Technology Transfer and Assessment of Intellectual Assets Gerald J. Siuta, Ph.D. President Siuta Consulting, Inc. () Vice President

Technology Transfer and Technology Transfer and Assessment of Intellectual AssetsAssessment of Intellectual Assets

Gerald J. Siuta, Ph.D.Gerald J. Siuta, Ph.D.

PresidentPresidentSiuta Consulting, Inc.Siuta Consulting, Inc.

(www.siutaconsulting.com)(www.siutaconsulting.com)

Vice President for Affiliate MembersVice President for Affiliate MembersAssociation of University Technology ManagersAssociation of University Technology Managers

(www.autm.net)(www.autm.net)

Taiwan Technology MarketplaceTaiwan Technology MarketplaceInternational Technology FairInternational Technology Fair

Taipei, TaiwanTaipei, TaiwanOctober 24, 2003October 24, 2003

Association of University Association of University Technology Managers (AUTMTechnology Managers (AUTM®®))

• Nonprofit organization founded in 1974Nonprofit organization founded in 1974• International membership of more than 3,000 International membership of more than 3,000

academic technology managers and business academic technology managers and business executives who manage intellectual propertyexecutives who manage intellectual property

• Represents over 300 universities, research Represents over 300 universities, research institutions, teaching hospitals as well as institutions, teaching hospitals as well as numerous businesses, government numerous businesses, government organizations and legal entitiesorganizations and legal entities

Siuta Consulting, Inc.

AUTM’s MissionAUTM’s Mission

““To promote, support and enhance the To promote, support and enhance the global academic technology transfer profession global academic technology transfer profession

through internal and external education, through internal and external education, training and communication” training and communication”


AUTM’s GoalsAUTM’s Goals

• Create a broad understanding of the technology Create a broad understanding of the technology transfer process and its impact on society transfer process and its impact on society

• Develop and promote best practices in the Develop and promote best practices in the technology transfer professiontechnology transfer profession

• Enhance the value of AUTM membershipEnhance the value of AUTM membership• Communicate effectively with its members Communicate effectively with its members • Make AUTM an international organization Make AUTM an international organization


International Membership 1985-2002International Membership 1985-2002

266

190

44

54

0

50

100

150

200

250

300

1985 1986 1987 1988 1989 1990 1991 1992 1993 1994 1995 1996 1997 1998 1999 2000 2001 2002

Year

Num

ber o

f Mem

bers


Does not include Canadian members (342 in 2002)

AUTM Educational EventsAUTM Educational Events

• Training CoursesTraining Courses• The Basics of LicensingThe Basics of Licensing• Technology Operations & Licensing SkillsTechnology Operations & Licensing Skills• Advanced Topics in Licensing & Director’s ForumAdvanced Topics in Licensing & Director’s Forum• Start-up Business Development Start-up Business Development • Software, Multimedia & Digital MediaSoftware, Multimedia & Digital Media

• Annual & Regional MeetingsAnnual & Regional Meetings• In the United States and CanadaIn the United States and Canada

• International MeetingsInternational Meetings


What is Technology Transfer?What is Technology Transfer?

A legal process by which rights to an intellectual A legal process by which rights to an intellectual asset that is owned by an academic institution, asset that is owned by an academic institution,

industrial organization or an independent industrial organization or an independent inventor are transferred to another organization inventor are transferred to another organization in order to facilitate the further development of in order to facilitate the further development of the asset and its eventual commercialization the asset and its eventual commercialization

into a marketed productinto a marketed product


Why Transfer Technology?Why Transfer Technology?

• Facilitate worldwide commercializationFacilitate worldwide commercialization• Generate incomeGenerate income

• License execution feeLicense execution fee• Milestone paymentsMilestone payments• Research fundingResearch funding• Royalties on net sales of productsRoyalties on net sales of products

• Reward and help to recruit and retain facultyReward and help to recruit and retain faculty• Promote economic development through Promote economic development through

start-up company formationstart-up company formation


Academic Technology Transfer in Academic Technology Transfer in North America in 2001North America in 2001

• $31.7 Billion in research funding$31.7 Billion in research funding• 13,569 New invention disclosures 13,569 New invention disclosures

• 1 Disclosure per $2.3 million in research funding1 Disclosure per $2.3 million in research funding

• 6,812 United States patent applications filed6,812 United States patent applications filed• 4,058 License and Option Agreements signed4,058 License and Option Agreements signed

• 494 New company start-ups494 New company start-ups

• $1.07 Billion in license income$1.07 Billion in license income


AUTM Licensing Survey 2001 (Based upon data from 198 North American academic institutions)

Academic Technology Transfer in Academic Technology Transfer in North America 1991-2001North America 1991-2001

• $235.2 Billion in research funding$235.2 Billion in research funding• 110,751 New invention disclosures 110,751 New invention disclosures • 48,845 United States patent applications filed48,845 United States patent applications filed

• 24,420 United States patents issued24,420 United States patents issued

• 32,417 License and Option Agreements signed32,417 License and Option Agreements signed• 22,937 Agreements are still active22,937 Agreements are still active

• 3,870 New company start-ups3,870 New company start-ups• 2,514 Companies continue to operate2,514 Companies continue to operate


AUTM Licensing Surveys 1991-2001

What are Intellectual Assets?What are Intellectual Assets?

Intellectual assets are issued patents, Intellectual assets are issued patents, patent applications, trademarks, patent applications, trademarks,

copyrights, trade secrets and know-howcopyrights, trade secrets and know-howthat are owned by an organization and that are owned by an organization and

have potential commercial valuehave potential commercial value


Assessment of Intellectual AssetsAssessment of Intellectual Assets

• What is the assetWhat is the asset• How will it be usedHow will it be used• What is its potential value to industryWhat is its potential value to industry

• Is there a potential productIs there a potential product• Novel or an improvement of a marketed productNovel or an improvement of a marketed product• Is there a market for such a productIs there a market for such a product• What are the competitive productsWhat are the competitive products• Time and cost to develop the productTime and cost to develop the product


Assessment of Commercial PotentialAssessment of Commercial Potential

• Novel productNovel product• Product improvementProduct improvement• Competing productsCompeting products• Market size and sales potentialMarket size and sales potential• Advantages over competitive products Advantages over competitive products • Product price and profit marginProduct price and profit margin• Development timeline and costsDevelopment timeline and costs• Patent statusPatent status


Technology Transfer ProcessTechnology Transfer Process

• Identify potential applicationsIdentify potential applications• Prepare non-confidential Executive SummaryPrepare non-confidential Executive Summary• Identify potential licenseesIdentify potential licensees

• Companies that market similar productsCompanies that market similar products• Have research the same area Have research the same area • Have the capability to develop the productHave the capability to develop the product• Are seeking to enhance their product pipelineAre seeking to enhance their product pipeline

• Identify appropriate company contactIdentify appropriate company contact


Pitfalls to AvoidPitfalls to Avoid

• Pursue licensing before technology is Pursue licensing before technology is sufficiently developedsufficiently developed

• Publish before filing patent applicationsPublish before filing patent applications• File patent applications too earlyFile patent applications too early• Fail to file patent applications worldwideFail to file patent applications worldwide• Mistake new use for new productMistake new use for new product• Overestimate the valueOverestimate the value


Documents

Technology Transfer and Assessment of Intellectual Assets Gerald J. Siuta, Ph.D. President Siuta Consulting, Inc. () Vice President