Presentation on theme: "Principal Patent Analyst"— Presentation transcript:
1 Principal Patent Analyst COMMERCIALIZING R&D IN THE PUBLIC SECTORBob StembridgePrincipal Patent Analyst
2 Bob Stembridge Prinicipal Patent Analyst Thomson Reuters IP & Science COMMERCIALIZING R&D IN THE PUBLIC SECTOR: PERSPECTIVES ON ACADEMIC-INDUSTRY TECHNOLOGY TRANSFER Bob StembridgePrinicipal Patent AnalystThomson Reuters IP & Science
3 AGENDA The research and innovation cycle The role of IP in commercializationTechnology transferProcessStepsChallengesStrategiesCase studyDiscussion
4 WHAT DO THE FOLLOWING INNOVATIONS HAVE IN COMMON? Imaging bundles in fibre optic networksImperial College and Technical University of DelftGene splicing in biotech industryStanford University and University of CaliforniaInternet search engineStanford UniversitySignificant innovations that have originated from academic research
5 THE RESEARCH & INNOVATION CYCLE Basic ResearchApplied ResearchInnovation / Protection / Exploitation PatentsWealthBASIC RESEARCH: Fundamental research, discovery of new ideasAPPLIED RESEARCH: Identification of useful applications and market opportunitiesINNOVATION/PROTECTION/EXPLOITATION PATENTS: Gain legal right to the exclusive use of invention through patentsWEALTH: Profitability through managing and exploiting intellectual propertyVIRTUOUS CIRCLE: Fundamental research leads to potential applications which through development leads to innovation which can be exploited commercially through the patent system to create wealth which then fuels more research and leads to continuous improvement in society.Patents, although vital, are only part of this cycle. Supporting information from other areas is necessary to provide context and provide the complete picture of where a technology is in its stage of development, where and how the innovation originated, who is driving development, where potential markets are and where the technology is headed.
6 COMMERCIAL RETURN ON INVESTMENT THE ROLE OF PATENTSResearch &InnovationA patent is a contract between the state and an individual whereby the state grants monopoly rights to the individual to exploit their invention in return for which the individual provides full disclosure of the inventionProtection &AssertionCOMMERCIAL RETURN ON INVESTMENTApplication &ProsecutionMaintenance &MonitoringLicensing &Commercialization
7 TECHNOLOGY TRANSFERThe process of transferring laboratory findings to the marketplace through:Licensing agreementsJoint venturesPartnershipsSpin offsTechnology Transfer is the process of moving results of scientific research from the laboratory to the marketplace and society. The process to commercially exploit research can vary widely. It can involve licensing agreements or setting up joint ventures and partnerships to share both the risks and rewards of bringing new technologies to market. However, the main aim of technology transfer is to take fundamental scientific discoveries and make them into marketable products so that the general public at large can benefit from the research as quickly and efficiently as possible.
8 These steps may vary in sequence and often occur simultaneously ResearchEvaluation about the commercial potential of the inventionAssessment with the researchersIP protectionMarketingLicensing / Spin-off company creationProduct development and commercialization by one or more licenseesRevenue generation by one or more licenseesThe process of technology transfer is summarized in the following steps:1.Research2.Disclosure interactions of researchers with TTO3.Evaluation about the commercial potential of the invention.4.Assessment with the researchers.5.IP Protection.6.Marketing using TTO resources and channels7.Licensing / Spin-off company creation8.Product Development and Commercialization by one or more Licensees9.Revenue Generation by one or more LicenseesNote that these steps may vary in sequence and often occur simultaneously.These steps may vary in sequence and often occur simultaneously
9 SOME COMMON CHALLENGES What does the market want?How do I attract more industry funding?Which R&D project should I invest in?How can I create more licenses and spin-offs?How can I measure the success of technology transfer more accurately?How do I motivate my researchers to do more applied research?How do I value my Intellectual Property (IP)?Technology Transfer is a long and risky process and requires significant time and investment
10 THE TECHNOLOGY TRANSFER FRAMEWORK TALENTRESOURCESMARKETIMPACTWORKFLOWTalent = Researchers/Scientists; Research Management; IP Professionals; Licensing OfficersResources = Research Funds; Capital Investments; Marketing BudgetWorkflow = Research Roadmap; Funding Criteria; IP Assessment / Protection; Commercial Evaluation; Market Engagement; Licensing Agreements; Spin-off Management; R&D Policy / CultureMarket = Private Companies; Entrepreneurs; Angel /Private Investors; Technology AdoptionImpact = New Products or Services; New Start-ups; Licensing Income; Attract New Companies; Create New JobsMeeting the market need is key!
11 TRANSCENDING THE VALLEY OF DEATH Technology transfer takes place at a particularly vulnerable part in the process of commercialization of a promising piece of research. It’s difficult to achieve successfully.
12 STRATEGIES FOR SUCCESS Frame the R&D project as a marketing challengeResearch projects are usually viewed as a scientific or technology challenge. Successful technology transfer depends on identifying and satisfying a market needEarly in the R&D Cycle:Understand your target market’s needsUnderstand and navigate the IP landscapeThroughout the R&D Cycle:Constantly monitor the market and IP landscape and adapt your R&D strategyUse necessary tools and databases to understand the marketThe Technology Transfer Office (TTO) is a service dedicated to the management and licensing of intellectual property generated at the research institute or university. TTO is staffed by specialists in the research area, intellectual property, licensing, business development, and legal matters who are experienced in transferring technologies from the life sciences to organizations outside the institute.The TTO takes care of these areas:•Detecting research output of potential commercial value•Evaluating its commercial potential•Protecting research output with the appropriate legal rights.•Marketing inventions•Deal-makingThese activities form the foundation of successful technology transfer, which can be described as stimulating contact between the owners and potential users of IP.
13 DECISION SUPPORT TOOLS: THOMSON INNOVATION PREMIER IP RESEARCH & ANALYSIS SOLUTIONPatent Search: Access the most relevant and comprehensive, global IP data, including the Derwent World Patents Index®, Asia-Pacific patents and Scientific Literature.Streamline your work with powerful productivity and collaboration tools.Patent Analysis: Turn large volumes of data into actionable intelligence with interactive analysis and visualization tools.
14 DERIVING INFORMATION FROM PATENT DOCUMENTS Patent data – a valuable resource to support business decisions
15 THE THEMESCAPE ANALYTICAL AND VISUALIZATION TOOL ThemeScape MapIntegrates data from multiple patent records in a visual formUncover relationships between patent documents and helps focus on related technology in a crowded spaceThemeScape Map allows you to understand quickly the patent landscape and market dynamics
16 MAPPING YOUR RESEARCH TO THE MARKET PLACE Use ThemeScape Map to understand your target market in the following 4 ways:Patent landscape: understand how your patents fit in the overall landscape compared to your competitorsForward citations: use citations to understand downstream R&D Activity and search for potential licenseesResearch collaborations: gain insights into who your industry partners are collaborating with and on whatPortfolio Management Tool: cluster your patents and discover new industry applications
17 CASE STUDY Universities in Turkey The number of universities in Turkey reached 175 in 2013: 104 state and 71 private. This is an increase of 99 compared to 2002, when the breakdown was 53 state and 23 private. Most of these institutions are relatively young; as recently as 1970, there were only eight state institutions, and the first private university (Bilkent University), was not established until 1985.Among the youngest of all is Antalya International University (AIU), which welcomed its first students in the 2012/13 academic year, and aims to recruit more than half of its students from outside Turkey.This target sounds ambitious, but may well be achievable. Turkey participates in the Erasmus Program, which facilitates student exchange between 33 EU countries. Additional enticements to study in Turkey include the appearance of nine Turkish universities in the QS World University Rankings® 2013/14, of which all but one are based either in capital Ankara, or in largest city Istanbul.In Ankara, you’ll find Bilkent University, Middle East Technical University and Hacettepe University, while Istanbul boasts Sabanci University, Istanbul University, Koç University, Bogaziçi Üniversitesi and Istanbul Technical University. The ninth Turkish university featured in the QS rankings, Cukurova University, is in Balcali, close to Adana.
23 FORWARD CITATIONS HELP IDENTIFY DOWNSTREAM R&D ACTIVITY AND POTENTIAL LICENSEES Impact via Citation:Self-Citations claim priority or measure follow-on R&DCites from external sources measure competitive interestCites from examiners may reflect closeness of the artForward citations provide an indication of downstream R&D activity by industry players and how the market has adopted your research
24 EXAMPLE OF A UNIVERSITY PATENT FORWARD CITATION First level citationsSecond level citationsThird level citationsUse citation maps to identify different citers and their downstream activities
25 FIRST AND SECOND GENERATION FORWARD CITATIONS ThemeScape Map can be used to cluster forward citations to understand downstream R&D Activities
26 RESEARCH COLLABORATIONS: COMPETITIVE INSIGHTS INTO INDUSTRY PARTNERS’ COLLABORATION ACTIVITIES Research collaborations with private corporations are important engagement points for Universities:IP Commercialization (for Pre- and Post-Collaboration IP)Learning from the CorporationBrandingIndustry RevenueEconomic Benefit
27 COMPETITIVE INSIGHTS INTO INDUSTRY PARTNERS’ COLLABORATION ACTIVITIES Engaging Industry PartnersPublish StrategicallyDevelop Key Account ManagersStudy Your Industry Partner’s RoadmapsUnderstanding who and what your Target Industry Partners are working
28 CONCLUSIONSCommercialization is a long and risky process and requires significant investments in talent, resources and workflow processesA key to crossing the “Valley of Death” to successful commercialization is understanding the market needs and competitive landscapeThomson Innovation and the ThemeScape Map are useful tools to understand the market dynamics and patent landscapeThere are four different techniques available. This allows R&D to be more “structured” and enhances commercialization opportunities