Licensing University Patents Intel's University Patent Subscription Program

Transcription

1 Licensing University Patents Intel's University Patent Subscription Program September 27, 2017 Paul J. Meyer, Jr., Managing Counsel, Patent Licensing Group, Intel Corporation Jeffrey R Wallace, Sr. Technology Manager, Office of Technology Management, University of Illinois at Urbana Champaign

2 Presenters Paul J. Meyer, Jr. Managing Counsel, Intel Corporation Manages Intel s university subscription program and patent acquisitions function paul.j.meyer@intel.com Jeffrey R. Wallace, P.E. Senior Technology Manager, Univ. of Illinois at Urbana Champaign Secretary of LES HT semiconductor committee Manages Illinois Physical Sciences technologies and responsible for patenting and licensing Previously with Praxair responsible for developing its patent portfolio and for in-licensing University technology for new product development jrwallac@illinois.edu linkedin.com/in/jeffreywallace

3 Agenda Problems with Status Quo Subscription Program Overview Mechanics of the Program Marketing and Outreach Program Management Future of the Program Working with Universities

4 Problems with Status Quo Bilateral negotiations can be: Protracted Combative

5 Why Join University Perspective Increased pressure to commercialize technology Decrease in research funding High patenting and maintenance costs

6 Why Join University Perspective (cont.) Challenging monetization environment Limited licensing opportunities Challenging to license mature assets Other alternatives: Direct assertions Sale or license of patents to patent assertion entities (PAEs) Patent pools

7 Why Join Industry Perspective University patenting activities can pose a significant risk to industry Universities as a whole spend significant amounts on research $341 million/university in R&D Universities file and receive significant number of patents 15,593 new university patent applications/year $2.5 billion in license income

8 Why Join Industry Perspective (cont.) Universities have been active in asserting their patents Recent uptick in litigation Warf v. Apple Caltech v. Broadcom and Apple Challenging Plaintiffs Risk of third party assertions Potential disaggregation to PAEs

9 Subscription Program Overview Streamlined process for Intel to take non-exclusive licenses under available University patents Basic structure: University provides to Intel a list of available patents periodically Intel has an option to take a license to any available patent for a flat fee License terms are agreed upon upfront

10 Subscription Program Structure Structured to not interfere with other University licensing efforts Only covers mature assets Does not apply to certain classes of patents

11 Subscription Program Benefits Nurtures relationship between industry and participating universities Viable alternative approach Reduces uncertainty Open exchange of information Reduces defensive risk to University Patents Reduces risk of direct assertions Reduces risk of disaggregation

12 Subscription Program Benefits (cont.) Opportunity for University to capture value for dormant innovations Supplement core commercialization strategies Recurring license income Benefits both parties by offering an efficient process with greatly reduced transactional costs and transparent terms

13 History of Intel s Program Significant investment in higher education $670 million since 2001 Over 700 researchers in over 90 universities since 2009 Tradition of partnering with universities Intel Science and Technology Centers Intel Parallel Computing Center

14 History of Intel s Program (cont.) Subscription Program initially began about 17 years ago Intel recently reestablished it in 2014 Subscription agreements with many of the top engineering and CS schools

15 Subscription Program Mechanics $15,000 annual fee University discloses a list of patents to Intel on a quarterly basis Available Patents Excluded Patents 90-day standstill Option to take a non-exclusive license

16 Subscription Program Mechanics (cont.) If University transfers to a PAE before disclosing to Intel: Springing license Option to convert to a perpetual license

17 Subscription Program Mechanics (cont.) If Intel exercises option: $200,000 for an issued patent Initial term is 5 years Automatic renewals for successive 5- year terms (unless notice not to renew by either party) Intel may terminate for convenience

18 Marketing and Outreach Efforts Attending conferences AUTM Annual Conferences University Industry Demonstration Partnership General Meeting Educating potential participants Phone calls, summary of key terms, brochure Face-to-face meetings

19 Program Management How Intel selects universities: Significant number of patents in key areas Existing relationship Negotiations Form agreement

20 Program Management (cont.) Review of patent lists Reminders and open line of communication

21 Key Milestones Over the lifetime of the program: 26 Subscription Agreements 19 universities Current participants include many top U.S. schools

22 Future of the Program Continue to expand in the U.S. International Expansion Updates in European public policy Intel provides significant support to non-u.s. universities

23 Working with Universities Unlike Corporations, Universities do not exist to make MONEY Primary Objectives education, research and publication, and economic development High focus on external reputation Decisions driven by potential impact on reputation Universities prefer licensing but will litigate as a last option Finally as a result of declining funding sources, universities are looking for cost reduction opportunities as well as new revenue generation licensing Many research Universities have developed a uniform code of conduct disavowing trollish behavior.

24 Technology Research Active research programs in materials, devices, processes and software $402M in campus research funding annually Engineering: 430 Researchers, 9145 undergrads and 3422 grad students 340 active patents in the electronics space Challenging licensing environment electronics business in general university to company Researchers receive an incentive to help commercialize their inventions: 40% of licensing revenue is shared with the inventors 40% to the university, 20% to the departments

25 Electronics Patents (unencumbered)

26 Making it happen Prior research funding by Intel Known entity by some researchers University partner references (no one wants to be first) Coherent and reasonable plan by Intel - Consistent with university objectives Ability to continue to use technology for research and publication Ability to license to other parties non-exclusive Ability to withhold technologies for faculty start-ups excluded technologies Ability to remove non-elected technologies: third party licensing Potential to generate revenue Campus visit to promote program Obtain buy-in from key administration and researchers Intel flexibility to agree to legal provisions required by state law

27 Outcome Negotiated agreement terms subscription and license Executed the agreement in Nov 2015 Developed an initial list of 200+ available patent assets Reported an additional 36 newly available assets in the past 6 quarterly reporting periods

28 Thank You for Attending Any Questions for Paul or Jeff?