Technology Commercialization Primer: Understanding the …...Start-ups and Licenses Provides assessments and services to help parents and ... Utility patents – protects inventions;

Technology Commercialization Primer: Understanding the Basics

Leza Besemann 10.02.2015

Office for Technology Commercialization 2

Agenda • Technology commercialization

a. Intellectual property b. From lab to market

• Patents • Commercialization strategy


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)


Intellectual Property (IP) • Rights given to intangible assets

Asset Rights

inventions Patents Trade Secrets

literary, artistic works, software and drawings, video

Copyrights

symbols, names, images and designs used in commerce

Trademarks


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


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


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


Tech Commercialization Simplified Develop

Protect

License

Product

Income

Faculty, students and staff develop new IP

File patent application or copyright asset

License IP to existing company or start new company

Company develops and sells product

Company pays U royalty


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


FY2014

Inventions Disclosed:

343

Gross Revenue:

$27M

Patents Filed: 138

New Licenses:

154

New Startups:

15

OTC Generates Revenue for the U

• Research • Innovation • Equipment • Scholarships • Income distribution • Commercialization


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.


From Research to Patent Application


From Marketing to Revenue

Can take months to many years


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


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/


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.


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


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


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


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


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)


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


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


US Rights No Patent Rights

Grace Period*

Patenting Deadlines Make Idea Publicly Known

“Public Disclosure” (Day zero) 1 Year

Foreign Rights

Discovery

No Patent Rights

• 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.

1 year


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


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


Pitch Your Innovation


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


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


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)


Questions? Leza Besemann Technology Strategy Manager Office for Technology Commercialization 612.625.8615 [email protected] www.research.umn.edu/techcomm/

http://www.research.umn.edu/techcomm/

Documents

Technology Commercialization Primer: Understanding the …...Start-ups and Licenses Provides assessments and services to help parents and ... Utility patents – protects inventions;