Tm&i 2010 III.1 technology management & innovation technology transfer & strategic exploitation of...
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Transcript of Tm&i 2010 III.1 technology management & innovation technology transfer & strategic exploitation of...
tm&i 2010 III.1
technology management & innovation
technology transfer & strategic exploitation of IP
tm&i 2010 III.2
different forms of IP
patent
copyright ©
trademark ® or ™
know-how (trade secret)
tm&i 2010 III.3
why patent technology?
digital photography
image processing
microprocessor ICs (DSPs)
optics
memory & storage
semiconductors
computer peripherals
cameras
CCD detectors
competition
tm&i 2010 III.4
exploiting IPdefensive use of IP• protect your core technology from copying• ring-fence your core technology with related technologies
offensive use of IP• ring-fence competitive technology
other commercial uses of IP• secure seed (start-up) finance• negotiate trades, cross-licences and joint ventures etc.• earn $ income from licensing or selling non-core IP• expand into new areas of business
tm&i 2010 III.5
defensive use of IP
protect core technology
ring-fence core technology
tm&i 2010 III.6
offensive use of IP
ring-fence competitor’s technology
• strategic decision• pre-takeover• when attack is best form of
defence e.g. to defend yourself against an aggressive, possibly larger player
tm&i 2010 III.7
negotiation, trading & deals
it’s not all about attack & defence! IP is an asset for structuring beneficial business relationships
out-licensingin-licensingcross-licensingtechnology transferjoint venture companiesraising (seed) finance
tm&i 2010 III.8
out licensing IP
out-licensewhat is it? letting others use your IP under license
advantagesgenerate revenue (inward cash flow)
access markets you cannot reachlicense IP that might otherwise be unused (e.g. non-core IP)
license(s)
$royalty
the market
$revenue
products
you licensee
tm&i 2010 III.9
example of out licensing IPPliva as licensor
1980 - Pliva’s macrolide antibiotic, azithromycin is patented1986 - azithromycin is licensed to Pfizer for the US, European and Japanese markets1988 - launched under the Pliva tradename of “Sumamed”1991 - launched under the Pfizer tradename of “Zithromax”2000 - patent expires2005 - generic version of azithromycin launched in USA
tm&i 2010 III.10
in licensing IP
in-licensewhat is it? opposite to out licensing - you pay to use others’ IP
advantagesaccess IP you need
shorter time to marketreduced R&D costs
license(s)
$royalty
the market
$revenue
products
youlicensor
tm&i 2010 III.11
example of in licensing IPPfizer as licensee
1980 - Pliva’s macrolide antibiotic, azithromycin is patented1986 - azithromycin is licensed to Pfizer for the US, European and Japanese markets1988 - launched under the Pliva tradename of “Sumamed”1991 - launched under the Pfizer tradename of “Zithromax”2000 - patent expires2005 - generic version of azithromycin launched in USA
tm&i 2010 III.12
cross licensing
what is it?an agreement to grant IP licences between companies, often with no exchange of money
your
company
another
company
license(s)
license(s)
tm&i 2010 III.13
key points on licensing
• IP licenses can go in either direction (in or out) or be a combination of both (cross)
• non-exclusive licenses can be granted to many partners
• exclusive licenses can be granted to only one partner
• licenses are individual and are NOT transferrable
tm&i 2010 III.14
raising (seed) finance
what is seed finance?- the $ capital needed to “seed” a new company or business
how does it work?- investor’s decision to provide “seed” capital is usually based on their assessment of the IP and the business plan and hence the “opportunity”- IP position and plan must both therefore be strong- there may not be an existing product or service in the market with which to compare
who might invest?- public innovation funds, banks, business angels, venture capital firms (VCs), larger companies
tm&i 2010 III.15
inventorsinvestors
new company
$ IP
new product or service
university
private inventors
small company
spin-out company
innovation fund
bank
angel
VC
large company
consortium of any of the above
tm&i 2010 III.16
technology transfer
• university based technology transfer offices (TTO)• protect & exploit outputs of academic research
• by out licensing IP, by starting “spin-out” companies
• raise license or sales revenue from intrinsic research knowledge base
• TTO can probably be self-financing• share $ benefits with academics and faculty
(incentive)• enhance reputation of university - attract top
researchers and commercial contracts
tm&i 2010 III.17
university incubator space or
science park
license(s)
$royalty$revenue
products
licenseeuniversity TTO
the market
other investors
spin-out company
IP
$
tm&i 2010 III.18
exploiting IP through collaboration*
Enforcement difficultiesShare risks/investment
Splitting rights in resultsImprove/create new technology
Leakage of trade secretsCreating a revenue stream
Locking in IP assetsSweating your IP assets
Creating a competitorAccess to IP
Sharing technology Access to market
RisksOpportunities
* Slide courtesy of Ron Mascona, Dorsey & Whitney LLP. Technology collaboration agreements and JVs. Presentation to Cambridge Wireless, October 2009.
http://www.cambridgewireless.co.uk/resources/
tm&i 2010 III.19
extracting value out of a collaboration*
Beating the competitionRoyalties/milestone payments
Development servicesFunding
Exclusive supply arrangements
Commercialisation through JVCo/partner
Commercialisation of products
Right to use foreground IP
Use of resulting technologyAccess to background IP for R&D
Commercial partnerTechnology developer
* Slide courtesy of Ron Mascona, Dorsey & Whitney LLP. Technology collaboration agreements and JVs. Presentation to Cambridge Wireless, October 2009.
http://www.cambridgewireless.co.uk/resources/
tm&i 2010 III.20
PARTY A
JVCO
PARTY B
R&D services/Secondments
Industrial/ Commercial
Funding/Trading activity
Contributed IP/Prototype
Foreground IP
Results +Licence-back
Cross Licences
Slide courtesy of Ron Mascona, Dorsey & Whitney LLP. Technology collaboration agreements and JVs. Presentation to Cambridge Wireless, October 2009.
http://www.cambridgewireless.co.uk/resources/
tm&i 2010 III.21
summarydefensive use of IP• protect your core technology• ring-fence your core technology
offensive use of IP• ring-fence competitors technology
other commercial uses of IP• secure seed (start-up) finance• negotiate trades, cross-licences etc.• earn $ income from licensing or selling non-core IP• expand business into new areas• invest IP into a joint venture company (JVCo) or start-up
tm&i 2010 III.22
homework task
• imagine you work for a corporate or academic technology transfer office (TTO)
• identify 6 companies you would like to licence "your" assigned patent to
• describe your rationale and strategy for targeting each company
• report (600 words max.) or six PowerPoint slides
• submission deadline 23/11/11