The DTU patenting, licencing and spin out support system

Transcription

1 The DTU patenting, licencing and spin out support system DTU Patent Course, January Preben Kjær Kristensen Egil F. Hulgaard AIS - Innovation AIS Innovation organization, relations and roles Director Sr. VP Innovation and Entrepreneurship

2 Staff AIS Innovation January 2015 Innovation Manager - Helle Bunkenborg Large customer - contracts Business development teams Siemens AG Business Relations + Region Zeeland (10,8 m DKK gap funding) Department/center Responsible (@dtu.dk) Skylab Team Aqua Rikke Westh Thon rwet Biosustain Rikke Westh Thon rwet Byg Cen Compute Rikke Westh Thon rewt Karsten Svoldgaard kasvol Preben Kristensen mdin Jørgen Kejlberg Christina Jespersen Jacob Ferdinand Externally financed projects Danchip Anne Vive aviv Sannie Fisker Copenhagen Cleantech Cluster Elektro Preben Kristensen prkk (16-18 m DKK gap funding) Energikonvertering Jesper Lundeman jehl Peter Falk Food Rikke Westh Thon rwet Copenhagen Spin Out (1,5 m Pål S. Fernvall Fotonik Jesper Lundeman jehl DKK mini-poc resources) Fysik Mattias Dinnetz mdin Proof-Of-Concept (approx. 6-7 Kemi Søren Hansen smh --- m DKK /year) Kemiteknik Søren Hansen smh Skylab team Managing Claus Andersen Engineering cvoa Maritimt center Claus Andersen cvoa Mekanik Claus Andersen cvoa Miljø Rikke Westh Thon rwet Patent- and project 20 employees Nanotech Egil Hulgaard eghu administration 9,2-10,2 man-years externally Nutech Rikke Westh Thon rwet financed Krista Gammelgaard Karsten Space = Appr. 9 man-years patent Svoldgaard kasvol Christina Philp administration/commercializatio Systembiologi Rikke Westh Thon rwet Anne Hornshøj n outside of externally financed Transport Adam Hillestrøm adhi projects, management, Vet Rikke Westh Thon rwet Student worker - TBA innovation, development, etc. Vind 3 Michael Lauridsen milau 1/13/2015 Our Mission Patent AIS Innovation 4 1/13/2015

3 Patents Exclusive right to commercially exploit an invention Time limited to 20 years from filing Must be published, available for anyone A right to exclude others from exploiting the invention No right to exercise invention itself What can be patented? Has to be novel Patent Has to have an inventive step Has to be reproducible Must have industrial applications Important tool for commercialization Indirectly document that the invention is: New to the market Can be protected Has commercial potential 5 1/13/2015 Innovation at DTU Increased innovation capacity and societal impact DTU as source of more inventions and more sustainable start ups Develop DTU s approach to Corporate Innovation in large Danish and international companies and high-tech SME s Increased focus on innovation and entrepreneurship among students and employees Objectives : 400 reported inventions 20 start up companies

4 AIS-Innovation Broad perspective on innovation Technology-driven innovation Dealing with inventions and patents at DTU Development of commercialization projects aiming at licencing of IPR and start up Market driven innovation One point of entrance for key accounts Create cooperation projects through large externally funded projects and contracts Promoting innovation internally at DTU Support development of infrastructure like start up house, test and demonstration facilities etc. Frames 25 persons commercial/technological/ipr backgrounds 50% externally funded figures 152 reported inventions 11,4 mill. DKK patent and software revenues (2013) 400+ patent families 30+ start ups (9 based on IPR) 12 sales/licence agreements (2013) Two digit million DKK GAP/PoC funding Statistics invention disclosures per year DTU The average time from filing a PCT application to: entering an agreement with a company is 1,5 years returning the patent to the inventor is 2,4 years

5 Statistics invention disclosures by department, The Patenting Process The inventors fill in an invention notification form and file it with AIS It is mandatory Must be agreed with - and signed by the department patent responsible AIS calls for a pre-meeting (inventors and patent responsible) Presentation and clarification regarding the invention Discussion about commercial potential Strategic importance for the institute Discussion about different commercialization options The invention is sent to a patent consultant for patentability evaluation The inventors sign an NDA to prevent publication before filing the patent application The patent consultant will typically call for a clarification meeting and a few follow up calls Findings from the evaluation will be presented for commenting within 10 working days DTU evaluates if the invention will be taken over by DTU Must be approved by DTU management in collaboration with institute Decision must be announced no later than 2 months from filing 10 1/13/2015

6 DTU decides to take over the invention Requirements A patent with strong scope can be expected Must have an obvious commercial potential The invention must be beyond the idea stage and reasonably documented The inventors are committed to further develop and commercialize the invention Implications DTU manages the patenting process and pays all associated costs (approx DKK for the first 3 years) DTU has an obligation to commercialize the invention Commercial income related to the patent (that exceeds the direct patenting costs) are shared as: 1/3 to the inventors (personally), 1/3 to the department, 1/3 to DTU Process The patent application is written by the patent consultant and can typically be filed 3 months after the notification of invention After that, the inventors are in principle free to publish their results A caveat here: what about updates to the patent application? 11 1/13/2015 Filing Process Important NOT to publish anything until the patent application is filed cf. updates! Papers may however be sent for review, instructing not to publish until permission is granted time

7 DTU patent portfolio management system 13 Patent Portfolio Management Three categories of patents to structure the yearly review Partner patents Platform patents Application patents Purpose Secure IPR in partner projects Secure technology area with several applications or several individual patents needed for one application Secure targeted commercialization of patents towards one or more application Action Follow partner agreements Action plan and review Action plan and review Commercialization Licence or sale to partner Ownership by DTU until application is clear Licence or sale to start-up or existing company 14 Patent Portfolio Management

8 There are optional ways to drive action plan quality and progress 15 Patent Portfolio Management DTU decides NOT to take over Implications DTU gives rights back to the inventors The inventors are free to publish results or to file a patent application at their own expense (approx. DKK for the first 3 years) DTU however still has he right to claim 1/3 of future income less patenting costs! We have not yet seen cases where the inventors have proceeded with the patenting process on their own Although DTU decides not to take over the invention we are trying to make the process a positive experience for the inventors Inventors understand why. Inventors learned about patents and commercialization. Inventors come back with new inventions. 16 1/13/2015

9 Typical timeline for process once patent filing is agreed on Patent application developed by the patent agent (with limited support from the inventors) To be filed typically 3 months after notification of invention Usually filed in the EP -> Priority Date for all subsequent filings from it To be filed in the PCT within one year -> Priority Year lapsing Pay out inventors fee ( DKK shared between DTU employee inventors deducted in income) After 16 months first feedback from the PCT (ISR report) Possibility to challenge the findings until 22nd month (Demand) Published after 18 months open to everyone! (cost to this point app DKK) EESR Report ISR Report Demand Months 0 EP&US Application 6 12 PCT Application /13/ Publication National Phase Timeline typical patenting process - continued To be prosecuted or validated locally (nationally or regionally) after 30 months Country Selection what countries are of interest (US, EP, CN/JP/KR) Rather expensive (Translations and local fees) Should attempt to dispose of/sell the patent before national phase Patent issued after prosecution in the individual countries takes some years Costs pr. country may exceed DKK ! EESR Report ISR Report Demand Months EP&US Application 6 12 PCT Application 18 Publication 30 National Phase 18 1/13/2015

10 Commercialization efforts before, during and after filing Commercialization meeting with inventors before, during and after filing Action plan for commercialization Plan for further development of the technology Possible ways of financing Discussion about the interests of the inventors and departments Start-up potential Licence the patent to company Vehicle for research cooperation(!) 19 1/13/2015 Support Opportunities from AIS Innovation Assistance and consultancy in relation to applications and business plans Establishment of contact to relevant external partners Negotiations on licencing and IP transfer agreements Contact to external lawyer start-up advice package Support during the establishment phase Founder teams Project Pilots Mentors Investor pitches Raising Start-Up capital Pre seed grants Innovation incubators Seed Capital (DTU Symbion Capital), CAP-NOVA, Novo Seed, Lundbeck Emerge, SDTI, Novi Early stage investors (Vækstfonden) Business angels 20 1/13/2015

11 Development of spinout Invention that has start-up potential AND Inventors that have aspiration and the courage to participate THEN The Business Developers from AIS Innovation may participate more actively in supporting the inventors Ensure that public research funding is exploited in full to advance the maturity of the invention as much as possible That is to a level where the effort no longer can be characterized as research New sources of financing required 21 1/13/2015 Star Projects What problem are we trying to solve? Do we have a clear and realistic understanding of how we intend to solve the problem? What about other solutions? Solution IPR Does our idea contain one or more inventions? Beware of maintaining the novelty of the invention! Partner/team Who is to take the project to the market? (existing company, start up team) Pain Do we see a clear problem? Who has presented us to the problem? (eg. customer/user/expert) Do we have a clear and realistic understanding of the problem? Funding Market Is any money released if we solve the problem (new orders or clear savings)? Do we have contact with an industry insider eg. a potential customer, a potential manufacturer or an industry specialist? 22 Where do we get the funding to develop the project further? technologically, commercially etc.

12 Death Valley Idea Invention Incubation Startup Growth Liquidity Risk Available capital 60% 45% 35% 25% A B C 18% 12% Public money Death Valley Angels VC Funds PE Funds Banks Stock market 7 23 Claus Jørgen Nielsen Bridging the Death Valley Proof of concept funding Idea Invention Incubation Startup Growth Liquidity Risk POC Available capital 60% 45% 35% 25% A B C 18% 12% Public money Death Valley Angels VC Funds PE Funds Banks Stock market Novel DTU PoC fund for commercial maturing, technically already proven Market research, commercial potential, proof of business Inventors, External Consultants and Business Developers Structured process Mini Business plan Selected by external review panel

13 Bridging the Death Valley Support Programs/Copenhagen Spin Outs Idea Invention Incubation Startup Growth Liquidity Risk POC CSO Available capital 60% 45% 35% 25% A B C 18% 12% Public money Death Valley Angels VC Funds PE Funds Banks Stock market Various support programs to promote and assist start-up companies Biobusiness and Innovation Program, Accelerace BIO,CPH Spin-out, Copenhagen Cleantech Cluster, Medico Innovation, Region Sjælland Broad range of support programs offered: Education, Training, Mentors, Project Pilots 25 Claus Jørgen Nielsen Commercialization of inventions traditional spin-out model An invention disclosure becomes a commercialization project The commercialization project is matured to a level where it becomes interesting for third parties A founder team shows interest in the commercialization project and takes over commercialization (writing business plan etc) Investor is brought into the process and negotiation between founder team, DTU and investor is initiated The founder team establishes a new company and DTU licence IPR to the company

14 Types of spin-outs Start-up companies with DTU-owned IP from 2014 Innoneo Holding ApS DTU Vindenergi Hip support, HipStop, for hip surgery patients with risk of dislocating the hip Sensitivus ApS DTU Fotonik Power sensor til bicycle pedal arm TRD Surfaces ApS DTU Mekanik Extremely hard and wear-resistant steel surfaces RenCat ApS DTU Fysik Catalystic-based processor that converts liquid ammonium to pure hydrogen that can be used for fuel in PEM fuel cells Sprinklr A/S DTU Kemi Granulate dissolved in water to form sprinkler liquid for wind shields Nordic Power Converters IVS DTU Elektro Power converter that is a lot more compact and has better performance and lifespan than traditional ones Norlase ApS DTU Fotonik High-effect visible laser sources that are robust, cheap and compact Fluidan ApS DTU Nanotech Rheological technologi for flow celler for in-line measurement of liquids (for example foods) viscuous properties Dacofi Holding ApS DTU Food Compact filter unit for example for use with beer brewing Rheo Filaments ApS DTU Kemiteknik Instruments for measurement of extensional rheological properties on polymer solutions

15 CASE Innoneo Holding ApS DTU Vindenergi Hip support, HipStop, for hip surgery patients with risk of dislocating the hip Sensitivus ApS DTU Fotonik Power sensor til bicycle pedal arm TRD Surfaces ApS DTU Mekanik Extremely hard and wear-resistant steel surfaces RenCat ApS DTU Fysik Catalystic-based processor that converts liquid ammonium to pure hydrogen that can be used for fuel in PEM fuel cells Sprinklr A/S DTU Kemi Granulate dissolved in water to form sprinkler liquid for wind shields Nordic Power Converters IVS Power converter that is a lot more compact and has better performance and lifespan than traditional ones Norlase ApS DTU Fotonik High-effect visible laser sources that are roubus, cheap and compact Fluidan ApS DTU Nanotech Rheological technologi for flow celler for in-line measuremnt of liquids (for example foods) viscuous properties Dacofi Holding ApS DTU Food Compact filter unit for example for use with beer brewing ølbrygning Rheo Filaments ApS DTU Kemiteknik Instruments for measurement of extensional reologiske properties on polymer solutions The story of a spin-out or how I learned to stop worrying and love agreements 30

16 Power converters everywhere 2.5 billion units/yr billion units/yr units/yr by 2020 CONFIDENTIAL 31 Product example 20W power converter Lifetime 2 years 3 Efficiency 85 % 2 Cost Size $ Weight 33 cm g 1 6 years 3 86 % 1 $ cm g 1 10 years 3 92 % 3 $ cm g 3 NPC (2015) (f s 80 MHz) Incumbent (f s 150 khz) NPC (2014 H1) (f s 50 MHz) 1 based on prototypes 2 according to datasheet 3 qualified estimation CONFIDENTIAL 32

17 Title A fifth inventor made parts of his Ph.D. at another company active within the area and a future competitor His and the whole depatrment s - research within the Field (and it is wide) should be offered to his competitor first so no licencing to others The competitor accepted that the licencing requirement only applied to the timespan where the Ph.D. work is taking place at the competitor DTU can now start licencing the rights that have been received before the start of the Pd.D. project (and after) 33 Negotiations Two strong parties and a mediator Royalty or equity model? Royalty free, exclusive licence with infinte Field Ownership size very different opinions Call option: Spin-out can buy DTU s patent filings At early exit, higher compensation to DTU ( the value is in the patent filings ) Length of Board representation IPR transfer to spin-out Licence to IPR developed after signing of agreement? 34

18 Term sheet agreed on now to all the agreements (licence agreement, ownership agreement, transfer agreement, assignment on patent assignment agreement 35 Backup

19 Spinouts from DTU in 2013 Nanovi Radiotherapy ApS DTU Nanotech Cancer marker for improvement of radiation therapy Light Extraction ApS DTU Fotonik Technology to improve the output from LED s Silmeco ApS DTU Nanotech Produces and sell nanostructure SERS-substrates Saxocon ApS DTU Food Computer assisted toxicological analysis of chemical compounds such as drug candidates IRSEE ApS DTU Fotonik Technology to create images from the non-visible infrared spectre EyeCular Technologies ApS DTU Byg Improves the effect of sunheaters DENCRYPT ApS DTU Compute Encryption technology to enable secure mobile conversations on standard smart phones Innochem ApS (non IP-based) DTU Kemi Consulting company within advance chemical technology DACOFI II Hip Stop Sensitivus Bike 37 Inferability NorLase