent

TECH TRANSFER: COMPLEX SYSTEM

Products

BusinessSpin offs

Research Investment

Inventor/Additional Develop

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Intellectual Property Protection

• Appropriate Protection: Trade Secret, Patent, Copyright, Know How, Trademark

• Timing: Status of Publications• If Patent:

– Select Appropriate Counsel– Docket Management System– TTO is facilitator not legal resource

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Invention

PatentingPatent Atty

DisclosureEvaluation

Marketing

Licensing

Protect if Publication is Imm

inent

TECH TRANSFER: COMPLEX SYSTEM

Products

BusinessSpin offs

Research Investment

Inventor/Additional Develop

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Marketing

• Analysis – Expand Evaluation

• Potential Licensees – Qualification

• Contact – Prepare Story, Personnel

• Confidential Disclosures – Expand Interest

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Develop Contacts•Inventor network

•Business network

•Internet Listings, Web Site

•Industry and Professional Associations

•Trade Shows

•Patent Citations

•Technology Management Firms

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Start-ups: Culture and Support

• Where is Leadership: Creative Destruction, Permission to Fail

• Conflict of Interest: State Law, University Policy, and Shareholder Value:

• Access to: Patient Risk Capital; Business Start-up Services; Appropriate Risk Management.

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$ needed at the stage of Business Development

Pre-Seed

Invention/RawTechnology

Technologist /founder/business development

<$500K

Identifying technology via relationships

Determining commercial viability

Accessing rights Dev. business

strategy

Seed Early Stage Mid-Stage Exit

Description

Team

$ Needed

Keys to Success

Prototype/ Product-in-development

Plus first senior mgmt team member

$250K to $1M

Finding development partners

Developing business strategy

Recruiting BOD & SAB

Recruiting CEO

Product at beta clients

Senior mgmt team formation

$1M to $5M

Growing the sales pipeline

BOD and SAB in place

Full customer pipeline

Senior mgmt team in place

$2M to $20M

Managing growth

Achieving profitable

Identifying exits

Business Expansion

Public Markets

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Access to Capital:Technology Policy Framework

Friends and Family SBIR/STTR Corporate Funding Bootstrapping Angel Investors Venture Capital

The ValleyThe ValleyOfOf

DeathDeath

Availa

bili

ty o

f C

apit

al

Availa

bili

ty o

f C

apit

al

BasicBasicResearchResearch

Development &Scale-up

CommercialOperation

Source: Richard Palmer, Business Specialist Advanced Technology Program National Institute of Standards and Technology.

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Friends and Family

• Easiest to approach

• Need to advise risk

• Have plan prepared

• Can distract from business

Sources of Capital (Study of INC 500 by Babson College)

Friends and Family Other

Bank Loans Venture Capital

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Is SBIR the Way to Go?

Plus Side• “Free” R&D• Income on the P&L• Leverages other investment• Potential customer in funding

agency

Minus Side•Doesn’t advance Business Development•Government accounting•Can be distracting•Can get HOOKED!

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Corporate Opportunities in the Valley of Death

• Reduce Risk to Corporation by Leveraging University Equity/Gap Fund Screen

• Potential Relationships– Equity Investment– Strategic Partnership: Corporation brings

Manufacturing and Marketing Expertise– Potential Customer

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Bootstrapping

• Belief is that income can fund growth• Have customers identified, even orders• Seek line of credit to provide working capital• Manage accounts receivable, Use the customers

cash • Be willing and able to turn down business

Angel Investor Basics

• Accredited investor defined by Regulation D under the Securities Act of 1933 or SEC Rule 501

• Must have a net worth in excess of $1M or annual salary in excess of $200,000 the past two years

• Typically considered an expert in a particular market

Investment Profile for Angel Investors

• Technology based (as opposed to service)• Strong barriers to entry for competition• High growth prospects (multiple million dollar market or

higher)• Strong management team or entrepreneur’s track

record• Viable exit opportunity for investors (acquisition or IPO)

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THINK LIKE A VC

• Skimming the cream, not playing the margins• First dollars in will want to own 40-60% of the company• The perils of common shares and cram downs• Perspectives on “investor hierarchy”• Faculty role and grad student role in start-up• When and what is the exit scenario?• Technology is 5% of the start-up

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Example: New Nanotechnology Material

• High VC Buzz Factor• Impact all markets• Basic Science is of High

Interest• Virginia Tech

– Improved Yield– Inventor Published– Attract Grants

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LUNA nanoMaterials

Acquisition & IPO

Universities

IndustryGovernment

Private & Industrial

$

Ideas & Funding

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Invention

PatentingPatent Atty

DisclosureEvaluation

Marketing

Licensing

Protect if Publication is Imm

inent

TECH TRANSFER: COMPLEX SYSTEM

Products

BusinessSpin offs

Research Investment

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Negotiation - Style

• Prepare your position/Understand theirs• Request an offer• Listen Actively… and carefully• Probe their rationale and yours• Create options/make counter offers• Confirm agreement and benefits to each side• Close firmly, amicably, and define the next step.

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Negotiation - Valuation• Cost Approach - Cost to create and develop or to replace

the assets • Market Approach - Based on comparable transactions

between unrelated parties • Income Approach - Based on the present value of the

future income streams expected from the asset• Relief from Royalty - Measured by what the owner of the

property would pay in royalties

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Valuation – Cost Approach• Cost to create and develop or to replace the assets

• No party would pay more to use than to replace the asset in an arm's-length transaction

• Historical costs or the projected cost to develop an asset of similar value at similar level

• Appropriate– Embryonic, basic technology for which market applications

cannot yet be defined. – Technology is narrow in scope and easy to replicate or

"design around

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Valuation – Market Approach • Based on comparable transactions

between unrelated parties

• Factors to consider– Nature of the assets transferred, – Industry and products involved, – Agreement terms, and other factors

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Valuation – Income Approach• Based on the present value of the future

income streams expected from the asset• Forecasting the useful life of the property

– the service life of the asset– the legal life of the asset– the economic life of the asset – the functional or technological life

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Valuation – Income ApproachRisk Assessment for the Discount Rate

– Technical Risk: Stage of Development, $, Time, Obsolescence

– Market Barriers: Concentration, Distribution, Diffuse

– Management Team: Fit, Expertise, Core Competencies

– Protection: Type, Breadth, Strength, Blocking

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Valuation - Relief from Royalty• Measured by what the owner of the property would pay

in royalties • Assumes:

– Stage of Development: products could be produced within a reasonable period of time.

– Sufficient data to develop reasonable estimates of the royalty base (i.e., projected revenues).

– Data to support the determination of a reasonable royalty rate.

– Accounts for market conditions, the economic life of the Technologies and the risk associated with receiving future economic benefits.

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Royalty Rates for In-Licensing by IndustryRose Ann Dabek

Procter & Gamble

Industry 0-2% 2-5% 5-10% 10 -15% 15-20% 20-25% >25%

Aerospace 50% 50%          

Automotive 52.5% 45% 2.5%        

Chemical 16.5% 58.1% 24.3% 0.8% 0.4%    

Computer 62.5% 31.3% 6.3%        

Electronics   50% 25% 25%      

Energy   66.7%       33.3%  

Food/Consumer   100%          

General MFG. 45% 28.6% 12.1% 14.3%      

Gov't/University 25% 25% 50%        

Health Care 3.3% 51.7% 45%        

Pharmaceuticals 23.6% 32.1% 29.3% 12.5v 1.1v 0.7% 0.7%

Telecommunications 40% 37.3% 23.6%        

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License Agreements

• Start with your boilerplate.• Focus on Definitions, Grant, and Consideration

- Make sure they are clear• Read and Think about ALL of the Clauses

- Pay attention to the “little clauses”

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Conclusions• Always Keep in Mind the Mission of the University vs. the

Company• Companies

– Remember Boundaries of Law and Policy– Understand How Success is Measured

• Universities– Remember why interested in industry– Appreciate the goals of business and measures of success.

• Maintain Good Lines of Communications• Try to Build Long-Term Relationships

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Invention

PatentingPatent Atty

DisclosureEvaluation

Marketing

Licensing

Protect if Publication is Imm

inent

Questions ?????

Products

BusinessSpin offs

Research Investment