TECHNOLOGY TRANSFER. Protecting AAU inventions and bringing them to market! PETER RASMUSSEN HEAD OF TECHNOLOGY TRANSFER AT AALBORG UNIVERSITY.

Transcription

1 Protecting AAU inventions and bringing them to market! TECHNOLOGY TRANSFER PETER RASMUSSEN HEAD OF TECHNOLOGY TRANSFER AT AALBORG UNIVERSITY.

2 How research is utilized at AAU Research at AAU shall be made available to as many people as possible, so research can provide the highest possible value and benefit to society. Through Education of young minds, which intrinsically has knowledge about the newest research, and which can form the basis for innovation in the companies around us Research at AAU or in cooperation with industry, government, universities. Open Access to all Publications from AAU via: Dissemination through Media & Conferences Matchmaking ( Network activities ( and Technology Transfer: Spinouts, sales & licensing of inventions from AAU (

3 Research & Technology Transfer AAU cooperates closely with companies, public authorities and other research institutions, investing in Basic research, Applied research, and Commercialization of inventions at AAU, which secure that the research results in products, which are beneficial for society, and Become the foundation for new companies, and Create new jobs and financial development.

4 Law of inventions made at public research institutions (law 347, 1999) 1. Purpose to secure that research results generated through public funding is utilized for the good of society, through utilization in industry. The law means that universities, sector research institutions and hospitals are obligated to work with commercialization of patentable inventions from research. Who owns the rights to inventions are technically defined by the law. The law means that: Employees are obligated to report inventions and AAU can take over the rights to the employees inventions, and enter into agreement with private industry regarding spinout, sales and licensing of patentable inventions. In return, the employees who made the inventions shall have their share in the potential financial returns.

5 Technology Transfer Organisation The Danish Law on Inventions from Public Research Organizations', state that Rector has the decision power At AAU, the Faculty Director, has been nominated by Rector, to have the decision power on Technology Transfer in practice. The Technology Transfer Office, has been set up to handle all inventions disclosed by AAU employees, reporting to the Faculty Director.

6 Typical forms of Technology Transfer Spin-out IPR Sales Licensing Sales / Licensing are logically the most effective way to utilize research and new technologies, as established companies already has the necessary assets and expertise to turn inventions into real products on the market. Spin-out often happens, when you have no other options, or the technology is ground-breaking, is widely applicable (platform), etc.

7 AAU commercialization in numbers Active Invention Portfolio = 92 (Dec 2011) Number of invention disclosures pr. year % of inventions received are assigned to AAU % of inventions are patented by AAU AAU inventions are sold pr. year License agreements approx. 4 pr. year Spinouts 1-4 pr. Year, Spinout portfolio = 13 (Dec. 2011) TKS A/S AlpCon IFXa A/S Acarix A/S

8 Historically inventions at AAU have typically come from ICT Engineering Energy Chemistry & Biochemistry Medical Technology

9 3. What we do The Commercialisation AAU

10 Invention Disclosure First meeting with Inventor(s) Novelty search (Patentability) Evaluation and formulation of the Commercialization Strategy Commercial Potential Presentation & Nomination Receive AAU Rights Decision: - Assignment of rights. - Return rights to inventors.

11 Inventor resources Is it Core Research? Can/will Inventors help move the invention to market together with AAU? Is funding Available / Necessary? Invention Does inventors need to publish?

12

13 Protecting inventions as a mean to commercialize PATENTING - ONLY WHEN REQUIRED

14 Patenting is costly AND accelerate over time K?? K K?? K?? K?? K K per country Source: Graph: Ploughmann & Vingtoft, Costs AAU

15 Patenting - Protecting inventions as a mean to commercialize Facts: Patenting is only initiated on 10-30% of all Invention Disclosures received by AAU. At the present time, AAU owns issued patents on only 4 inventions. Patenting induces time pressure to commercialize!!! Deadline at 12 and 30 months after submission The patent application can be updated with in the first year (priority year), but ONLY as long as novelty is maintained. Thus, progress is essential in the first year Novelty is destroyed by publication, making patenting impossible Patenting is thus not a goal for AAU, only a mean to commercialize!

16 Why does AAU patent inventions? The invention has high commercial potential, The invention can be And/or: Exploited by multiple companies through licenses, Used for spin-out Necessary to commercialize the invention, because Some companies only wish to evaluate IPR, which is patented The research team has an ultimate requirement to publish results, or Funding is necessary to move the invention closer to market

17 Why sell inventions before patenting? Inventions are often sold to companies w/o filing a patent, because the invention Have been generated in research collaboration, where the company is the natural customer. Is incremental in relation to an existing product in the market Has a very narrow focus, which only makes it interesting for a specific company NDA s are often used here to establish collaboration with an Industrial partner Find standard NDAs at In some cases cost of patenting is too high compared to potential future financial gain. In addition, companies generally prefer to own, rather than license. Or would like to be part of the patent process to optimize their market potential. And - AAU can free up resources to commercialize even more inventions!

18 NEW European Patent? Impact SMV s Commercial use of IPR Challenges with Freedom to operate Danish companies file EP, US or PCT today Change in IPR culture

19 Example - Patenting & Commercializing an invention at AAU HOW HARD CAN IT BE?

20

21 Braking system for deorbit of satellites in LEO orbit Aero-Dynamic Drag System works up to km above earth. Factor area increase at deployment! wind Satellite Deorbit reached withing max 1 year speed Satellite Satellite Satellite Frame in stowed position Fully-deployed Top-view with wind direction

22 ACOUSTIC DETECTION OF CORONARY ARTERY DISEASES CORONARY ARTERY DISEASE (CAD) IS A HEART DISEASE WHERE A STENOSIS IN THE CORONARY ARTERIES LIMITS BLOOD FLOW TO THE HEART MUSCLES.

23