Technology Commercialization Primer: Understanding the Basics Leza Besemann 10.02.2015
Agenda Technology commercialization a. Intellectual property b. From lab to market Patents Commercialization strategy Office for Technology Commercialization 2
Intellectual Property (IP) Creations of the mind Examples of IP can include many things, such as: a. New materials, such as polymers and nanoparticles b. Software c. Algorithms, databases, surveys d. New methods and processes e. Mechanical devices f. New types of research tools (cells, antibodies, mice) Office for Technology Commercialization 3
Intellectual Property (IP) Rights given to intangible assets Asset inventions literary, artistic works, software and drawings, video Rights Patents Trade Secrets Copyrights symbols, names, images and designs used in commerce Trademarks Office for Technology Commercialization 4
Definitions License a. Legal permission granted by an IP owner to allow another party to use their IP Licensee a. Someone who has been granted a license Office for Technology Commercialization 5
Technology Commercialization Proprietary transfer of intellectual property (IP) to another organization a. Existing company or start-up company b. Licensee (company) develops IP into a product Central to university s mission to create and disseminate knowledge Best way to ensure that discoveries become publicly available Office for Technology Commercialization 6
IP Ownership University is sole owner of IP created by faculty, staff and students as it pertains to their employment and research a. Created using federal, state or other funding Industry sponsored research a. University generally owns b. In some situations company may own IP created during a project they funded Office for Technology Commercialization 7
Tech Commercialization Simplified Develop Faculty, students and staff develop new IP Protect File patent application or copyright asset License License IP to existing company or start new company Product Company develops and sells product Income Company pays U royalty Office for Technology Commercialization 8
Office for Technology Commercialization Mission: facilitate the transfer of research to companies for development of new products and services a. benefit the public good, foster economic growth and generate revenue to support the University s research and education goals Move IP from the bench to the marketplace Identification of innovations Market opportunity assessments Protection (patent, copyright, trademark) Licensing Start new companies Office for Technology Commercialization 9
OTC Generates Revenue for the U Inventions Disclosed: 343 New Startups: 15 FY2014 Gross Revenue: $27M Research Innovation Equipment Scholarships Income distribution Commercialization New Licenses: 154 Patents Filed: 138 Office for Technology Commercialization 10
Start-ups and Licenses Provides assessments and services to help parents and early child-care providers develop kindergarten-ready children. Discovery stage company currently developing small molecules to treat APOBEC driven cancers. Offers a hardware and software solution that can be used to reduce traffic congestion on major signalized arterial highways. Anti-HIV therapy licensed to Glaxo resulted in a multimillion dollar royalty stream to the University. Honeycrisp has been licensed to orchards worldwide. It has produced millions in licensing revenue. Office for Technology Commercialization 11
From Research to Patent Application Office for Technology Commercialization 12
From Marketing to Revenue Can take months to many years Office for Technology Commercialization 13
Contact OTC for Guidance Have an idea with potential commercial value Wonder if your idea or discovery should be disclosed to OTC or project sponsor Plan to publish or present your idea that may have commercial potential Are contacted by a company that wants to find out more about your research Have an idea for a new product or service that may have commercial value Want to send research tools or materials to another institution Want to start a company with your idea Office for Technology Commercialization 14
Report IP to OTC If IP is protectable and has commercial potential Complete the IP disclosure form to initiate formal evaluation Download form from OTC website www.research.umn.edu/techcomm/ Office for Technology Commercialization 15
Technology Evaluation Ability to protect the IP (patent or copyright) Commercial potential a. Solves a known problem (unmet need) b. Market size and growth rate Strength of invention a. Technical advantages b. Stage of development Technologies must be protectable, and have a reasonable commercial potential with expected returns on investment. Office for Technology Commercialization 16
Indicators of Potential Commercial Value A well-developed innovation A strong, defined market problem solved by the innovation An innovation that can be protected by a patent, copyright, or trademark A company has expressed interest in your research or licensing an innovation Industry experts believe the innovation is commercially viable Office for Technology Commercialization 17
IP Protection Most innovations developed at U protected by patent Some protected by copyright a. E.g. software, images, apps Some protected by both patent and copyright Office for Technology Commercialization 18
Patent Property rights granted by the government to an inventor a. Requires inventors to fully describe the invention The right to exclude others from making, using, offering for sale, selling or importing the invention Office for Technology Commercialization 19
Types of Patents Provisional patent application low cost approach to securing an early filing date. Never examined. Must file a regular patent application within 1 year. a. Term: 1 year Utility patents protects inventions; what most people call a patent a. Term: 20 years from the date the application is filed Plant patents protects any new and distinct variety of plant that has been invented or discovered and asexually reproduced a. Term: 20 years from the date the application is filed Design patents protects ornamental appearance of an article a. Term: 15 years from the grant date Office for Technology Commercialization 20
Utility Patent Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent (35 U.S.C. 101) Office for Technology Commercialization 21
Examples of Patentable Inventions Pharmaceutical compound Cure for a disease Polymer and chemicals Device / machine Software (methods) Process for making a new material Improvement to existing methods and materials Office for Technology Commercialization 22
Requirement for Patentable Invention Utility a. It must have a use and benefit mankind Novel a. It must not have been previously known publicly Non-obvious a. It must not be obvious to anyone skilled in the art & exhibit surprising and unexpected results Sufficiently described and enabled a. The invention has to work and do what you claim it does Office for Technology Commercialization 23
Patenting Deadlines Discovery Make Idea Publicly Known Public Disclosure (Day zero) 1 Year Foreign Rights No Patent Rights US Rights 1 year No Patent Rights Grace Period* In US 1 year after public disclosure to file application. US law effective March 2013 complicates implementation of 1 year grace period. First to file system. Best to file as soon as possible. Office for Technology Commercialization 24
Public Disclosures Public Disclosure = Making an idea publicly known Examples a. Papers b. Poster sessions c. Abstracts d. Research talks at meetings e. Graduate theses f. Department seminars that are open to the public g. Sharing data with colleagues outside your university or research group h. Information on non-secure website i. Awarded grant applications and abstracts j. Talking to company without a confidentiality agreement Office for Technology Commercialization 25
Commercialization Strategy Start new company (~ 10%) License to existing company (~ 90%) Market your innovation a. Talk to industry Understand their needs b. Build awareness c. Attract industry interest d. Network Office for Technology Commercialization 26
Pitch Your Innovation Office for Technology Commercialization 27
Realities of Tech Commercialization Not all technologies reach the stages of protection, licensing or commercialization Patent protection is expensive a. $3-10,000+ (U.S. application) b. $25-30,000+ (U.S. lifetime cost) c. $Millions for global rights Only a few technologies bring in millions of dollars in licensing revenue Tech commercialization process from start to finish can take years Office for Technology Commercialization 28
Best Practices If you think you ve got an invention, contact OTC Talk with companies to learn about their needs and problems Think ahead about when you will submit abstracts, publish, or talk about the work a. Submit a disclosure / report the invention as early as possible Keep track of public disclosures of your data and idea Keep accurate lab notebooks Office for Technology Commercialization 29
Resources Protecting your inventions a. Nature Reviews Drug Discovery 2:823 (2003) Patenting for the research scientist a. Trends in Biotechnology 22(12):638 (2004) Intellectual property law A primer for scientists a. Molecular Biotechnology 23:213 (2003) Basics of US patents and the patent system a. The AAPS journal 9(3):E317 (2007) Office for Technology Commercialization 30
Questions? Leza Besemann Technology Strategy Manager Office for Technology Commercialization 612.625.8615 besem007@umn.edu www.research.umn.edu/techcomm/ Office for Technology Commercialization 31