This project has received funding from the European Union’s Horizon 2020 research and innovation programme under grant agreement No 733266

UTILE ProjectCommercialisation and Licensing

Dr Anji Miller– LifeArc15th June 2018. Sofia, Bulgaria

Talk Overview

What is commercialisation and why do it

Commercialisation pathways

Realisation of your technology – points to consider

Commercialisation: what is it and why do it?

Commercialisation is the process of bringing your technology, in the form of intellectual property (IP), to the market in order to be exploited.

The journey varies in time, cost and complexity based on:

• Technology type e.g. new therapeutic drug, software, device, app

• Intended market i.e. global, single territory

Commercialisation

Stages of Commercialisation

Create a new market i.e. disruptive technology

Development pathway for a Drug

Commercialisation Pathways

Routes of Commercialisation

License

Assignment/sell

New Company formation/spin out

Joint Venture

Licensing

What is it?

allowing a third party to utilise IP without them taking ownership.

is a permission to do something that, without the licence, would be an infringement of the IP.

Licensing

The person granting the licence is called the licensor and the person receiving the licence is called the licensee. (Please note that there can be any number of licensees in a licence agreement.)

Licensing

However, there are different types of licences:

Exclusive licence – a single licensee has the right to use the IP.

Sole licence – a single licensee and the IP owner has the right to use the IP.

Non-exclusive licence – several licensees have the right to use the IP.

Exclusive by Field of Use: the invention is licensed to a licensee for one use, but possibly to another licensee for a different use which is non-overlapping

Licensing

A non-exclusive licence - most common type of licence used within Academia.

When you license your IP to another person it is called “licensing-out.” However, on some occasions it maybe that you need gain a licence to use someone else’s IP. This is called “licensing-in.”

It is more likely that a spin-out company, or industrial partner, is going to be in a position where they need to license-in another person’s IP. Normally, academics are in a position to license-out their IP

Assignment

Selling IP – legal change of title

Value of the asset

If you continue to use the IP once you have assigned it you will be infringing on the new owners rights.

If you wish to exercise your IP rights in the future licensing would be a more suitable route for commercialisation.

Spin Outs

Bundle of rights or platform technology Patents Know-how

Requires time and dedication - long-term

Seed funds and subsequent investment

Correct expertise and support

No guarantee of success

Benefits of Commercialisation

Societal

Economic

Industry Partnerships

Recruitment and Retention

Entrepreneurship

Tips for success

Get to know your technology transfer office

Plan your research strategically (academic v commercial)

No set commercialisation path. Each technology is different.

Bring on board the right expertise

Try to visualise your product early – Target Product Profile

Be patient

THANK YOU!Blagodaria!

Useful links• https://www.iprhelpdesk.eu/sites/default/files/newsdocuments/Fact-Sheet-Commercialising-

IP-Joint-Ventures.pdf

• https://www.iprhelpdesk.eu/sites/default/files/newsdocuments/Patenting_v._publishing_0.pdf

• https://umip.com/pdfs/Spinout_Companies.pdf