Principal Patent Analyst

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Presentation transcript:

Principal Patent Analyst COMMERCIALIZING R&D IN THE PUBLIC SECTOR Bob Stembridge Principal Patent Analyst

Bob Stembridge Prinicipal Patent Analyst Thomson Reuters IP & Science COMMERCIALIZING R&D IN THE PUBLIC SECTOR:   PERSPECTIVES ON ACADEMIC-INDUSTRY TECHNOLOGY TRANSFER   Bob Stembridge Prinicipal Patent Analyst Thomson Reuters IP & Science

AGENDA The research and innovation cycle The role of IP in commercialization Technology transfer Process Steps Challenges Strategies Case study Discussion

WHAT DO THE FOLLOWING INNOVATIONS HAVE IN COMMON? Imaging bundles in fibre optic networks Imperial College and Technical University of Delft Gene splicing in biotech industry Stanford University and University of California Internet search engine Stanford University Significant innovations that have originated from academic research

THE RESEARCH & INNOVATION CYCLE Basic Research Applied Research Innovation / Protection / Exploitation Patents Wealth BASIC RESEARCH: Fundamental research, discovery of new ideas APPLIED RESEARCH: Identification of useful applications and market opportunities INNOVATION/PROTECTION/EXPLOITATION PATENTS: Gain legal right to the exclusive use of invention through patents WEALTH: Profitability through managing and exploiting intellectual property VIRTUOUS 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.

COMMERCIAL RETURN ON INVESTMENT THE ROLE OF PATENTS Research & Innovation A 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 invention Protection & Assertion COMMERCIAL RETURN ON INVESTMENT Application & Prosecution Maintenance & Monitoring Licensing & Commercialization

TECHNOLOGY TRANSFER The process of transferring laboratory findings to the marketplace through: Licensing agreements Joint ventures Partnerships Spin offs Technology 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.

These steps may vary in sequence and often occur simultaneously Research Evaluation about the commercial potential of the invention Assessment with the researchers IP protection Marketing Licensing / Spin-off company creation Product development and commercialization by one or more licensees Revenue generation by one or more licensees The process of technology transfer is summarized in the following steps:   1.Research 2.Disclosure interactions of researchers with TTO 3.Evaluation about the commercial potential of the invention. 4.Assessment with the researchers. 5.IP Protection. 6.Marketing using TTO resources and channels 7.Licensing / Spin-off company creation 8.Product Development and Commercialization by one or more Licensees 9.Revenue Generation by one or more Licensees Note that these steps may vary in sequence and often occur simultaneously. These steps may vary in sequence and often occur simultaneously

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

THE TECHNOLOGY TRANSFER FRAMEWORK TALENT RESOURCES MARKET IMPACT WORKFLOW Talent = Researchers/Scientists; Research Management; IP Professionals; Licensing Officers Resources = Research Funds; Capital Investments; Marketing Budget Workflow = Research Roadmap; Funding Criteria; IP Assessment / Protection; Commercial Evaluation; Market Engagement; Licensing Agreements; Spin-off Management; R&D Policy / Culture Market = Private Companies; Entrepreneurs; Angel /Private Investors; Technology Adoption Impact = New Products or Services; New Start-ups; Licensing Income; Attract New Companies; Create New Jobs Meeting the market need is key!

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.

STRATEGIES FOR SUCCESS Frame the R&D project as a marketing challenge Research projects are usually viewed as a scientific or technology challenge. Successful technology transfer depends on identifying and satisfying a market need Early in the R&D Cycle: Understand your target market’s needs Understand and navigate the IP landscape Throughout the R&D Cycle: Constantly monitor the market and IP landscape and adapt your R&D strategy Use necessary tools and databases to understand the market The 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-making These activities form the foundation of successful technology transfer, which can be described as stimulating contact between the owners and potential users of IP.

DECISION SUPPORT TOOLS: THOMSON INNOVATION PREMIER IP RESEARCH & ANALYSIS SOLUTION Patent 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.

DERIVING INFORMATION FROM PATENT DOCUMENTS Patent data – a valuable resource to support business decisions

THE THEMESCAPE ANALYTICAL AND VISUALIZATION TOOL ThemeScape Map Integrates data from multiple patent records in a visual form Uncover relationships between patent documents and helps focus on related technology in a crowded space ThemeScape Map allows you to understand quickly the patent landscape and market dynamics

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 competitors Forward citations: use citations to understand downstream R&D Activity and search for potential licensees Research collaborations: gain insights into who your industry partners are collaborating with and on what Portfolio Management Tool: cluster your patents and discover new industry applications

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.

TURKISH UNIVERSITIES PATENT PORTFOLIO

SABANCI UNIVERSITY PATENT PORTFOLIO Sabanci University has strength in Exoskeleton innovation

SABANCI UNIVERSITY PATENT PORTFOLIO DETAIL

PATENT LANDSCAPE FOR EXOSKELETONS

EXOSKELETONS - COMPETITIVE LANDSCAPE

FORWARD CITATIONS HELP IDENTIFY DOWNSTREAM R&D ACTIVITY AND POTENTIAL LICENSEES Impact via Citation: Self-Citations claim priority or measure follow-on R&D Cites from external sources measure competitive interest Cites from examiners may reflect closeness of the art Forward citations provide an indication of downstream R&D activity by industry players and how the market has adopted your research

EXAMPLE OF A UNIVERSITY PATENT FORWARD CITATION First level citations Second level citations Third level citations Use citation maps to identify different citers and their downstream activities

FIRST AND SECOND GENERATION FORWARD CITATIONS ThemeScape Map can be used to cluster forward citations to understand downstream R&D Activities

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 Corporation Branding Industry Revenue Economic Benefit

COMPETITIVE INSIGHTS INTO INDUSTRY PARTNERS’ COLLABORATION ACTIVITIES Engaging Industry Partners Publish Strategically Develop Key Account Managers Study Your Industry Partner’s Roadmaps Understanding who and what your Target Industry Partners are working

CONCLUSIONS Commercialization is a long and risky process and requires significant investments in talent, resources and workflow processes A key to crossing the “Valley of Death” to successful commercialization is understanding the market needs and competitive landscape Thomson Innovation and the ThemeScape Map are useful tools to understand the market dynamics and patent landscape There are four different techniques available. This allows R&D to be more “structured” and enhances commercialization opportunities