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 IP defensive 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-licensing in-licensing cross-licensing technology transfer joint venture companies raising (seed) finance

tm&i 2010 III.8 out licensing IP out-license what is it? letting others use your IP under license advantages generate revenue (inward cash flow) access markets you cannot reach license 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 IP Pliva as licensor Pliva’s macrolide antibiotic, azithromycin is patented azithromycin is licensed to Pfizer for the US, European and Japanese markets launched under the Pliva tradename of “Sumamed” launched under the Pfizer tradename of “Zithromax” patent expires generic version of azithromycin launched in USA

tm&i 2010 III.10 in licensing IP in-license what is it? opposite to out licensing - you pay to use others’ IP advantages access IP you need shorter time to market reduced R&D costs license(s) $royalty the market $revenue products you licensor

tm&i 2010 III.11 example of in licensing IP Pfizer as licensee Pliva’s macrolide antibiotic, azithromycin is patented azithromycin is licensed to Pfizer for the US, European and Japanese markets launched under the Pliva tradename of “Sumamed” launched under the Pfizer tradename of “Zithromax” patent expires 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)

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 inventors investors 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 licensee university 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 technologyAccess to market RisksOpportunities * Slide courtesy of Ron Mascona, Dorsey & Whitney LLP. Technology collaboration agreements and JVs. Presentation to Cambridge Wireless, October

tm&i 2010 III.19 extracting value out of a collaboration* Beating the competitionRoyalties/milestone payments Development servicesFunding Exclusive supply arrangementsCommercialisation through JVCo/partner Commercialisation of productsRight 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

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

tm&i 2010 III.21 summary defensive 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