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