Industrial Perspectives on IP Monetisation and Industry/Academic Commercial Engagement Domhnaill Hernon:

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1 Industrial Perspectives on IP Monetisation and Industry/Academic Commercial Engagement Domhnaill Hernon: Dept Head, Bell Labs Research, Alcatel-Lucent Ireland (Nov 2014)

2 Bell Labs Research & Alcatel-Lucent 2

3 Introduction I work for Bell Labs research arm of Alcatel-Lucent which is a multinational telecoms equipment and service provider We are the R in R&D... therefore our business impact is judged based on novel research that translates to technology transfer and commercialisation of our IP assets I am head of the Efficient Energy Transfer (ηet) dept with a team of 16 and we currently sponsor 14 PhDs and 4 post docs in Ireland (lots of IP contracts!) Our research focus is on thermal management, energy harvesting and energy storage IP Experience 3 patents granted, 11 pending (a lot of prior art in our field) Oversee yearly patent submission of around 20 invention filings Involved in large University collaborations (CTVR, IERC, CRANN/AMBER, Connect, SFI industry fellowship, SFI Advance Award and many IRCs) Transferred technology (directly into ALU products, to ALU suppliers, and to external companies) Dealt with all aspects of IP including; IP infringement, IP ownership, inventorship claim disputes, licensing; evaluation of IP etc 3

4 Tech Transfer Towards IP Monetisation Key issues: Academia doesn t understand that bringing research assets to product takes >>5X further investment (time and money) Why should industry pay for something that is almost entirely unproven? IP protection (patent) is only one small part of the value...de-risked technology and know-how are key drivers of value in IP monetisation Researchers need to fill the gap by moving beyond academic type lab testing Proven approach: Need to de-risk technology to ensure licensee interest, reduce licensee risk and also to drive greater levels of monetization of assets for licensor How to de-risk: - early prototyping and especially important is product similar prototyping - Think about how a company will use the technology and where - Are there reliability concerns? Cost concerns? Deployment scenarios that limit performance etc etc - Answer these questions and you create value (reduce the >>5X gap) - Fail to prove out the technology and answer questions implies risk to the licensee and hence they will pay less or nothing 4

5 Industry/Academic Engagement: Some Personal Observations Some observed issues: Legal practitioners in industry and academia can be extremely risk adverse The engagement process is more confrontational than collaborative Barriers are easily created but solutions are rarely championed Lack of truly streamlined processes and everything seems to start from scratch Over estimation of value on each side This means each and every IP engagement takes WAY too long Recent national IP guidelines have added to uncertainty with vague language and too much room for interpretation. Also, some companies struggle with 100% RPO ownership owing to the structure of their IP portfolio Possible solutions: Process should be more collaborative and win-win Towards this consider IP or tech transfer business partner type role to remove natural barriers but they must have industrial experience in licensing or productising Develop better mutual understanding of each others needs and models Few universities are good at monetising their IP so why pursue this model? Building long-term industry/academia partnerships, building trust and delivering will ensure flow of cash to the University 5

6 Discussion? 6