Office of Technology Transfer and Economic Development
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Transcript of Office of Technology Transfer and Economic Development
Office of Technology Transfer and Economic Development (OTTED)
Revenue-oriented service center Help UH personnel identify, protect, and
commercialize their inventions/creations Help build UH research enterprise Generate licensing income
Support State economic development initiatives
UH Business Plan Competition
OTTED offering up to $20,000 in additional prize money
Recipients must base their business plan on a UH technology available for licensing through OTTED
Recipient(s) must be 1st, 2nd, or 3rd place winner(s)
Money must be used to help commercialize the technology generally means that winning team becomes a
licensee
Award goes to highest placing winner
Evolution of the relative value of tangible and intangible assets to total value
100 years ago, tangible assets generally accounted for 90+% of a company’s value . . .
90%
10%
Today, the value of many companies is derived from their intangible assets.
100 years ago Today
University technologies are valuable . . .
. . . and will become more valuable as companies continue to leverage their R&D budgets through the acquisition of outside technologies
Technology Transfer Process
Invention Disclosure
Marketing& Protecting
Legal protection available?
Licensing
UH ownership ?
Yes
No
Yes
No
Commercial interest ?
YesNo
Return to
inventor
TLG activitiesSolicit, accept, administer invention disclosures
TLG activitiesEvaluate,market,protecttechnologies
TLG activitiesNegotiate,formalize,auditlicenses
Note: This chart is necessarily brief - it represents only the most basic functions of the technology transfer process. Please contact the Technology Licensing Group (539-3817) with questions or for further information about your invention and the technology transfer process.
Stage 1
Stage 2
Stage 3
Licensing as a Business ModelLicensing as a Business Model
Licensor – Inventor/owner of technology
Licensee – User License – contract not to sue Consideration – usually financial
but may include other consideration, such as cross license
Why license university technologies?
Technologies – early stage, high risk Technological risk – it may not work Market risk – unknown demand
Licensee – reduces risk Reduces R&D expenses Proves concept, may provide working model
Permits end users to “kick the tires”, lowers market uncertainty
Establishes relationship with University Licensor – expands income potential
Reduces/eliminates mfg., mktg., dist’n costs May help identify new income opportunities Establishes relationship with company(ies)
Possible Deal Structures
Traditional licensing w/fees, royalties
Equity participation Spin-offs/start ups
Sublicensing Options Sponsored research agreements
With/without option to acquire license
Compensation Structures and Alternatives
Up-front fees Royalty arrangements Milestone payments Patent registration costs Liability/indemnification
Up-front fees
Good for University Reduce University’s financial risk Offset University’s previous out-of-pocket
expenses (research costs, patents, etc.) Generally not refundable nor creditable against
future royalties BUT …
Increase licensee’s financial risk May reduce licensee’s research sponsorship
commitment May “lock in” licensing rights
Royalty arrangements
Permits University to share in the success of commercialization
University’s increasingly willing to be flexible in their approach and royalty requirements
Equity can be exchanged for royalties
Milestone payments
Milestones should follow natural development of the technology
Often tied to diligence provisions Levels revenue flow to University in
early years Equity can be exchanged for cash
payments.
Payment of Patent Expenses
Licensed patent = licensee pays Business expense Cost sharing for multiple licensees
each licensee pays 1/n of patent expenses
licensor may limit licensee’s liability, cap or set n>1
Liability Issues and Disclaimers
Licensee takes all the blame and the responsibility and the cost
University takes all the credit and none of the responsibility …and wants to be paid for it
Liability Issues
Licensee assumes fitness for use
Licensee assumes product liabilityand names university as
additional insured Licensee/university each
assumes liability for its own employees
Past Business Plan Participants/Winners
Pipeline Communications and Technology, Inc. telecommunications and antenna technologies company has 7 employees, is in pre-production
phase Hawaii Environmental BioSolutions
dairy waste processing company has 0 employees, is in start-up phase
Research Analytical Labs diagnose and treat pre-term labor status of company unknown
Examples of UH technologies available for licensing
Hydrogen storage materials Biodegradable biopolymers Hydrogen/oxygen production
from water Acoustic wave micromixer Wastewater treatment with zero
valent iron Ventilating roofing system
Contacting OTTED
Websitehttp://www.otted.hawaii.edu
Email/Phone Richard Cox, [email protected], 539-3818 Gaylene Anderson, [email protected], 539-3836 Lisa Matsunaga, [email protected], 539-3826 Ann Park, [email protected], 539-3829 Jonathan Roberts, [email protected], 539-3828 Andrea Yuen, [email protected], 539-3823