Innovations at U of TInnovations at U of Tthe business of ideasthe business of ideas

Presentation to the Institute for Optical SciencesDecember 1st, 2006

Dr. Cyril Gibbons Director, Commercialization Physical Sciences and Engineering

SynopsisSynopsis

IUT and UofT IUT and IOS Ontario Research Commercialization

Program (ORCP) Why Commercialise ? Licensing and Spin-outs Success Stories Summary

IUT and U of TIUT and U of T

• Innovations at U of T is the commercialization arm of the University of Toronto

• IUT comprises a staff of commercialization professionals concentrating their efforts in three areas:

• life sciences• IT/communications• physical sciences/engineering

IUT and U of TIUT and U of T

• Now part of the Office of the Vice-President, Research and Associate Provost

• “One-stop Shop” – directed by Executive Director/Assistant Vice-President of U of T:

• IUT – Commercialisation• IP and Contracts – Research Services

• IUT works ONLY with researchers at U of T and the affiliated hospitals.

UofT Inventions PolicyUofT Inventions Policy

Inventions are initially co-owned by inventors and UofT

You have the right to:• take personal ownership (with the other inventors) or • offer (assign) ownership to the University

Owners receive 75% of net revenues

Assignment to: UofT Share Inventor Share

UofT 75% 25%

Inventors 25% 75%

Partnering with IUTPartnering with IUT

Most inventors take personal ownership, but many then partner with the IUT to help with patenting and commercialisation

Revenue Sharing then changes to:• Inventors – 60%• UofT/IUT – 40%

What can IUT do for you?What can IUT do for you?

IUT can help you• License technology• Create spin-off companies• Find funding for:

• Spin-offs• Proof of Concept / Commercialisation

• Facilitate relationships with industrial research sponsors

Why work with IUT?Why work with IUT?

• We protect your intellectual property• We pay the bills and handle the paperwork• We manage a process that can take up to

seven years

• We source industrial or financial partners• We negotiate the deals• You are free to concentrate on your

research

Why work with IUT?Why work with IUT?

• We have close relationships with investors of different scales (angels, venture capital firms)

• IUT Staff have experience:• Technical - industry and academia• Commercial – Finance, Business Development• Legal – IP deals, patent prosecution

• New location - MaRS Discovery District >> enhanced visibility and network of connections

Why work with IUT?Why work with IUT?

• Key Staff:• Physical Sci/Engineering Group:

• Mark Bennett: (IOS contact): semiconductors, materials, photonics, nanotechnology

• Cyril Gibbons: chemistry, energy & environment, materials, engineering processes

• Sam Visaisouk: engineering (mechanical, chemical) manufacturing, materials

• Fabio Almeida: electronics, photonics, sensors

• IT Group: software, telecoms, wireless• Life Sciences Group: pharma, biotech, medical

Project ScreeningProject Screening

• IUT does not take on every disclosure• Key screening criteria:

• Market potential• Patentability• Stage of development• People• MARKET POTENTIAL !

IUT and IOSIUT and IOS

Collaborative Partnership wrt commercialisation

Contacts:• Mark Bennett (IUT)• Karen Grant (IOS)

IUT and IOSIUT and IOS

IUT/IOS Technology Assistants• Grad students trained in due diligence

for commercial opportunitiesCollaboration on NSERC I2I

applications“Working structure” to look at other

opportunities in technology transfer and industry relations

ORCPORCP

Tech Transfer Toronto – Proof of Principle Fund• 10-15 projects annually:

• Stage 1 ($15k - $25k) • Stage 2 (up to $60k)

• Eligible activities:• Stage 1: technical feasibility and technology

assessments, Business plan development, Competitive market intelligence / Market studies

• Stage 2: Prototyping / New product development (75% of the fund)

ORCPORCP

Tech Transfer Toronto • TTT Network includes

– UofT, Sunnybrook, Bloorview Kids Rehab, Toronto Rehab and York University

– OPIC and CNII

• Three Technology Transfer staff to manage program and support projects

• TTT POP fund is open to all members of the TTT Network if approved by the Tech Transfer Office or Business Development Officer

Why commercialize?Why commercialize?

• It brings recognition to you and to your institution

• It allows you to see your hard work being put to use

• Products created from your research could help create jobs and wealth, save lives or improve living standards

• It can be profitable

Commercializing InventionsCommercializing Inventions

First step is to obtain ownership from the University:• Disclosure• Assignments

Decide if you want to do it on your own or work with a partner (e.g. IUT)

Commercializing IP takes time, money and expertise. Most inventions never even recoup costs of patenting.

LicensingLicensing

Licensing is a contractual arrangement allowing someone to make, use or sell your patented technology without fear of litigation, usually for a share of profits (royalties)

Advantage over selling IP because a license can be terminated – ownership is forever!

Licensing ArrangementsLicensing Arrangements

Exclusive vs. non-exclusive Limited by:

• field-of-use and/or • territory

Up-front fee, Annual fee, percentage of sales, per unit fee

Royalty rate will depend on market-readiness, profit margins and value added or cost savings• Never over-value your IP (1-5% is typical)

Annual minimums, milestones Start-up companies may want ownership

Start-UpsStart-Ups

Very difficult to commercialize disruptive technologies by licensing• Set up a company to develop, prove concept,

prove market etc. A technology company is not likely to

succeed on a single product idea• need a platform technology/ies

Most VCs will not be interested in companies with products whose target revenues are under $100 million annually.

Company CreationCompany Creation

Technology ≠ Product There is always a competitive product People factors and management

experience start to overtake technology in importance

Time to market vs. burn rate is critical consideration

Success StoriesSuccess Stories

Opalux Inc.• Photonics Crystals IP – Geff Ozin• IUT managed the IP portfolio• IUT brought in:

• Angel Investors• CEO• Funding (OCE/MMO)

• IUT negotiated the deals:• 3 patents licensed in return for equity and royalty• Shareholders agreement• Ongoing research contracts• Investment in company

SummarySummary

If you think something may have commercial value, take the time to get advice and consider patenting

Do not disclose in a public forum unless you are certain you have no wish to patent • Patent, Publish, Prosper!

You are in the driver’s seat, but there is lots of assistance available

* ALWAYS DISCLOSE TO UofT *

FinallyFinally

Any Questions?